Best Practices in View of COVID-19 Deadline Extensions
Current as of April 6, 2020
In response to the COVID-19 crisis, intellectual property (IP) offices around the world are taking steps to address the impact that stay-at-home orders may have on IP practitioners and their own operations. Such measures include extensions to deadlines related to the prosecution of patents, trademarks, and copyrights. In the United States, however, these extensions apply only to certain deadlines, and only to those persons materially affected by the COVID-19 outbreak.
This legal update describes temporary relief at the United States Patent and Trademark Office (USPTO) and the IP offices of several foreign jurisdictions, highlighting notable extensions—and the lack thereof—that could potentially affect the registration of patents, trademarks, and copyrights. This update also presents best practices for protecting and maintaining one’s registered IP rights during the outbreak.
Patents and Trademarks
On March 16, 2020, the USPTO issued an official notice (the “Initial Notice”) considering the effects of COVID-19 to be an “extraordinary situation” within the meaning of the relevant statutes.[i] This Initial Notice provided general relief for late fees associated with patent- and trademark-related correspondence due to the effects of the coronavirus outbreak.[ii] Notably missing, however, was relief to several important statutory deadlines—something that can only be accomplished by Congress.[iii] On March 27, 2020, Congress enacted the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) authorizing the USPTO and the Register of Copyrights to “toll, waive, adjust, or modify any timing deadline established by [the relevant statutes].”[iv]
Armed with this authority, on March 31, 2020, the USPTO issued two new directives: (1) a Notice of Waiver of Patent-Related Timing Deadlines under the CARES Act[v] and (2) a Notice of Waiver of Trademark-Related Timing Deadlines under the CARES Act[vi] (jointly, the “Waivers”). These Waivers provide fee relief and grant a 30-day extension of certain deadlines falling from March 27 to April 30 of this year for parties affected by the COVID-19 outbreak.[vii]
Examples include an extension of the due date for office-action responses and notices of appeal for both pending patents and trademark applications.[viii] More specific to patents, further notable extensions include deadlines to pay issue fees and the time to file a patent owner’s preliminary response in a Patent Trial and Appeals Board (PTAB) proceeding.[ix] For trademarks, further notable extensions include deadlines to file statements of use, notice of oppositions, and priority filing basis under international conventions.[x]
Extensions related to patent applications and reexamination proceedings and additional relief before the PTAB can be found here. Relief for trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (TTAB) proceedings can be found here.
Practitioners should not assume these Waivers will be applicable to their matters as the danger of losing one’s IP rights still lurks in the details.
First, all relief provided by the USPTO is available only to parties who were actually materially affected by the outbreak in connection with timely filing or payment.[xi] The USPTO has published guidelines for what this means, explaining that it covers situations where the filer, attorney or other person associated with the filing is “personally affected” by the outbreak, which includes, but is not limited to, “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances.”[xii] To secure the available relief, parties must provide a statement that the need for extension was caused by the pandemic. Further, some available extensions, such as for payment of patent maintenance fees, are available only to small or micro entities.[xiii]
Second, even if one is materially impacted by the COVID-19 crisis, several IP deadlines remain unchanged. For example, the statutory one-year bar to patentability under 35 U.S.C. § 102 remains in full effect. Under 35 U.S.C. § 102, an inventor who discloses a claimed invention through a printed publication, public use, sale, or otherwise makes it available to the public is barred from claiming that invention unless a patent is filed within one year.[xiv] This includes situations where inventors secure a patent in a foreign country only to find that this very patent prevents them from similar protection in the United States after the deadline passes. In addition, deadlines to claim priority to a foreign patent application, such as through the Patent Cooperation Treaty, remain unaffected.[xv]
Various deadlines related to patent challenges at the PTAB also remain. For example, the one-year time bar to file a PTAB inter partes review of a patent that was previously challenged in district court remains in place.[xvi]
In the context of trademarks, deadlines that remain unchanged include deadlines in ongoing TTAB proceedings related to motion practice and ex parte appeals, although requests for an extension or reopening of time (as appropriate) can be made to the TTAB. In addition, no changes have been made to the commercial use requirement of a trademark, and the USPTO has not issued formal guidance about whether the pandemic constitutes viable grounds to support an affidavit of excusable non-use (e.g., situations where the pandemic caused a failure to resume use of a mark by a final declaration-of-use deadline).
As indicated below, intellectual property offices throughout the world have implemented their own versions of deadline extensions. For example:
- The European Patent Office (EPO) has issued an extension to May 1, 2020 to time limits pending before the office that expire between March 9 and April 30 of this year, including office action deadlines.[xvii]
- The UK Intellectual Property Office (UKIPO) has designated days on or after March 24 as “interrupted days,” where any deadlines for patents, trademarks, and designs are extended until the office notifies parties of the end of the interrupted days period.[xviii]
- The Mexican Institute of Industrial Property (IMPI) has closed entirely to the public, allowing for filings through its online portal, but suspending and extending all deadlines at least until it is expected to reopen on April 20.[xix]
- Brazil’s Patent and Trademark Office (BPTO) has published a notice enacting a suspension of all terms from March 16 to April 14 of this year, tolling any terms within this period to after the suspension period is over.[xx] Still, although the BPTO has cancelled all in-person meetings, its operational services will continue functioning through its online platform, where all communications must now be made.[xxi]
Practitioners should consult counsel in the relevant jurisdiction to navigate the distinct policies implemented in different jurisdictions, especially given their potential downstream effects on new applications claiming the benefit of foreign filings.
The United States Copyright Office also issued a newsletter announcing “Temporary Changes to Certain Timing Provisions for Persons Affected by the COVID-19 Emergency.”[xxii] This newsletter adjusted certain deadlines relating to copyright registration and notices of termination in specific cases for persons unable to comply due to the COVID-19 national emergency. For example, the three-month window after the first publication to seek statutory damages and attorney fees may be extended upon a showing that the deadline would have been met “but for the national emergency.”[xxiii] In addition, physical deposits may be temporarily examined electronically due to the building’s closure.[xxiv]
Given the limited nature of these extensions, clients and attorneys proceed, to the fullest extent possible, as though the COVID-19 crisis will have no impact on their dockets and deadlines:
- All filings and payments should be made in accordance with regular statutory and regulatory deadlines whenever possible.
- Any actions that involve foreign offices, such as requests for certified documents, should be made as soon as possible due to potential delays caused by office closures or staffing adjustments.
- Open and regular communication between clients and attorneys about upcoming deadlines and the documents and information needed to satisfy those deadlines is critical so that deadlines are not missed.
- Both in-house and outside counsel teams should be expanded to include multiple team members in case one or more team members become incapacitated by the coronavirus.
- If extensions need to be utilized, IP owners should keep thorough documentation about their need for extension requests that clearly show how the need for extension is tied to the pandemic, including keeping sworn statements by personnel with first-hand knowledge.
Contributors: Cristiane Manzueto (Brazil), Konstantin von Werder (EU and UK)
[i] United States Patent and Trademark Office, Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak, at 1 (Mar. 16, 2020), available at https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf.
[ii] Id. at 1-3.
[iii] Several deadlines that relate to the prosecution of patents and trademarks, such as filing deadlines and some office action response times, are governed by statute and thus require congressional intervention to be modified. See generally, United States Code Title 35.
[iv] H.R.748 (CARES Act) § 12004(a), available at https://www.congress.gov/bill/116th-congress/house-bill/748/text#H266E718EF3A847BC8A0F1C51BBA85CF8.
[v] USPTO, Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act (Mar. 31, 2020), available at https://www.uspto.gov/sites/default/files/documents/Patents CARES Act.pdf.
[vi] USPTO, Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act (Mar. 31, 2020), available at https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act.pdf.
[ix] Id. at 2-3.
[xi] The Waivers, at 2.
[xii] The Waivers, at 2.
[xiii] The Waivers, at 2.
[xiv] The nuisances of 35 U.S.C. § 102 with regard to what constitutes a sale, publication, or public disclosure is left aside as outside the scope here.
[xv] See 35 U.S.C. § 119 (“Benefit of earlier filing date; right of priority”); see also 37 CFR 1.55 (“Claim for foreign priority.”)
[xvi] See 35 U.S.C. § 315(b).
[xviii] UK Intellectual Property Office, Coronavirus important update on IPO services (Apr. 2, 2020), available at https://www.gov.uk/government/news/coronavirus-important-update-on-ipo-services.
[xix] Instituto Mexicano De La Propriedad Industrial, Gaceta de la Propiedad Industrial, Comunicado IMPI (Mar. 26, 2020), http://www.impi.gob.mx/cloud/Documents/AI_EX_2020_03_002.pdf.
[xxii] United States Copyright Office, Copyright Office Announces Temporary Changes to Certain Timing Provisions for Persons Affected by the COVID-19 Emergency (Mar. 31, 2020), available at https://www.copyright.gov/newsnet/2020/810.html.
[xxiv] United States Copyright Office, Registration of Claims with Physical Deposit Copies During Temporary Building Closure (Apr. 2, 2020), available at https://www.copyright.gov/newsnet/2020/811.html.
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