Category Archives: Trademarks and Brands

Use caution before taking advantage of extended IP filing deadlines under CARES Act

(Note: This post was updated June 30, 2020 to reflect the new extension dates that the USPTO published on that date.)

The newly-enacted Coronavirus Aid, Relief, and Economic Security (CARES) Act provides patent and trademark applicants the opportunity for temporary relief from certain deadlines as more and more businesses face mandatory shutdowns due to effects of COVID-19.

Patent and trademark filing extensions

Extensions available through June 30, 2020

On March 31, 2020, and updated on April 28, 2020, the USPTO issued notices indicating that it will waive certain patent and trademark filing deadlines under the CARES Act. The notices indicated that certain deadlines that arise between March 27, 2020 and June 1, 2020 were extended to June 1, 2020 if the applicant or patent/trademark registrant could certify that the delay in filing was because the applicant, inventor, patent or trademark registrant, petitioner, or attorney or agent was “personally affected” by the COVID-19 outbreak.  The USPTO subsequently revised this extension period for patents to June 30, 2020 for small and micro entities only.

The patent-related deadlines that were permitted to be extended include due dates for Office Action responses, maintenance fee payments, issue fees, appeal filings, and certain Patent Trial and Appeals Board filings. The trademark-related deadlines that may be extended include deadlines for Office Action responses, statements of use and affidavits of use, renewal applications, and notices of opposition.

Patent filing extensions available through July 31, 2020

On June 12, the USPTO published an additional notice indicating that it will extend the time for claiming priority to a provisional patent application in certain situations. The typical rules are that an applicant who files a utility patent application has 12 months to claim priority to a provisional patent application, and that the applicant can petition for a two-month grace period if the applicant unintentionally missed the 12-month deadline. The new notice states that if an applicant missed a 12-month deadline that ended between March 27, 2020 and July 30, 2020 and the reason for the delay was that the applicant was “personally affected” by the COVID-19 outbreak, the USPTO will extend the two month period until July 31, 2020 or the end of the two-month period, whichever is later. The USPTO also provides some relief for missed international filing deadlines, but that relief is limited to a waiver of the petition fee. (The two-month grace period is not extended for international applications.)

Ongoing flexibility for trademarks

Although the official extension period for trademark filings expired on May 31, 2020, the USPTO stated that “[i]the interest of maintaining flexibility and options for our stakeholders, the USPTO will continue to waive the petition fee for petitions to revive applications or reinstate registrations that became abandoned or expired/cancelled as a result of the COVID-19 outbreak, with a statement that the delay in filing or payment was due to the COVID-19 outbreak.”

Patent Fee Extensions

Finally, on June 29, 2020, the USPTO further extended fee payment deadlines for small and micro entities only. Specifically, small and micro entities who can make the required certification can defer until September 30, 2020 payment of filing fees, issue fees, maintenance fees and certain other fees due after March 27, 2020.

The USPTO has created a form that applicants should use when requesting any extension of time due to the COVID-19 outbreak. The form is available at this link.

Copyright extensions

The U.S. Copyright Office has extended certain registration timing requirements that typically must be followed in order to seek statutory damages in an infringement claim. In general, a copyright owner is eligible for 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 is extending the three-month window for certain works having a window close date that is between March 13, 2020 and the date that the Acting Register of Copyrights announces an end of the disruption period. However, this extension is only available if the applicant submits evidence that the applicant was “unable to submit a physical deposit of the work and would have done so but for the national emergency.” The extension is not available for works that can be submitted entirely in electronic form.

The Copyright Office also expanded the types of documents that it will accept electronically to include notices of termination for recordation, requests for reconsideration of refusals to register, and requests for removal of personally identifiable information from the public record. For applications filed after April 2, 2020 that require physical deposit material, the Copyright Office is also accepting electronic copies so long as the applicant also mails a physical copy later.

Cautions before taking advantage of extended deadlines

Patent and trademark applicants and registrants should exercise caution before relying on the USPTO’s extended deadlines under the CARES Act. First and foremost, patent application filing deadlines are not changed. The extended deadlines for patents only apply to granted patents and already-filed applications.

Also, certain of the patent deadline extensions are only available to small entities and micro entities. Notably, only small entities and micro entities may extend maintenance fee payments.

Also, to qualify for any of the USPTO’s extended deadlines the late filing must be accompanied by a statement that the applicant, patent or trademark owner, inventor, attorney or agent, or petitioner was “personally affected” by the COVID-19 outbreak. This means that “the outbreak materially interfered with timely filing or payment.” Patent and trademark applicants, owners and their representatives who contracted COVID-19, or applicants (such as healthcare providers) whose businesses are focused on COVID-19 response can likely state that the outbreak materially interfered with the filing. Patent and trademark applicants, owners and representatives with an affected family member likely also can make the statement. It’s likely that applicants, owners, and representatives who are subject to “stay at home” government mandates and who are caring for family members and/or home-schooling young children could also do so. Further, applicants that are businesses with cash flow concerns due to business distruption should be able to make this statement, especially if the deadline involves payment of a fee.

However, someone who simply chooses to delay may not be able to truthfully say that the outbreak “materially interfered” with timely filing or payment. Thus, patent and trademark applicants, owners, and their representatives should carefully consider whether they qualify for the extended deadlines before relying on them.

Copyright applicants should consider whether they can provide evidence that they were “unable” to file the application within the normal three-month window. If the work is of a type that can be electronically deposited, the applicant must do so within the unextended time period unless the applicant provides evidence that it could not do so, for example by certifying that the applicant had no access to a computer and/or the Internet. If the work is of a type that cannot be electronically deposted, the applicant must certify that it was subject to a government stay-at-home order, or that it was unable to access physical materials due to business closure.

Special thanks to my Fox Rothschild colleagues Flynn Barrison, Dianna El Hioum, and Brienne Terril for their contributions to this post. A version of this article also appears on the Fox Rothschild Coronavirus Resource Center.

CARES Act authorizes USPTO to extend certain patent and trademark deadlines

NOTE:  A more recent post with specific details about extended deadlines is available at this link.

The newly-enacted Coronavirus Aid, Relief, and Economic Security (CARES) Act provides patent and trademark applicants the opportunity for temporary relief from certain deadlines as more and more businesses face mandatory shutdowns due to effects of COVID-19.

In the United States, many filing deadlines are set by statute. Because of that, as of the date of this writing, the United States Patent and Trademark Office (USPTO) has not yet extended patent or trademark deadlines, as it did not have authority to do so. Section 12004 of the CARES Act gives the USPTO Director to toll, waive or modify statutory deadlines under the Patent Act, the Trademark Act, and the Leahy-Smith America Invents Act.

The USPTO is now permitted to extend deadlines that fall between March 13, 2020 and May 12, 2020.

The Act also gives similar authority to the Register of Copyrights to extend copyright filing deadlines.

Note that no deadlines are actually extended yet. We expect the USPTO and Copyright Office to act on this quickly. IP Spotlight will post details of any specific deadline extensions when available.

 

How will the shutdown of “non-essential” businesses affect trademark rights?

As “non-essential” businesses are required to close in more and more United States jurisdictions, many businesses have paused operations. This pause may interrupt continuous use of trademarks in connection with the products and services that the affected businesses offer.

When renewing trademark registrations, trademark holders must declare that the trademark has been in continuous use in commerce.

How might a lapse in use of a trademark during a coronavirus-related shutdown affect the trademark holder’s ability to maintain or renew a trademark registration?

My partner Bridget Short answers this question in a post that is available on the Fox Rothschild Coronavirus Resource Center, available at this link.

How long does it take to receive a patent or trademark registration in the U.S.? (2019 update)

The USPTO recently released its FY2019 Performance and Accountability Report, with contains helpful information about allowance rates, average pendency, and other statistics about its review of patent and trademark applications this year. Each year, IP Spotlight analyzes this report and, and we update our readers who often ask: how long does it take for a patent or trademark registration to grant?  To answer that question:

Patents: In 2019 the USPTO continued a eight-year trend of reducing patent application pendency. The average time between filing and first office action was 14.7 months, more than month quicker than last year’s average of 15.8 months. However, average total pendency (from filing to either grant or abandonment) also remained level at 23.8 months.

As is usual, the wait times varied by technology. Patent applications for computer architecture and mechanical engineering inventions generally experienced the longest waits, while patent applications for communications and biotech inventions moved much more quickly. The breakdown by technology included:

  • biotechnology and organic chemistry (USPTO Technology Center 1600) had an average wait time of 11.8 months to first action, and an average total pendency of 22.8 months;
  • chemical and materials engineering (USPTO Technology Center 1700) had an average wait time of 16.4 months to first action, and an average total pendency of 27.7 months;
  • computer architecture, software and information security (USPTO Technology Center 2100) had an average wait time of 17.5 months to first action, and an average total pendency of 28.3 months;
  • networks, multiplexing, cable and security (USPTO Technology Center 2400) generally waited 13.3 months to first action, and have an average total pendency of 25.2 months;
  • communications technologies (USPTO Technology Center 2600) had the shortest average wait times — 10.4 months to first action, and an average total pendency of 20.0 months;
  • semiconductors, electrical systems and optical systems (USPTO Technology Center 2700) had an average wait time of 12.5 months to first action, and an average total pendency of 22.1 months;
  • transportation, construction, agriculture and e-commerce technologies (USPTO Technology Center 3600) had an average wait time of 16.5 months to first action, and an average total pendency of 26.8 months; and
  • mechanical engineering and manufacturing technologies (USPTO Technology Center 3700) had an average wait time of 19.1 months to first action, and an average total pendency of 28.8 months.

338,584 patents issued in FY 2019, a slight decrease from last year’s total.  However, the number of new patent applications filed increased to an all-time  high of 665,231.  The allowance rate increased to 59.6% — 3.3% higher than last year’s rate.

The report noted that “serialized” patent filings — continuations and requests for continued examination — increased by 4.9 percent in 2019. The USPTO noted that this increase caused in corresponding increase in its year-end inventory of unexamined patent applications.

Trademarks: In FY 2019 the average time from filing to first Office Action in a trademark application decreased to 2.6 months, down from 3.4 months in 2018. Average total pendency also dipped a bit to 9.3 months.

The total number of trademark applications filed also hit an all-time high mark of 673,233. For the first time, the number of active certificates of trademark registration exceeded 2.5 million at the end of FY 2019.

USPTO requires non-U.S. trademark applicants to use U.S. counsel

Effective August 3, 2019, a new United States Patent & Trademark Office (USPTO) rule requires all foreign trademark applicants to be represented by a United States licensed attorney when applying for a U.S. trademark registration.

My partner Elizabeth Patton recently published a summary of the new rule and its impact. For more details, see her post on Fox Rothschild’s Above the Fold blog.

How long does it take to get a patent or trademark? (2018 update)

At the end of each fiscal year, the USPTO releases a Performance and Accountability Report, with statistics about patent and trademark allowance rates, average pendency, and other details. The USPTO recently released its Performance and Accountability Report for Fiscal Year 2018. This means that it’s time for IP Spotlight’s annual review of the question:  “how long does it take to receive a patent or register a trademark?”

To answer that question, here are a few highlights from the USPTO’s FY 2018 report:

Patents:  The USPTO continued a seven-year trend of reducing overall patent application pendency in FY 2017. The average time between filing and first office action was 15.8 months, which is down a few week’s from last year’s measure. Average total pendency (time from start to grant or abandonment) also dipped to 23.8 months.

The report did not discuss the effect of the USPTO’s “Track 1” expedited examination option on the overall timeline. Applicants who pay the additional fee for Track 1 processing typically receive a first action within 4-6 months of filing, and allowance or final action within 12 months of filing.

The wait times vary depending on the technology involved. Patent applications for computer architecture and mechanical engineering inventions generally experienced the longest waits, while applications for communications and semiconductor technologies moved relatively quickly. The breakdown by technology included:

  • biotechnology and organic chemistry (USPTO Technology Center 1600) had an average wait time of 12.5 months to first action, and an average total pendency of 22.9 months;
  • chemical and materials engineering (USPTO Technology Center 1700) had an average wait time of 18.0 months to first action, and an average total pendency of 27.3 months;
  • computer architecture (USPTO Technology Center 2100) had an average wait time of 19.4 months to first action, and an average total pendency of 28.4 months;
  • networks, multiplexing, cable and security (USPTO Technology Center 2400) generally waited 15.9 months to first action, and have an average total pendency of 25.3 months;
  • communications technologies (USPTO Technology Center 2600) had some of the shortest average wait times — 11.0 months to first action, and an average total pendency of 19.9 months;
  • semiconductors, electrical systems and optical systems (USPTO Technology Center 2700) had an average wait time of 12.7 months to first action, and an average total pendency of 21.6 months;
  • methods relating to transportation, construction, agriculture and e-commerce (USPTO Technology Center 3600, in which the e-commerce inventions are often considered to involve “business methods”) had an average wait time of 18.2 months to first action, and an average total pendency of 25.5 months; and
  • mechanical engineering products (USPTO Technology Center 3700) had an average wait time of 19.0 months to first action, and an average total pendency of 28.4 months.

339,534 patents issued in FY 2018 — a 2.3% decrease from last year’s all-time high. The overall patent allowance rate was 56.3% – a dip from last year’s 59.4% allowance rate.

The number of patent applications filed in FY 2017 was 647,349 — a slight (1% decrease from last year’s number. Of these applications, approximately 596,000 were utility filings and 169,000 were provisional filings. The other patent applications were design, plant, or reissue filings.

Trademarks:  In FY 2018 the average time from filing to first Office Action in a trademark application increased to 3.5 months, up from 2.7 months in 2017. Average total pendency remained about the same as last year: 9.6 months as compared to 2017’s 9.5 months.

The total number of trademark applications filed was 638,647, an all-time high and the third consecutive year of double-digit growth. The total number of registrations granted was 367,382, also an all-time high and a 12.2% increase over last year’s grant rate.

How long does it take to get a patent or trademark registration? (2017 update)

At the end of each fiscal year, the USPTO releases a Performance and Accountability Report, with statistics about patent and trademark allowance rates, average pendency, and other details. The USPTO recently released its Performance and Accountability Report for Fiscal Year 2017. This means that it’s time for IP Spotlight’s annual review of the question:  “how long does it take to receive a patent or register a trademark?”

To answer that question, here are a few highlights from the USPTO’s FY 2017 report:

Patents:  The USPTO continued a six-year trend of reducing overall patent application pendency in FY 2017. The average time between filing and first office action was 16.3 months, which is about the same as last year. However, average total pendency decreased to 24.2 months (down from last year’s 24.2-month average pendency, and down from a high of 33.7 months in 2012).

The report did not discuss the effect of the USPTO’s “Track 1” expedited examination option on the overall timeline. Applicants who pay the additional fee for Track 1 processing typically receive a first action within 4-6 months of filing, and allowance or final action within 12 months of filing.

The wait times vary depending on the technology involved. Patent applications for computer architecture and mechanical engineering inventions generally experienced the longest waits, while applications in the biotech and organic chemistry fields moved relatively quickly. The breakdown by technology included: Continue reading

Beware trademark renewal notice scams

At some point in time, most trademark registrants will receive an official-looking invoice from a so-called “trademark registration service” that purports to require payment of a fee to maintain the trademark registration.

My colleague Erika Koster recently published an alert about scams like this.  For Erika’s article on the Fox Rothschild “Above the Fold” blog, click here.

In the meantime, if you receive a trademark renewal notice and it is not from the law firm that is helping you apply for or maintain the registration, you can be fairly certain that it’s a fraud. If you are unsure, simply send it to your trademark attorney for a quick review and confirmation.

Are you using your trademark with ALL of the goods and services listed in your trademark application?

USPTO sealOn January 19, 2017, the USPTO published a final rule that would allow the USPTO to verify whether trademark holders are using a trademark with all of the goods and services listed in the trademark application or registration. However, the White House’s recent regulatory freeze calls into question whether and when the USPTO will implement the new rule.

Before the USPTO will issue a trademark registration, trademark applicants are required to submit proof that they using the mark in commerce. In addition, in order to maintain a trademark registration, trademark owners must periodically submit affidavits of continued use to the USPTO.

Under the new rule, when a trademark holder or applicant submits evidence of use in commerce, the USPTO “may require the owner to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 8 of the Act or for the Office to assess and promote the accuracy and integrity of the register.” The USPTO explained the reasoning for the new rule as: “A register that does not accurately reflect marks in use in commerce in the United States for the goods/services identified in registrations imposes costs and burdens on the public.”

On February 10, 2017 the USPTO issued a notice stating that implementation of the new rule would be delayed to March 21, 2017 in accordance with the White House’s January 20, 2017 “Regulatory Freeze Pending Review” memorandum, which placed a 60-day freeze on implementation of all new regulations.

USPTO Power Outage Affects Patent and Trademark Filing Deadlines

The U.S. Patent and Trademark Office experienced a serious power outage on December 22, 2015. According to the USPTO, the outage  “damaged equipment that required the subsequent shutdown of many of our online and IT systems,” including the USPTO’s online filing systems.”

The outage came at a particularly problematic time for the many patent and trademark applicants who are trying to complete filings via the USPTO’s electronic filing systems before the Christmas holiday.

Fortunately, the USPTO is now treating December 22-24, 2015 as a Federal holiday when it receives responses or fees that were due on those days. This means that any fees or responses due on December 22-24 will be considered to be timely if filed by the USPTO’s next business day (Monday, December 28).

Note that this notice does not mean that newly filed patent or trademark applications will receive a filing date of December 22 if filed on Monday, December 28. If applicants want an earlier filing date (i.e., December 24), they must file the application by other means, such as a paper filing via USPS Priority Mail Express.

Stay tuned to the USPTO website or Twitter feed for future updates, especially if systems are not operational by December 28.