Originally published on April 7 and has been updated with new information.
Brief Summary of Update:
Pursuant to the temporary authority granted by the CARES Act, the US Copyright Office and the USPTO have announced that they are taking steps to assist those impacted by the coronavirus (COVID-19) pandemic by extending certain deadlines, provided that the filing or fee payment is accompanied by a statement attesting that the delay was due to the COVID-19 crisis.
On April 28, 2020, the USPTO issued new guidance further extending some deadlines that otherwise would have been due on or after March 27, 2020, to June 1, 2020. The original article, below, has been updated to reflect the April 28, 2020 notice.
On March 27, 2020, the President signed into law the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which authorized the US Copyright Office (USCO) and the United States Patent and Trademark Office (USPTO) to temporarily waive or modify certain statutory deadlines. Prior to the CARES Act, the USPTO and USCO had sought to provide relief to intellectual property owners by waiving certain fees (including, for example, fees associated with petitions to revive abandoned applications), but had been limited by their inability to modify statutory deadlines. On April 28, 2020, the USPTO further extended the deadlines that otherwise would have been due on or after March 27, 2020.
The extensions will undoubtedly provide needed relief for certain rights holders during this tumultuous time. Nonetheless, if possible, adhering to original deadlines is the safest route, and parties should first carefully review the USPTO and USCO notices with a lawyer to determine whether the extensions are applicable and legally prudent.
Section 12004 of the CARES Act allows the USPTO to “toll, waive, adjust or modify any timing deadline established by title 35 [of the] United States Code, the Trademark Act, section 18 of the Leahy-Smith America Invents Act (35 U.S.C. 321 note), or regulations promulgated thereunder” provided that the Director determines that the coronavirus emergency: (1) materially affects the functioning of the USPTO; (2) prejudices the rights of applicants, registrants, patent and trademark owners or others appearing before the USPTO; or (3) prevents applicants, registrants, patent and trademark owners or others appearing before the USPTO from filing a document or fee with the USPTO.
Having determined that the second and third criteria were satisfied, the USPTO Director issued notices extending certain deadlines falling between and inclusive of March 27, 2020, and April 30, 2020, by 30 days, and on April 28, 2020, a notice superseding prior notices and extending certain deadlines between March 27, 2020 and May 31, 2020, to June 1, 2020. However, all applicants seeking relief under these waivers must include a statement with any filing or payment stating that the delay was due to a practitioner, applicant, registrant, patent or trademark owner, petitioner or third-party requester, inventor or other associated person having been personally affected by the COVID-19 outbreak, including, for example, as a result of:
Affected persons’ office closures,
Cash flow interruptions,
Inability to access files or other materials,
Personal or family illness, or
Other similar circumstances.
The USPTO’s earlier waiver of fees associated with reviving an abandoned trademark or patent application (and reexamination proceedings) or reinstating a canceled or expired trademark registration still partially stands. Effective April 28, 2020, waiver of such revival petition fees has been limited to only abandoned applications, reexamination proceedings, and canceled/expired trademark registrations that became abandoned, canceled, terminated, limited, or expired on or before May 31, 2020, as a result of the COVID-19 outbreak. The petition must include a statement that the delay in filing or payment was due to the COVID-19 outbreak, similar to what is required for obtaining the 30-day extensions. Filing an appropriate petition and statement that the delay in filing or payment was due to the COVID-19 outbreak will be treated as a sua sponte request for waiver of the petition fee. Trademark revival/reinstatement petitions have additional timing requirements that should be considered carefully.
The current notice provides for the possibility of extending deadlines falling between March 27 and May 31, 2020, to June 1, 2020, for the following:
Responses to USPTO Office actions,
Statements of use (or requests for an extension of time to file the same),
Notices of opposition (or requests for an extension of time to file the same),
Priority filing basis,
Affidavits of use or excusable nonuse,
Transformations of extensions of protection to the United States into US applications, and
For situations in which COVID-19 affected a filing at the Trademark Trial and Appeal Board (TTAB), the USPTO advises filing a request or motion for an extension or reopening of time.
Responses to USPTO Office notices or actions,
For small or micro entities only, replies to USPTO notices issued during pre-examination processing and
For all entities, replies to USPTO Office actions or notices issued during examination or patent publication processing;
Notices of appeal, payment of the appeal forwarding fee and other appeal-related briefing deadlines;
Requests for oral hearings before the PTAB;
Responses to a substitute examiner’s answer;
Amendments when reopening prosecution as a result of a PTAB decision that includes a new ground of rejection;
For small or micro entities only, paying maintenance fees;
Requests for rehearing of a PTAB decision; and
Petitions to the Chief Judge
The USPTO previously announced that certain PTAB deadlines are also eligible for a 30-day extension, including certain requests for rehearing a PTAB decision; petitions to the Chief Judge, and patent owners’ preliminary responses (POPR) in inter partes review (IPR) or post-grant review (PGR) proceedings and related responsive filings. However, the April 28, 2020 notice provided that for deadlines between March 27 and April 30, 2020, a 30-day extension of time would only be provided for POPRs in IPR or PGR proceedings and related responsive filings. The USPTO still noted that as a result of extended deadlines for POPRs and responsive filings in IPR or PGR proceedings, the timing for the PTAB to decide whether to institute an IPR or PGR (statutorily within three months after receiving a POPR or response to a POPR) may also be extended. For situations not explicitly covered by the USPTO notices, parties may submit requests for an extension of time by contacting the PTAB.
US Copyright Office
The CARES Act, through the addition of Section 710 to the US Copyright Act, also provided temporary authority to the Register of Copyrights to extend certain deadlines. Section 710 authorized the Copyright Office to “toll, waive, adjust, or modify any timing provision . . . or procedural provision” in the Copyright Act if the Register of Copyrights determines that a national emergency declared by the President under the National Emergencies Act “generally disrupts or suspends the ordinary functioning of the copyright system.” The Register of Copyrights has this authority through December 31, 2021.
Pursuant to this authority, the USCO has announced modifications for applicants without access to the internet or necessary physical materials. Notably, the USCO adopted a “tiered approach” to modifying the deadlines under Section 412 of the Copyright Act, which states that a copyright owner can generally only receive statutory damages for infringement when the work is registered prior to the infringement or within three months of the work’s first publication. The USCO specifically addressed three situations, namely:
For applications that can be filed entirely electronically (i.e., those not requiring submission of a physical deposit), there are no changes to the timing provisions of Section 412.
Applicants able to submit an electronic application, but unable to submit a required physical deposit, may be eligible for an extension to submit the physical deposit if the window for registration after the date of first publication was open as of March 13, 2020. In this case, the deadline can be extended until 30 days after the date when the disruption has ended, provided that the applicant includes a declaration, under penalty of perjury, that he/she is unable to submit the physical deposit and would have done so but for the national emergency. The statement should also include supporting evidence, such as a statement that the applicant was subject to a stay-at-home order or that the applicant was unable to access necessary physical materials due to business closures.
Applicants unable to submit applications electronically or physically may also be eligible for an extension of the three-month Section 412 deadline. In this case, the portion of the three-month period that fell between March 13, 2020, and the end of the emergency disruption will be tolled. Applicants can submit the application at the end of the disruption and include a declaration, under penalty of perjury, that he/she was unable to submit an application electronically or physically and would have done so but for the national emergency. The statement should also include supporting evidence, such as a statement that the applicant did not have access to the internet or that the applicant was prevented from accessing or sending required physical materials.
For situations not explicitly outlined in the notice, parties should contact the USCO.
The USCO has also provided additional guidance for electronic applications with physical deposits. For electronic applications filed before April 2, 2020, the USCO may contact applicants who have already submitted a physical deposit and offer the option of providing an additional electronic copy of the work for the USCO to examine remotely. If the applicant agrees, the electronic deposit copy must be submitted with a declaration form stating, under penalty of perjury, that the electronic copy is identical to the previously submitted physical copy. For newly submitted electronic applications requiring submission of “best edition” physical deposit copies, applicants will have the option of uploading an electronic copy of the work in addition to mailing required physical copies. Any electronic copy must be submitted with a declaration form swearing, under penalty of perjury, that the electronic copy is identical to the required physical copies that will be mailed to the USCO.
Applicants who cannot or choose not to submit an electronic copy of their deposit will have their claims examined once USCO specialists resume in-Office examination. Examination of the claims will be delayed, but the effective date of registration “will generally be the date that the Office received the application, fee, and physical deposit.”
For more information about the CARES Act and COVID-19 generally, please visit McDermott’s Coronavirus Resource Center. Brought to you by a multi-disciplinary team, the Resource Center provides information on the latest developments and comprehensive insight to help navigate this crisis.