As an update to our earlier post regarding deadlines and operation of the United States Patent and Trademark Office (USPTO) during the ongoing COVID-19 situation, the USPTO under the authority of the CARES Act announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. While the USPTO continues to operate as normal with respect to e-filing and examination of applications, it recognizes that this national emergency has disrupted the normal operation of businesses and individuals. Essentially, the notice provides that most USPTO prosecution deadlines falling between March 27 to April 30 are eligible for a 30-day extension if filed with a statement that the delay “is due to the COVID-19 outbreak” and a party or attorney involved “was personally affected.” Detailed lists of filings for which relief is provided are in the notices for patent and trademark filings. Continue Reading
How Patent Offices Outside the United States Are Responding to the COVID-19 Pandemic
It has been more than two weeks since the United States Patent and Trademark Office issued a formal response to the COVID-19 pandemic announcing that certain petition fees could be waived for patent applicants who are personally impacted by the novel coronavirus. We previously discussed this on our blog. Since then, patent offices around the world have begun enacting various exceptions and special allowances in view of the evolving global health crisis.
The Canadian Intellectual Property Office (CIPO) recently announced that any deadlines for patent, industrial design, and trademark matters that fall between March 16 and April 30, 2020 are automatically extended to May 1st, 2020, which date may be further extended. Online services remain available but several regional offices are no longer receiving CIPO correspondence until further notice. Continue Reading
Companies Must Evaluate and Respond to Data Security and Privacy Issues Raised by COVID-19
Remote work is a mandate for many companies during the coronavirus (“COVID-19”) pandemic. With so many employees working from home, companies face increasing privacy and data security challenges as they conduct business remotely while attempting to protect sensitive data from unauthorized access and use.
Organizations must ensure that they are implementing the proper security and privacy measures necessary for secure remote work. Below is guidance on the most pressing data security and privacy issues: Continue Reading
How the USPTO is Responding to the Coronavirus Outbreak
There is seemingly no aspect of our lives untouched by the coronavirus outbreak and the United States Patent and Trademark Office (USPTO) is no exception. While the examination of trademark and patent applications seems to be proceeding relatively normally (for example I have made and received phone calls from patent examiners this past week to advance prosecution of patent applications and the electronic filing process is proceeding as normal), the USPTO has issued an official notice regarding relief for UPSTO customers affected by COVID-19. The USPTO considers the effects of coronavirus to be an “extraordinary situation” for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. Therefore, the USPTO is waiving petition fees in certain situations for customers impacted by the coronavirus. Continue Reading
The Supreme Court Speaks Unanimously: The USPTO Cannot Recover Legal Fees for Losing
On December 11, 2019, the Supreme Court unanimously decided that the term “expense” under §145 of the Patent Act does not include the salaries of the USPTO’s legal personnel, and put an end to the USPTO’s attempts to recover attorneys’ fees in court challenges to its decisions.
The Peter v. NantKwest, Inc. dispute arose after the USPTO denied NantKwest’s patent application for a method to treat cancer in 2013. NantKwest unsuccessfully appealed the USPTO’s decision in 2017, and the U.S. District Court for the Eastern District of Virginia awarded the USPTO its experts’ fees, but not attorneys’ fees. The district court held that the so-called “American Rule” includes a presumption that litigants pay their own attorneys’ fees. The USPTO challenged this decision and tried to recoup its “expenses,” arguing that the “expenses” mentioned in 35 U.S.C. § 145 included the salaries of its attorneys and paralegals involved in the case. Sitting en banc, the Federal Circuit agreed with the district court on July 27, 2018, and the USPTO appealed to the Supreme Court. The Supreme Court granted the USPTO’s petition for certiorari.
