On March 27, 2020, the President signed into law the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which authorized the US Copyright Office (USCO) and the United States Patent and Trademark Office (USPTO) to temporarily waive or modify certain statutory deadlines. Prior to the CARES Act, the USPTO and USCO had sought to provide relief to intellectual property owners by waiving certain fees (including, for example, fees associated with petitions to revive abandoned applications), but had been limited by their inability to modify statutory deadlines.
The extensions will undoubtedly provide needed relief for certain rights holders during this tumultuous time. Nonetheless, if possible, adhering to original deadlines is the safest route, and parties should first carefully review the USPTO and USCO notices with a lawyer to determine whether the extensions are applicable and legally prudent.
Section 12004 of the CARES Act allows the USPTO to “toll, waive, adjust or modify any timing deadline established by title 35 [of the] United States Code, the Trademark Act, section 18 of the Leahy-Smith America Invents Act (35 U.S.C. 321 note), or regulations promulgated thereunder” provided that the Director determines that the coronavirus emergency: (1) materially affects the functioning of the USPTO; (2) prejudices the rights of applicants, registrants, patent and trademark owners or others appearing before the USPTO; or (3) prevents applicants, registrants, patent and trademark owners or others appearing before the USPTO from filing a document or fee with the USPTO.
Having determined that the second and third criteria were satisfied, the USPTO Director issued notices extending certain deadlines falling between and inclusive of March 27, 2020, and April 30, 2020, by 30 days. However, all applicants seeking relief under these waivers must include a statement with any filing or payment stating that the delay was due to a practitioner, applicant, registrant, patent or trademark owner, petitioner or third-party requester, inventor or other associated person having been personally affected by the COVID-19 outbreak, including, for example, as a result of:
- Affected persons’ office closures,
- Cash flow interruptions,
- Inability to access files or other materials,
- Travel delays,
- Personal or family illness, or
- Other similar circumstances.
The USPTO’s earlier waiver of fees associated with reviving an abandoned application or reinstating a canceled or expired registration still stands. These notices provide for the possibility of 30-day extensions of time for the following:
- Responses to USPTO Office actions,
- Statements of use (or requests for an extension of time to file the same),
- Notices of opposition (or requests for an extension of time to file the same),
- Priority filing basis,
- Affidavits of use or excusable nonuse,
- Transformations of extensions of protection to the United States into US applications, and
- Renewal applications.
For situations in which COVID-19 affected a filing at the Trademark Trial and Appeal Board (TTAB), the USPTO advises filing a request or motion for an extension or reopening of time.
- Responses to USPTO Office notices or actions,
- For small or micro entities only, replies to USPTO notices issued during pre-examination processing and
- For all entities, replies to USPTO Office actions or notices issued during examination or patent publication processing;
- Issue fees;
- Notices of appeal, payment of the appeal forwarding fee and other appeal-related briefing deadlines;
- Requests for oral hearings before the PTAB;
- Responses to a substitute examiner’s answer;
- Amendments when reopening prosecution as a result of a PTAB decision that includes a new ground of rejection;
- For small or micro entities only, paying maintenance fees; and
- Requests for rehearing of a PTAB decision.
Certain PTAB deadlines are also eligible for 30-day extension, including certain requests for rehearing a PTAB decision; petitions to the Chief Judge, and patent owners’ preliminary responses (POPR) in inter partes review (IPR) or post-grant review (PGR) proceedings and related responsive filings. The USPTO noted that as a result of extended deadlines for POPRs and responsive filings in IPR or PGR proceedings, the timing for the PTAB to decide whether to institute an IPR or PGR (statutorily within three months after receiving a POPR or response to a POPR) may also be extended. For situations not explicitly covered by the USPTO notices, parties may submit requests for an extension of time by contacting the PTAB.
US Copyright Office
The CARES Act, through the addition of Section 710 to the US Copyright Act, also provided temporary authority to the Register of Copyrights to extend certain deadlines. Section 710 authorized the Copyright Office to “toll, waive, adjust, or modify any timing provision . . . or procedural provision” in the Copyright Act if the Register of Copyrights determines that a national emergency declared by the President under the National Emergencies Act “generally disrupts or suspends the ordinary functioning of the copyright system.” The Register of Copyrights has this authority through December 31, 2021.
Pursuant to this authority, the USCO has announced modifications for applicants without access to the internet or necessary physical materials. Notably, the USCO adopted a “tiered approach” to modifying the deadlines under Section 412 of the Copyright Act, which states that a copyright owner can generally only receive statutory damages for infringement when the work is registered prior to the infringement or within three months of the work’s first publication. The USCO specifically addressed three situations, namely:
- For applications that can be filed entirely electronically (i.e., those not requiring submission of a physical deposit), there are no changes to the timing provisions of Section 412.
- Applicants able to submit an electronic application, but unable to submit a required physical deposit, may be eligible for an extension to submit the physical deposit if the window for registration after the date of first publication was open as of March 13, 2020. In this case, the deadline can be extended until 30 days after the date when the disruption has ended, provided that the applicant includes a declaration, under penalty of perjury, that he/she is unable to submit the physical deposit and would have done so but for the national emergency. The statement should also include supporting evidence, such as a statement that the applicant was subject to a stay-at-home order or that the applicant was unable to access necessary physical materials due to business closures.
- Applicants unable to submit applications electronically or physically may also be eligible for an extension of the three-month Section 412 deadline. In this case, the portion of the three-month period that fell between March 13, 2020, and the end of the emergency disruption will be tolled. Applicants can submit the application at the end of the disruption and include a declaration, under penalty of perjury, that he/she was unable to submit an application electronically or physically and would have done so but for the national emergency. The statement should also include supporting evidence, such as a statement that the applicant did not have access to the internet or that the applicant was prevented from accessing or sending required physical materials.
For situations not explicitly outlined in the notice, parties should contact the USCO.
The USCO has also provided additional guidance for electronic applications with physical deposits. For electronic applications filed before April 2, 2020, the USCO may contact applicants who have already submitted a physical deposit and offer the option of providing an additional electronic copy of the work for the USCO to examine remotely. If the applicant agrees, the electronic deposit copy must be submitted with a declaration form stating, under penalty of perjury, that the electronic copy is identical to the previously submitted physical copy. For newly submitted electronic applications requiring submission of “best edition” physical deposit copies, applicants will have the option of uploading an electronic copy of the work in addition to mailing required physical copies. Any electronic copy must be submitted with a declaration form swearing, under penalty of perjury, that the electronic copy is identical to the required physical copies that will be mailed to the USCO.
Applicants who cannot or choose not to submit an electronic copy of their deposit will have their claims examined once USCO specialists resume in-Office examination. Examination of the claims will be delayed, but the effective date of registration “will generally be the date that the Office received the application, fee, and physical deposit.”
McDermott’s Coronavirus Resource Center
For more information about the CARES Act and COVID-19 generally, please visit McDermott’s Coronavirus Resource Center. Brought to you by a multi-disciplinary team, the Resource Center provides information on the latest developments and comprehensive insight to help navigate this crisis.