Practical tips on working in a COVID-19 world
IP offices around the world are taking steps to address the impact of the COVID-19 crisis on IP practitioners and their own operations. Such measures include extensions to deadlines related to the prosecution of patents, trademarks, and copyrights. These measures, however, may only cover certain situations, and must be carefully considered prior to any change in IP prosecution or portfolio strategies.
This legal update describes temporary relief at the US Patent and Trademark Office (USPTO) and the IP offices of several foreign jurisdictions, highlighting notable extensions—and the lack thereof—that could affect the registration of patents, trademarks, and copyrights. Best practices for protecting and maintaining one’s registered IP rights during the outbreak are also included.
Patents and trademarks
On March 27, 2020, the US Congress enacted the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) authorising the USPTO and the Register of Copyrights to “toll, waive, adjust, or modify any timing deadline established by [the relevant statutes].”
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 (see also “ Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak”; and (2) a Notice of Waiver of Trademark-Related Timing Deadlines under the CARES Act (jointly, the Waivers). These Waivers considered the effects of COVID-19 to be an “extraordinary situation” within the meaning of the relevant statutes and 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.
“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.”
For patents, full list here, notable examples include extended deadlines to respond to office actions, pay issue fees and the time to file a patent owner’s preliminary response in a Patent Trial and Appeals Board (PTAB) proceeding.
For trademarks, full list here, examples include extended deadlines to respond to office actions, file statements of use, notice of oppositions, and priority filing basis under international conventions.
Details
However, 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 materially affected by the outbreak in connection with timely filing or payment. USPTO published guidelines explains this covers situations where the filer, attorney or other person associated with the filing is “personally affected” by the outbreak, including by “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances.” To secure relief, parties must provide a statement that the need was caused by the pandemic.
Second, even for those materially impacted by the crisis, several deadlines remain unchanged. For example, the 35 USC §102 statutory one-year bar to patentability remains in full effect. Under §102, an inventor who discloses a claimed invention through a printed publication, public use, or sale, is barred from claiming that invention unless a patent is filed within one year.
This includes where inventors secure a patent in a foreign country only to find this very patent bars them from rights in the US. In addition, deadlines to claim priority to a foreign patent application, such as through the Patent Cooperation Treaty, remain unaffected (35 USC §119).
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 challenged in district court (35 USC §315[b]).
In the context of trademarks, unchanged deadlines include those in ongoing Trademark Trial and Appeal Board (TTAB) proceedings related to motion practice and ex parte appeals, although requests for an extension or reopening of time (as appropriate) can still be made. In addition, the USPTO has not issued formal guidance about whether the pandemic constitutes viable grounds to support an affidavit of excusable non-use (eg, situations where the pandemic caused a failure to resume use of a mark by a final declaration-of-use deadline).
Different offices
As indicated below, IP offices throughout the world have implemented their own versions of deadline extensions. For example:
