In a win for brand owners, last week the U.S. Supreme Court ruled that potential trademark infringers are not automatically shielded from liability for infringement by simply claiming that their use of another party’s registered mark includes a comical message.
My colleagues Patricia Flanagan and Camilia Chediak recently published an article describing the details of the Court’s decision, as well as how the decision will affect trademark owners. The full article is available at this link.
Each year, IP Spotlight updates our readers who often ask: how long does it take for a patent or trademark registration to grant? In previous years, we’ve done that by reviewing the USPTO’s annual Performance and Accountability Report. In 2022 the USPTO discontinued that report. Instead, the USPTO now publishes up-to-date pendency information on its Data Visualization Center. The Data Visualization Center includes several dashboards with detailed information about allowance rates, average pendency, and other statistics about patent and trademark proceedings.
Patents: In 2022, the USPTO’s average time to first action remained steady at 16.9 months. The average total pendency — that is, the time from filing to either grant or abandonment — was 25.7 months, an increase of 2.4 months compared to 2021 data.
The wait times varied based on the USPTO Technology Center that reviewed the application. The breakdown by technology included:
The average time from the day that an applicant filed an amendment to the date of the next USPTO action was 58 days.
The allowance rate for all utility, plant, and reissue applications that the USPTO disposed of in the past year was 59%.
The USPTO offers a “Track One” examination program in which the USPTO will advance a new patent application to the front of the queue if the applicant pays an additional fee. (The fee is $4000 for a large entity, or $2000 for a small entity.) Track One examination ensures a final disposition within 12 months. In practice, the process is typically faster. In 2022, the average time from Track One petition grant to first action was 1.8 monhts, and the average time from petition grant to final disposition was 4.5 months. While the Track One program ensures speed, it does not ensure allowance; the allowance rate for Track One applications was 57% in 2022.
The summary above uses USPTO patents dashboard information through November 30, 2022:
Trademarks: The average time from filing to first Office Action in a trademark application continued to increase in 2022. The typical wait time is now 8.3 months to first action. This represents a two-month increase compared to 2021 data and five-month increase compared to 2020 data. Average total pendency is 13.8 months for applications that are not opposed or suspended during prosecution.
For the first time in 3 years, total number trademark filings decreased in 2022. (The percent decrease was 16.5%.) This should help reduce trademark application wait times in the upcoming year.
The summary above uses USPTO trademarks dashboard information for Q4 2022.
Posted in Patents, Trademarks and Brands, Uncategorized
Tagged patents, trademarks, USPTO
As part of its plan to modernize the U.S. intellectual property registration system, the U.S. Patent and Trademark Office (USPTO) plans to stop issuing patent and trademark certificates in hard copy format. In a recent blog post, USPTO Director Drew Hirshfeld announced that the USPTO will soon publish a proposed rule to eliminate the USPTO’s regulatory obligation to mail a paper copy of the patent to the correspondence address of record.
The USPTO expects the new rule to speed up patent grants by reducing the time required for publication. Under the new rule, patents will issue electronically within one week after the patent number is assigned.
The USPTO’s trademark regulations do not require the USPTO to mail trademark registrations in hard copy form. Nonetheless, the USPTO plans to issue a notice and seek public comment on this procedural change before applying it to trademarks, too.
When the new rule takes effect, patent applicants who plan to file a continuation application before a patent grants will need to take extra care, as less time will be available between the issue fee payment date and the patent grant date. As a best practice, applicants should try to file the continuation before they pay the issue fee, as they will lose the opportunity to file a continuation when the patent grants.
The USPTO’s announcement indicated that hard copies of patents and trademarks, with an embossed gold seal and the Director’s signature, will still available to registrants who request them and pay an extra fee.
The USPTO recently released its FY 2021 Performance and Accountability Report, which contains detailed 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 Fiscal Year (FY) 2021, for the first time in nine years, the USPTO’s average time to first action increased, to 16.9 months in FY 2021 (compared to 14.8 months in FY 2020). The average total pendency — that is, the time from filing to either grant or abandonment — remained steady at 23.3 months.
The wait times varied based on the USPTO Technology Center that reviewed the application. The breakdown by technology included:
The total number of nonprovisional patent applications remained flat at approximately 651,000 in FY 2021. The number of provisional patent applications dropped by 9.2% to a five-year low of 158,334, which may signal that a decrease in nonprovisional patent application filings will occur next year.
374,000 patents issued in FY 2021, which is a decrease from the 2020 number bit similar to the 2019 number. The overall allowance rate for patent applications remained steady at 61.8%.
Trademarks: In FY 2021 the average time from filing to first Office Action in a trademark application more than doubled from the previous year, with the average wait time now 6.3 months to first action. Average total pendency was 11.2 months for applications that were not opposed or suspended during prosecution. which is an increase of nearly 3 months compared to FY 2020 numbers.
The longer wait time can be attributed to an unprecedented increase in new trademark application filings. Specifically, in FY 2021 the total number of trademark applications was 943,928, which is a nearly 28% increase compared to the FY 2020 statistic, and a 40% increase when compared to the number of filings made in FY 2019. The USPTO plans to address this by better leveraging artificial intelligence and automation in the examination process, which the USPTO expects will increase examination efficiency.
(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
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
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
Posted in Patents, Trademarks and Brands
Tagged patent, patent pendency, trademark pendency, trademarks, USPTO
A recent United States Supreme Court decision is likely to affect the way that parties approach trademark opposition proceedings before the Trademark Trial and Appeal Board (TTAB).
My colleagues Bill Hansen and Suzi Morales recently published an article describing the decision and its potential effects. For more details about the Court’s decision in B&B Hardware, Inc. v. Hargis Industries, Inc. follow this link for the full article.
Posted in Trademarks and Brands
Tagged B&B Hardware, trademark opposition, trademarks
IP Spotlight 