Update: Navigating the USPTO During the COVID-19 Pandemic
March 27, 2020
Updated April 1, 2020
We previously reported on USPTO COVID-19 related information, including a prior statement that the USPTO was unable to change deadlines. The USPTO has now obtained statutory authority to modify deadlines and has extended certain deadlines that would otherwise fall between March 27 and April 30, 2020. This update reiterates our previously reported information and provides the updated changes to deadlines.
Due to the ongoing COVID-19 pandemic, courts and agencies are issuing new rules and guidance on an almost-daily basis. Over the past few weeks, the United States Patent and Trademark Office (USPTO) has issued several notices to both flatten the curve and assist those unable to timely reply to Office communications as a result of the pandemic. The USPTO has deemed the effects of COVID-19 to be an “extraordinary situation” within the meaning of 37 CFR § 1.183 and 37 CFR § 2.146.1 And, yesterday, the USPTO announced extensions of time for certain filing deadlines and associated fees.2 We summarize the notices below.
- Examiner and examining attorney interviews, Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) oral hearings, and other in-person meetings scheduled to take place at USPTO offices are to be conducted remotely by video or telephone.3
- All USPTO offices are closed to the public, but, unless otherwise notified, USPTO operations will continue without interruption.4
- The USPTO will waive petition fees to revive patent applications that have been abandoned or the reexamination prosecution terminated or limited where the effects of COVID-19 led to a deadline for responding to Office communications being missed. The relevant notice provides that: “the petition … must include a statement that the delay in filing the reply required to the outstanding Office communication was because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply.” The petition must still be timely submitted.5
- Similarly, the USPTO will waive petition fees to revive trademark applications that have been abandoned and reinstate trademark registrations that have been cancelled or expired where the effects of COVID-19 led to a deadline for responding to Office communications being missed. The relevant notice provides that: “the petition must include a statement explaining how the failure to respond to the Office communication was due to the effects of the Coronavirus outbreak.” Again, the petition must still be timely submitted.6
- The USPTO has waived its requirement for an original handwritten, ink signature for correspondence relating to: (i) registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and (ii) payments by credit cards where the payment is not being made via the Office’s electronic filing system. Copies of handwritten signatures for such correspondence will be accepted instead.7
- The USPTO has extended the time to file certain patent-related documents or fees which otherwise would have been due between, and inclusive of, March 27, 2020 and April 30, 2020 by 30 days from the initial date it was due. The relevant notice provides that the filing must be “accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.” The notice proceeds to explain: “A delay in filing or payment is due to the COVID-19 outbreak for purposes of this notice if a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.” It is important to note that the extension does not cover statutory bar dates (e.g., 12 month deadline for filing a non-provisional application following a provisional).8
- Similarly, the USPTO has extended the time to file certain trademark-related documents or fees which otherwise would have been due between, and inclusive of, March 27, 2020 and April 30, 2020 by 30 days from the initial date it was due. The relevant notice also provides that the filing must be “accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak,” which is similarly defined as above.9
While the USPTO previously noted that many of the deadlines it imposes are set in statute and it did not have the legal authority to change such deadlines,10 under the Coronavirus Aid, Relief and Economic Security Act, which was signed into law by President Trump on March 27, 2020, the Director of the USPTO was granted temporary authority to “toll, waive, adjust, or modify” any statutory deadline in the event that the pandemic “materially affects the functioning of the [USPTO],” “prejudices the rights of applicants, registrants, patent owners or others appearing before the Office,” or “prevents [the same] from filing a document or fee with the Office.”11 As evidenced by the most recent notice, Director Andrei Iancu12 has exercised such authority. In a press release, Iancu stated: “[i]nventors and entrepreneurs are the lifeblood of our economy, and we recognize that many of them are having difficulty as a result of the effects of COVID-19.” 13 He further explained: “[the Office’s] goal is to ensure not only that inventors and entrepreneurs can weather the storm, but that they can hit the ground running once it passes.”14
The above notices are in effect until further notice. As such, and because the situation is evolving each day, patent and trademark applicants, owners, and practitioners should be certain to regularly consult the USPTO’s webpage concerning COVID-19 for any additional changes to current regulations. It is also important to remember that USPTO operations are continuing and, in this regard, the Office is still accepting new filings (and all other submissions). While the pandemic poses unprecedented challenges for most businesses, intellectual property filings need not fall to the wayside.
Robins Kaplan LLP continues to monitor this situation and the impact of COVID-19 on various industries. For an up-to-date resource on the legal and business complexities of COVID-19, please visit our COVID-19 Resource Center.
1 “Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners
Affected by the Coronavirus Outbreak” (March 16, 2020), available at https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf.
2 “USPTO announces extension of certain patent and trademark-related timing deadlines under the Coronavirus Aid, Relief, and Economic Security Act” (March 31, 2020), available at https://www.uspto.gov/about-us/news-updates/uspto-announces-extension-certain-patent-and-trademark-related-timing.
3 “USPTO notices regarding COVID-19”, available at https://www.uspto.gov/coronavirus.
4 Supra note 3.
5 Supra note 1.
6 Supra note 1.
7 “Waiver of Original Handwritten Signature Requirement Due to the COVID-19 Outbreak” (March 19, 2020), available at https://www.uspto.gov/sites/default/files/documents/Waiver%20of%20Original%20Handwritten%20Signature%20Requirement%20Due%20to%20the%20COVID-19%20Outbreak%20--%20Signed%20and%20Dated%20--%203-19-2020.pdf.
8 “Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act” (March 31, 2020), available at https://www.uspto.gov/sites/default/files/documents/Patents%20CARES%20Act.pdf.
9 “Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act” (March 31, 2020), available at https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act.pdf.
10 Supra note 1.
11 Coronavirus Aid, Relief, and Economic Security Act, H.R. 748, 116th Cong. (2020).
12 Andrei Iancu is the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
13 Supra note 2.
14 Supra note 2.
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