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.
On the patent side, the notice includes non-final and final Office Actions, issue fees, and appeal briefing. Please note, the extensions do not cover original filing deadlines, PCT or national stage filing deadlines, deadlines for filing a non-provisional application following a provisional, or deadlines for filing an inter partes review petition. The personal impact can apply to practitioners (attorney prosecuting the application for example), applicants, patent owners, petitioner, third party requesters, inventors, “or other person associated with the filing or fee.” The “personally affected” clause includes, without limitation, “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness.”
On the trademark side, the notice explicitly covers responses to Office Actions, statements of use, notice of opposition, priority filings, affidavits of use and renewal applications. The notice also leaves open the door for deadline relief in other situations “where the COVID-19 outbreak has prevented or interfered with a filing before the Board,” although the extension in those cases may require a separate filing for the requested relief. Similar to the patent notice, the trademark notice requires that filers looking to take advantage of the extension attest that they were “personally affected” by the COVID-19 outbreak, with a similar non-exclusive list of examples of acceptable impacts that may have “materially interfered with timely filing or payment.”
The US Copyright Office has additionally announced extensions to certain copyright-related deadlines for persons unable to comply due to the COVID-19 national emergency under the authority of the CARES Act. These emergency modifications will be in effect for sixty days, unless the Copyright Office issues an announcement stating that the period of disruption has ended before that time, or alternatively, that a further extension is necessary. For copyright registrations, the announcement allows affected copyright owners to receive additional time to register a work in order to be eligible for certain remedies in infringement actions. Under the Copyright Act, a copyright owner generally is eligible to be awarded statutory damages in an infringement action only if the work is registered prior to the infringement or within three months of the work’s first publication. The Copyright Office will extend the three-month window for applicants who were unable to comply due to the COVID-19 national emergency because, for example, they could not mail or could not access the required physical materials or lacked access to a computer or the Internet. To qualify, an applicant must submit a statement certifying under penalty of perjury that they would have met the deadline but for the national emergency.
Additionally, the announcement extends deadlines related to reclaiming copyright interests. Under the Copyright Act, individual authors may reclaim copyright interests previously transferred to another party in specified circumstances. In general, an author may terminate a transfer within a five-year window, provided the author serves notice on the transferee between two and ten years before the chosen termination date. After service, the notice must be recorded with the Copyright Office. The announcement provides extensions for authors who are prevented from serving or recording notices of termination within the required time periods. These authors must also submit a statement certifying under penalty of perjury that they would have met the deadline but for the national emergency.
We at MNG&D are here to help you navigate this ongoing national emergency and related changes in government practices.