(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.
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.