- Posted on: Apr 1 2020
Barendse is an Associate at Dunlap Bennett & Ludwig’s Leesburg, VA Office.
[Apr. 1, 2020 Leesburg] As the COVID-19 Pandemic continues to affect the legal system, there is one glimmer of hope for trademark and patent owners: the Coronavirus Aid, Relief and Economic Security Act (the “CARES Act”), which gives the USPTO Director authority to “toll, waiv[e], adjust or modify a timing deadline” under the applicable trademark or patent statute. The CARES Act became law after the President signed the bill on Friday, March 27, 2020.
The USPTO has previously stated that it could not extend deadlines for patents or trademarks unless Congress acted, as those deadlines were implemented by statute. The CARES Act has met this need. Under the authority granted by the CARES Act, the USPTO published a notice on March 31 advising that certain trademark and patent deadlines would be extended, if they presently fall between March 27 and April 30 for a period of an additional thirty (30) days from the original deadline, if the owner can show that any delay to respond was due to the virus. This means that the extension is not automatic and would not be granted until a deadline has passed.
How will this affect me?
The CARES Act includes assistance to businesses and individuals alike. Congress recognizes how this pandemic has affected the economy and the livelihoods of those with small businesses. While you will have to include a statement in your later filing that any delay in filing was due to COVID-19, this statement can encompass a variety of factors that would “affect” small businesses or individuals.
Helpfully, the Notice was backdated to March 27, when the CARES Act became law. That means if an owner was affected by COVID-19 and was unable to make its deadline on March 27, the new due date for the filing/fee would be April 26 – provided the owner includes the statement regarding how it was affected by COVID-19.
As a reminder, these statements must be certified under penalty of perjury that the owner was unable to file or submit a response due to COVID-19 and is not a blanket extension applying to any delay to act.
The USPTO previously waived Petition fees for late filings, so this extension will work together with that prior determination.
How long does the CARES Act extend the USPTO’s authority regarding deadline extensions?
The CARES Act references the National Emergencies Act, which was invoked on March 13, 2020, in declaring COVID-19 a national emergency. The CARES Act states that the USPTO Director’s authority to extend or modify deadlines for the duration of the national emergency declaration and for the sixty (60) days following the expiration of the emergency.
What trademark filings can be extended under the CARE Act?
The USPTO’s Notice encompassed many of the trademark filings that are a part of a trademark’s application or registration maintenance phase. Among those are responses to office actions or final office actions; Statement of Use or Extension of time to file the Statement of Use; Notice of Opposition or extension of time to file the Notice of Opposition; Priority Filing basis; transforming an extension of protection to the United States into a United States application (for foreign registrations); Section 8 Use or Excusable Nonuse filings for maintenance; and Section 9 Registration Renewals.
What patent filings can be extended?
Similar to the trademark notice, the patent notice provided deadline extensions for a reply to an office notice issued during pre-examination processing by a small or micro entity; reply to an office action or notice issued during examination or publication processing; issue fees; notice of appeal; appeal brief; reply brief; appeal forwarding fee; request for an oral hearing before the Patent Trial and Appeal Board (“PTAB”); response to substitute examiner’s answer; amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision with a new ground of rejection; maintenance fee filed by a small or micro entity; and requests for rehearing of a PTAB decision.
What do I need to show to get the extension?
The USPTO states a delay is “due to the COVID-19 outbreak” if the trademark or patent owner was “personally affected” by the pandemic. The USPTO goes on to provide a non-comprehensive list of how the owner could be “affected” by COVID-19: office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, which would have affected the owner’s ability to make a timely filing or payment.
What about copyrights?
While the Copyright Office is separate from the USPTO. The Copyright Office has also extended deadlines for those affected by COVID-19. While most copyright applications can be filed online (and those that can be filed online have not had their timing requirements changed), any physical deposit of the copyrighted work and any physical application (for those that cannot be filed online) can be delayed up to two (2) months after the virus “disruption” has ended. This will protect statutory damages for owners who are unable to copyright their work, either due to internet/computer concerns or the inability to provide physical materials for the copyright.
What else do I need to know?
As always, the attorneys at Dunlap Bennett & Ludwig are ready and willing to help you navigate the unfamiliar terrain created by the coronavirus. We will continue to monitor this situation with the USPTO and alert you of any further changes so that you can continue to focus on your business and what is most important to you.