USPTO and Copyright Office Grant Deadline Relief, Further Guidance Awaited

The Director of the US Patent and Trademark Office and the Acting Register of the US Copyright Office have now taken action pursuant to the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to provide relief from certain deadlines.

US PATENT AND TRADEMARK OFFICE

The US Patent and Trademark Office (USPTO) remains open for the filing of patent and trademark documents and for the payment of fees. Acting under his authority pursuant to the Cares Act (described in more detail here), the Director of the USPTO has published notices that the Office will extend the time to file certain trademark-related documents, patent-related documents, and fees which would have been due on or after March 27, 2020. Accordingly, the due date for any of the filings below that fall between, and inclusive of, both March 27, 2020, and April 30, 2020, will be extended 30 days from the initial date of the deadline, provided that when the filing is made, it is accompanied by a statement that the delay in filing or payment was “due to the COVID-19 outbreak” (as defined by the notice and explained below):

Trademark Deadlines Included

• Response to Office action, including a notice of appeal from a final refusal
• A statement of use or request for an extension of time to file a statement of use
• Notice of opposition or request for extension of time to file a notice of opposition
• Priority filing basis under 15 USC Sections 1126(d)(1) and 1141g
• Transformation of an extension of protection to the United States into a US application
• Affidavit of use or excusable nonuse (Section 8)
• Renewal application (Section 9)
• Affidavit of use or excusable nonuse (Section 71)

Patent Deadlines Included

• Reply to an Office notice issued during pre-examination processing (e.g., Notice of Omitted items, Notice to File Corrected Applications Papers, Notice of Incomplete Application, Notice to Comply with Nucleotide Sequence Requirements, Notice to File missing Parts of Application, and Notification of Missing Requirements) by a small or micro entity
• Reply to an Office notice or action issued during examination (e.g., Final or Non-final Office actions, Notice of Non-Compliant Amendment) or patent publication processing (e.g., Notice to File Corrected Application Papers )
• Issue fee
• Notice of appeal under 35 USC §134 and 37 CFR §41.31
• Appeal brief under 37 CFR §41.37
• Reply brief under 37 CFR §41.41
• Appeal forwarding fee under 37 CFR §41.45
• Request for an oral hearing before the Patent Trial and Appeal Board (PTAB) under 37 CFR §41.47
• Response to a substitute examiner’s answer under 37 CFR §41.50(a)(2)
• Amendment when reopening prosecution in response to, or request for rehearing of, a Patent Trial and Appeal Board (PTAB) decision designated as including a new ground of rejection under 37 CFR §41.50(b)
• Maintenance fee, filed by a small or micro entity
• Request for rehearing of a PTAB decision under 37 CFR §41.52

Additional Relief Before the PTAB or Trademark Trial and Appeal Board (TTAB)

A 30-day extension will be granted upon a request or motion affirming that a filing due or other action required between the dates noted above (inclusively) was or may be delayed due to the COVID-19 outbreak (as described below) for

• a request for rehearing of a PTAB decision under 37 CFR §§41.125(c), 41.127(d), or 42.71(d);
• a petition to the Chief Judge under 37 CFR §41.3; or
• a patent owner preliminary response in a trial proceeding under 37 CFR §§42.107 or 42.207, or any related responsive filings.

For all TTAB or PTAB situations not covered above where the COVID-19 outbreak has prevented or interfered or will prevent or interfere with a filing or other required action (e.g., responding to discovery requests), a request or motion for extension or reopening of time, as appropriate, can be made.

Statement Required

With respect to the statement that must be submitted with the delayed filing or should be filed with any request or other motion, a delay in filing or payment is considered to be due to the COVID-19 outbreak if a practitioner, applicant, registrant, patent owner, petitioner, third-party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

Petitions to Revive

The existing procedures to revive an abandoned application or patent or reinstate a canceled/expired/lapsed registration or patent remain available to applicants and registrants whose applications and registrations were abandoned or canceled/expired due to their inability to timely respond to a trademark-related or patent-related Office communication as a result of the COVID-19 outbreak. Fees for such petitions have been waived by the Office.

Analysis

USPTO Approach Differs from Other Jurisdictions. Providing opportunities for deadline relief in only specific instances, the USPTO has not taken the blanket approach that many other jurisdictions have taken to provide an automatic extension of all deadlines due to the COVID-19 outbreak. (See a list of current known IP office closures and extensions around the world.) Moreover, unlike other international patent and trademark offices, the USPTO is requiring that any filing made or fee paid pursuant to the extension include a statement that the delay is attributable specifically to someone associated with the filing or fee being impacted by the COVID-19 outbreak. The notice from the USPTO suggests that the Office will not scrutinize the veracity of any such statement and, instead, will automatically grant requests that include the requisite COVID-19 statement.

Questions remain, however, as to whether any such COVID-19 statement made to the USPTO may provide opportunities for discovery regarding potential inequitable conduct or fraud claims in later infringement or invalidity actions in which a resulting trademark or patent is involved. In some instances, such discovery may lead to challenges, from alleged infringers for example, that the extension granted was procured through a false statement. Two US Court of Appeals for the Federal Circuit cases may be instructive regarding this issue.

In Network Signatures, Inc. v. State Farm Mut. Auto. Ins. Co.,[1] the Federal Circuit addressed whether use of a USPTO form for delayed payment without providing reasons to support that the delayed payment was “unintentional” provides clear and convincing evidence of withholding material information with an intent to deceive the Patent Office. The Federal Circuit reversed a district court’s finding of inequitable conduct and emphasized that “[o]n matters unrelated to the substantive criteria of patentability, but within the authority of the Director, ‘it is almost surely preferably for a reviewing court to not involve itself in the minutiae of Patent Office proceedings and to second-guess the Patent Office on procedural issues at every turn’.”[2] According to the Federal Circuit panel, because the form did not require a statement of reasons for the late payment, there was no inequitable conduct where the attorney used the standard language stating the late payment was “unintentional.”[3]

Later distinguishing the Network Signatures case, however, the Federal Circuit upheld an exceptional case determination based in part on its finding that the USPTO would not have issued the patents at issue if the USPTO knew that the applicant purposefully allowed the patents to expire in contradiction to the statement—made using a standard USPTO form—that the abandonment was unintentional.[4] The Federal Circuit affirmed the district court’s finding of inequitable conduct despite the patentee’s use of the standard USPTO form and statutory language.[5]. We therefore caution applicants to treat with care any decision to avail themselves of the USPTO extension provisions due to the COVID-19 outbreak. It may be important to document facts to support a determination that any delay is due to the COVID-19 outbreak before submitting a USPTO notice.

Effect of Relief in Patent Applications and Reexamination Proceedings. The USPTO is extending the time to file certain patent-related documents or fees, which would have been due on or after March 27, 2020, and until April 30, 2020. The notice indicates that upon receiving a compliant request, the due date for any of the enumerated documents or fees (see above) that was due within the specified time period will be “extended 30 days from the initial date it was due.” Practitioners have differing views on the meaning of this language and the USPTO is planning to issue a further guidance document in the form of an FAQ notice and is also believed to be developing a request form. Until that further guidance is issued, there remains uncertainty as to how this policy will be applied.

Nevertheless, we believe USPTO will be treating this 30-day period as a so-called “pause” such that an applicant who properly avails itself of the pause will be situated at the end of the 30-day period as if the pause had not occurred. For example, if a shortened statutory period to reply to a non-final Office action was set to expire on April 6, 2020, an applicant who availed itself of the pause would have that date extended to May 6, 2020, and no extension of time fee would be due. Had the April 6, 2020, date been a date on which a one-month extension of time fee was due, that one-month extension of time fee would be due on May 6, 2020. It is also expected that the USPTO will clarify whether the 30-day pause would also extend requirements for co-pendency. For example, it is expected that if an issue fee was due on April 6, 2020, applicants who properly avail themselves of the pause could pay the issue fee on May 6, 2020, and file a continuation application up to May 6, 2020, even though it took no action to pay the issue fee on April 6, 2020.

30 Days Is Not One Month. Applicants are also reminded that statutory periods are calculated differently if the rule is expressed in days or months. A period of 30 days includes Saturdays, Sundays, and federal holidays. But, if the period ends on a Saturday, Sunday, or federal holiday, the reply is timely when filed on the next business day. If the due date is on a Saturday, Sunday, or federal holiday, the 30-day period of pause is added to the last calendar day of the original period. For example, taking a 30-day pause on a deadline set to expire on March 27 would lead to a new deadline of April 27 (since April 26, 2020, is a Sunday). If the original deadline fell on March 28, 2020 (a Saturday), the new deadline would also be April 27, 2020 (30 calendar days after March 28, 2020).

Track One, Patent Term Adjustments. It remains to be seen whether an applicant’s decision to avail itself of the pause will lose Track 1 (expedited examination) status or if this will have a detrimental effect on patent term adjustment. If this is truly a pause, one would expect that taking a pause would not affect these Track One status or Patent Term Adjustment. But, until guidance is received from the Patent Office, applicants should be aware that this may be an issue.

COPYRIGHT OFFICE

Pursuant to the authority in new section 710 of the Copyright Act created by the CARES Act, the Acting Register of Copyrights has determined that the National Emergency declared on March 13, 2020 has “generally disrupted the ordinary functioning of the copyright system” in a way that may impact the ability to submit certain copyright applications and to serve notices of termination and submit them for recordation pursuant to sections 203 and 304(c) of the Copyright Act. Accordingly, from March 31 extending for a period of 60 days (or longer if extended), the Acting Register has temporarily modified the registration and notice-related timing provisions, where the affected party can sufficiently justify their delay, as explained further below.

Copyright Applications

Under section 412 of the Copyright Act, a copyright owner generally is eligible to be awarded 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 effective date of registration is the date when the Copyright Office receives the application, deposit, and fee. To mitigate the effect of, the National Emergency, the Acting Register is temporarily adjusting the application of the timing provisions of section 412 to affected persons.

• If an applicant can submit an application electronically but is unable to submit a required physical deposit, the applicant may file its application electronically along with a (i) declaration certifying that the applicant is unable to submit the physical deposit due to the National Emergency, and (ii) satisfactory evidence in support of this declaration (e.g., a statement that the applicant is subject to a stay-at-home order or unable to access required physical materials due to a business closure). If this requirement is met, and the three-month window for registration after the date of first publication was open as of March 13, 2020, the window will be extended (and the applicant will be eligible for the remedies under section 412) so long as the applicant submits the required physical deposit within thirty days after the date the disruption has ended.
• In general, for “copyright applications that can be submitted entirely in electronic form (i.e., those that do not require submission of a physical deposit), the timing provisions are unchanged.” However, if an applicant is unable to submit an application in any form (electronically or physically) during the disruption, the applicant may submit an application after the Register has announced the end of the disruption, and include a declaration certifying that the applicant was unable to file its application due to the National Emergency together with satisfactory supporting evidence (e.g., a statement that the applicant did not have access to a computer/internet or prevented from accessing or sending physical materials). If this requirement is met, the three-month window under section 412 will be tolled between March 13, 2020, and the date that the disruption has ended.

Notices of Termination and Recordation

Under sections 203 and 304(c) of the Copyright Act, individual authors may reclaim copyright interests previously transferred to another party in specified circumstances. In general, an author may terminate a transfer within a five-year window, provided the author serves notice on the transferee between two and ten years before the chosen termination date. After service, but before the termination date, the notice of termination must be recorded with the Copyright Office. To ensure that these authors are not deprived of their ability to effect termination, the Acting Register has adjusted the timing requirements to provide 30 days after the period of disruption has ended for an author to serve or record a notice of termination that would otherwise have been required during the period of disruption, but was impeded by COVID-19 response measures.

CORONAVIRUS COVID-19 TASK FORCE

For our clients, we have formed a multidisciplinary Coronavirus COVID-19 Task Force to help guide you through the broad scope of legal issues brought on by this public health challenge. We also have launched a resource page to help keep you on top of developments as they unfold. If you would like to receive a daily digest of all new updates to the page, please subscribe now to receive our COVID-19 alerts. One of our many resources includes a list of current known IP office closures and extensions around the world.

CONTACTS

If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, Kenneth J. Davis, Anita B. Polott, Dana S. Gross, and Amy M. Dudash, or any of the members of Morgan Lewis’s COVID-19 Intellectual Property Working Group:

Chicago
Jason C. White

Philadelphia
Eric Kraeutler
Louis W. Beardell, Jr.
Kenneth J. Davis

San Francisco
Christina A. MacDougall, Ph.D.

Silicon Valley
Dion M. Bregman
Andrew J. Gray IV

Washington, DC 
Dana S. Gross
Jeffrey G. Killian, Ph.D.
Anita B. Polott

Wilmington
John V. Gorman