Are you developing new technologies, treatments or other inventions that are useful to combat the COVID-19 epidemic? If so, my colleagues Gunjan Agarwal and Chipo Jolibois recently wrote a useful article discussing the Open COVID Pledge and how it can be used when patenting COVID-19-related inventions.
For the full article on Law360, click here.
(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.
Posted in Copyrights, Patents, Trademarks and Brands
Tagged CARES Act, patents, trademarks
A new Supreme Court decision holds that states are immune from infringement suits under the United States Copyright Act, despite a 1990 law that attempted to remove states’ sovereign immunity in copyright infringement cases.
In Allen v. Cooper (decided March 23, 2020), the Court considered a case involving videos and photos of a shipwreck that the state of North Carolina published online. The owner of the copyrights sued the state for copyright infringement. The state moved to dismiss the suit on the ground of state sovereign immunity. The copyright holder countered that the Copyright Remedy Clarification Act of 1990 (CRCA) removed states’ sovereign immunity in copyright infringement suits.
In its decision, the Court noted that “a federal court generally may not hear a suit brought by any person against a nonconsenting State.” However, exceptions can be made if (1) Congress enacts “unequivocal statutory language” that takes away states’ immunity in defined situations, and (2) some constitutional provision permits the encroachment on states’ immunity. The Court found that the CRCA met the first test, but not the second test, and thus did not qualify for an exception.
In particular, the Court noted that Article I (the Intellectual Property Clause) of the U.S. Constitution gives Congress the power to secure copyright holders the exclusive right to their discoveries, but the Clause says nothing about abrogating states’ sovereign immunity.
The Court’s decision harmonizes copyright law with patent law. In a 1999 decision (Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank), the Court reached the same conclusion regarding states’ sovereign immunity and the Patent Act.
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.
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.
Posted in Trademarks and Brands
Tagged coronavirus, non-essential businesses, trademark renewal, trademarks
On March 18, 2020, President Trump issued an Executive Order under authority of the Defense Production Act of 1950. The Executive Order stated: “I find that health and medical resources needed to respond to the spread of COVID-19, including personal protective equipment and ventilators, meet the criteria specified in section 101(b) of the Act (50 U.S.C. § 4511(b)). Under the delegation of authority provided in this order, the Secretary of Health and Human Services may identify additional specific health and medical resources that meet the criteria of section 101(b).”
This development has some manufacturers asking: Can we supply hospitals with personal protective equipment and ventilators in this time of COVID-19 response without risk of patent infringement?
In a post on the Fox Rothschild Coronavirus Response Resource Center, my partner Jeff Schwartz and I address this question. The short answer is, in most cases, no. However, there are actions that manufacturers can take to mitigate their risk, including:
For more details and the full article, click here.
I am honored to be named to the inaugural IAM Global Leaders list, a new publication featuring interviews with patent pratitioners ranked in the gold tier of the IAM Patent 1000.
In my interview with IAM, I discuss how our team at Fox Rothschild is working to anticipate client expectations and lead the way in managing patent projects to meet or beat those expectations. I also discuss key questions that clients should consider when building an intellectual property strategy.
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:
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.
Posted in Patents, Trademarks and Brands
On October 17, 2019, the USPTO published an update to its 2019 Patent Subject Matter Eligibility Guidance (2019 PEG). The October 2019 update does not significantly change the patent eligibiity analysis, but it clarify several of the examination procedures that the USPTO first set out in January 2019.
Notably, the October 2019 update indicates that “the Office has shifted its approach from the case-comparison approach in determining whether a claim recites an abstract idea and instead uses enumerated groupings of abstract ideas.” Thus, Examiners should no longer focus on individual court decisions in their rejections but instead will determine whether the claims recite any of the groupings of abstract ideas listed in the 2019 PEG.
The October 2019 update also included several new subject matter eligibility examples, including examples for both life science and data processing inventions.
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.
Posted in Trademarks and Brands
IP Spotlight 