Patent and Trademark Office Issue Guidelines for COVID-19 Filing Extension
The Coronavirus Aid, Relief, and Economic Security (CARES) Act included provisions giving the Director of the United States Patent and Trademark Office (USPTO) and the Register of Copyrights temporary authority to toll, waive, adjust or modify timing deadlines established by the Patent Act, the Trademark Act and the Copyright Act. Section 12004 of the CARES Act grants that authority to the Director; Section 19011 addresses the authority of the Register of Copyrights. The Director has issued rules for trademarks discussed below.
Trademark Office Extends Certain Deadlines for Applicants, Registrants and Parties to TTAB Proceedings
Acknowledging that the “spread of the virus has significantly disrupted operations of numerous businesses and law firms,” Andrei Iancu, the Undersecretary of Commerce for Intellectual Property and Director of the Patent and Trademark Office, announced that persons unable to meet certain trademark-related timing deadlines due to the COVID-19 outbreak may be eligible for a waiver of certain deadlines. Specifically, the due date for actions (including payment of any fee) due between, and inclusive of March 27, 2020 and April 30, 2020 may be extended for 30 days from the initial date it was due, provided that the filing is accompanied by a statement that the delay was due to COVID-19.
Acceptable reasons for delay include if the person associated with the filing of fee was personally affected by COVID-19 through office closure, cash flow interruptions, inaccessibility of files, travel delays, personal or family illness or similar circumstances that materially interfered with timely filing or payment. The following actions are specifically included:
- Response to an office action, including a notice of appeal from a final refusal;
- Filing statements of use;
- Notice of opposition or request for extension of time to file a notice of opposition;
- Certain priority filings;
- Transformation of an extension of protection to the United States into a U.S. application;
- Affidavits of use or excusable non-use;
- Renewal applications; and
- In TTAB situations not covered above, a request (in ex parte appeals) or motions (for trial cases) for an extension or reopening of time can be made.
Existing procedures to revise abandoned applications or reinstate a canceled/expired registration remain available due to inability to timely respond to trademark-related Office communications as a result of COVID-19. And, as described in the Office’s March 16, 2020 “Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners,” notice fees for such petitions are waived.
Importantly, the USPTO remains open for filing of trademark and TTAB documents and fees.
Important Issue for Copyright Owners
Section 19011 of the CARES Act adds a new Section 710 to the Copyright Act that provides that, through the end of 2021, if the Register of Copyrights determines that a national emergency is disrupting or suspending the ordinary functioning of the copyright system, the Register may temporarily take similar steps as those taken by the Director of the USPTO. The provision of general public notice detailing the action being taken by the Register in response to the national emergency is sufficient to effectuate such action, and the Register will not be required to adhere to the notice requirements of the Administrative Procedure Act. The Register is authorized to make adjustments to deadlines effective both prospectively and retroactively, although any action by the Register may only be retroactive with respect to a deadline that has not already passed.
Importantly, the authority granted the Register provided by Section 710 does not extend Copyright Act provisions requiring the commencement of an action or proceeding in federal court within a specified period of time, with a minor exception relating to the availability date for compulsory music licenses defined in Section 115(e)(15).
As with all aspects of daily life, COVID-19 coronavirus has neither spared intellectual property (IP) nor has it brought it to a halt. As most patent, trademark and copyright filings and prosecutions are done online, and most IP attorneys – including KJK’s IP Practice Group – are fully operational remotely, these activities should keep running smoothly in the near term.
For more information or to discuss further, please reach out to David Posteraro at email@example.com or 216.736.7218.