Patent and Trademark and Copyright Offices Extend Deadlines, Modify Procedures

By Kelli Ovies

May 28, 2020 Update: The Patent and Trademark Office (“PTO”) has announced that it will waive the fees to petition to revive abandoned patent or trademark applications or reinstate trademark registrations that expired or were cancelled through June 30, 2020, so long as the petition includes a statement that the delay in filing or payment was due to the COVID-19 pandemic. In addition, on the patent side, for small and micro entities, the below deadlines have been extended until July 1, 2020. For large entities, after May 31, 2020, relief will be available on a case-by-case basis and can be requested through a petition for extension of time or a petition to revive. Read more about the trademark relief here and the patent relief here.

May 4, 2020 Update: The Copyright Office has announced that its procedural modifications will be extended through July 10, 2020, unless the Acting Register issues an announcement stating that the period of disruption has ended before that time or that a further extension is necessary. The modified procedures include not only those described below, but also procedures related to service and delivery of notices of intention, statements of account, and royalty payments under Section 115 of the Copyright Act, which provides for a compulsory license to make and distribute phonorecords of a musical work. 

April 29, 2020 Update: The Patent and Trademark Office (“PTO”) has announced that the below deadlines have been extended until June 1, 2020, if they otherwise would have fallen between March 27, 2020 and May 31, 2020. It also added two more types of patent filings for which due dates have been extended (requests for rehearings of Patent Trial and Appeal Board (“PTAB”) decisions on motions under 37 CFR § 41.125(c) or judgments under 37 CFR § 41.127(d) and petitions to the Chief Administrative Patent Judge on matters pending before the PTAB). 

Additionally, the PTO has clarified that (1) the waiver of fees for petitions to revive abandoned patent and trademark applications and canceled or expired trademark registrations applies only to applications and registrations that became abandoned or were canceled/expired on or before May 31, 2020 as a result of the COVID-19 outbreak and (2) the petition to revive must include a statement that the delay in filing or payment was due to the COVID-19 outbreak. 

More information can be found on the PTO’s COVID-19 notices page.

On March 31, 2020, the Patent and Trademark Office (“PTO”) and Copyright Office announced that they had extended certain deadlines and modified certain procedures because the effects of the COVID-19 outbreak on intellectual property owners and their counsel.

Patent Deadlines

Due dates for the following are extended for 30 days if they fall between March 27, 2020 and April 30, 2020:

  1. Replies to Office notices issued during pre-examination processing by a small or micro entity;
  2. Replies to Office notices or actions issued during examination or patent publication processing;
  3. Issue fees;
  4. Notices of appeal;
  5. Appeal briefs;
  6. Reply briefs;
  7. Appeal forwarding fees;
  8. Requests for oral hearings before the Patent Trial and Appeal Board (“PTAB”);
  9. Responses to substitute examiners’ answers;
  10. Amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection;
  11. Maintenance fees filed by small or micro entities;
  12. Requests for rehearing of PTAB decisions that normally would have to be filed within two months of the date of the original decision. 

To qualify for the deadline extension, the filer must submit with the delayed filing or payment a statement that the delay in filing or payment was due to the COVID-19 outbreak. The PTO considers a delay to be due to the COVID-19 outbreak “if a practitioner, applicant, 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.”

The PTAB also will grant extensions of certain deadlines in PTAB proceedings not included in the above list if the filer makes a request to the PTO affirming that the filing was or might be delayed due to the COVID-19 outbreak or contacts the PTAB directly, depending on the situation.

Finally, the PTO has waived fees for petitions to revive abandoned applications when applicants are unable to timely reply to an office communication due to the COVID-19 outbreak.

More information can be found in the PTO’s Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act

Trademark Deadlines

Due dates for the following are extended for 30 days if they fall between March 27, 2020 and April 30, 2020:

  1. Office action responses, including notices of appeal from final refusals;
  2. Statements of use or requests for extensions of statement of use deadlines;
  3. Notices of opposition;
  4. Requests for extensions of time to file a notice of opposition;
  5. Priority based on foreign applications;
  6. Priority based on international registrations granted under the Madrid Protocol;
  7. Transformation of an extension of protection to the United States into a U.S. application;
  8. Affidavits of use or excusable nonuse; and
  9. Renewal applications.

As with patent-related deadlines, to qualify for the deadline extension, the filer must submit with the delayed filing or payment a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Parties with Trademark Trial and Appeal Board (“TTAB”) deadlines must file requests or motions for reopening or extension of time with the TTAB if they missed deadlines or need additional time due to the COVID-19 outbreak.

Fees for petitioning to revive abandoned applications or reinstate canceled or expired registrations are waived if the applicant or registrant states in the petition that the abandonment or cancellation/expiration was due to the COVID-19 outbreak.

More information can be found in the PTO’s Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act.

Copyright Procedures

Under the Copyright Act, in order to be eligible for statutory damages for infringement, a copyright owner must have registered the work prior to infringement or within three months of publication. The effective date of registration is the date when the Copyright Office has received the application, deposit, and filing fee. The Copyright Office has temporarily changed this timing provision as follows:

  1. If the applicant can submit the application electronically but is unable to submit a required physical deposit, and the three-month window for registration after the date of first publication was open as of March 13, 2020, the applicant will be eligible for statutory damages if the applicant submits the deposit within 30 days after the Copyright Office announces that the disruption due to COVID-19 has ended. Such applicants must upload with the application a statement, under penalty of perjury, that the applicant would have submitted the physical deposit but for the national emergency caused by the COVID-19 outbreak. The statement must include supporting evidence.
  1. If the applicant is unable to submit an application electronically or physically, the applicant may submit the application after the Copyright Office has announced the end of the disruption caused by the COVID-19 outbreak. The three-month post-publication filing window will be tolled between March 13, 2020 and the date the disruption due to COVID-19 has ended if the applicant submits a statement, under penalty of perjury, certifying that the applicant would have submitted its application earlier but for the national emergency caused by the COVID-19 outbreak. The statement must include supporting evidence.

The Copyright Office also has modified certain procedures that individual authors must follow to terminate a transfer of copyright interests to accommodate situations in which authors are unable to access the underlying transfer agreements or otherwise comply with statutory requirements for terminating transfer due to the COVID-19 outbreak.

These modifications to the procedures are in effect for 60 days, unless the Copyright Office announces that the disruption caused by the COVID-19 outbreak has ended before then or that a further extension is necessary.

For more information, please visit the Copyright Office’s COVID-19 updates page.

If you have specific questions about how these changes affect you or your business, please contact us today.