Update on USPTO and U.S. Copyright Office Extensions and Adjustments

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On March 27, 2020, President Trump signed the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), which provides, in part, the United States Patent and Trademark Office (USPTO) with the authority during the current emergency to “toll, waive, adjust, or modify any timing deadline established,” in the Patent Act, Trademark Act, and the Copyright Act, including regulations implementing timing deadlines. Before taking such action, the USPTO must determine that the COVID-19 emergency “(1) materially affects the functioning of the patent and trademark office; (2) prejudices the rights of applicants, registrants, patent owners, or others appearing before the office; or (3) prevents applicants, registrants, patent owners or others appearing before the office from filing a document or fee with the office.” This temporary authority to act ends sixty days after the emergency.

Accordingly, on March 31, 2020, the United States Patent and Trademark Office (USPTO) announced the extension of certain patent and trademark-related deadlines, pursuant its authority under the CARES Act.

The notice of waiver of trademark-related deadlines provides a thirty-day extension from the initial due date that was between, and inclusive of, both March 27, 2020 and April 30, 2020 for several matters, including, but not limited to, the following: (i) a response to an Office action, including a notice of appeal from a final refusal, (ii) notice of opposition or request for extension of time to file a statement of use, and (iii) a renewal application. In order to obtain the deadline extension, the filing must be accompanied by a statement that the delay in filing or payment was due to any person associated with the matter personally affected by the COVID-10 outbreak as defined in subsection (b) of the notice.

Similarly, the notice of waiver for patent-related deadlines provides a thirty-day extension from the initial due date that was between, and inclusive of, both March 27, 2020 and April 30, 2020 for several matters, including, but not limited to, the following: (i) an issue fee, (ii) a notice of appeal, and (iii) a request for an oral hearing before the Patent Trial and Appeal Board (PTAB). Likewise, in order to obtain the deadline extension, the filing must be accompanied by a statement that the delay in filing or payment was due to any person associated with the matter personally affected by the COVID-10 outbreak as defined in subsection (b) of the notice. For all other PTAB situations not listed in subsection (a) of the notice, a request for a COVID-19 extension can be made by contacting the PTAB by phone at (571)-272-9797 or by the e-mails listed in the notice.

Patent documents and fees may still be submitted to the USPTO through the electronic filing system, the United States Postal Service by Priority Mail Express or with a certificate of mailing, by hand-delivery to the Customer Service Window, or by facsimile transmission.

The USPTO released official statements activating the waiver of petition fee required in certain situations for those impacted by the COVID-19 pandemic and waiving its regulatory requirements for original handwritten signatures effective until further notice (copies of handwritten signatures are now acceptable). Additionally, as you may be aware, until further notice, all examiner and examining attorney interviews, PTAB, and Trademark Trial and Appeal Board (TTAB) oral hearings, and other similar in-person meetings scheduled to take place on or after March 13, 2020 will instead be conducted remotely by video or telephone.

As a result of its buildings being closed to the public to reduce the risk of transmitting COVID-19, the U.S. Copyright Office has advised that the processing of paper applications and the examination of physical deposits will be delayed. Further, the U.S. Copyright Office has modified its special handling policy to provide that (i) “special handling claims will be examined within five working days if the applicant submits an electronic application, pays the filing fee and the additional fee for special handling, and uploads a digital deposit to the eCO system,” and (ii) “special handling claims with a physical deposit will be examined within five business days if the applicant also uploads a digital copy of that same work through the eCO system . . . the electronic upload must be accompanied by a declaration or similar statement certifying under penalty of perjury, that the content of the digital deposit is identical to the physical deposit that has been sent to the Copyright Office.” As of March 20, 2020, the U.S. Copyright Office will send refusal letters and decision letters for requests for reconsideration solely via e-mail. The letters will be sent to the email address provided in the registration application. Importantly, fees for many services, including the fee to request reconsideration of a refused registration, have increased.

Both the USPTO and the U.S. Copyright Office have indicated that the effect of the national emergency will be monitored and further adjustments may be considered based on the circumstances. As such, we will continue to track the COVID-19 impacts to the intellectual property industry and provide you with the latest updates as they may impact your business. As a reminder, the U.S. Copyright Office remains open to users of its services through its website www.copyright.gov, including online registration. Although it is unable to accept deliveries by personal courier at this time, it is accepting deliveries of documents sent by U.S. Postal mail and commercial delivery services such as UPS, FedEx, and DHS. The office can be reached by phone at (202) 707-3000.

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