Review of Intellectual Property Law Blog

The USPTO is Affording Relief to Patent and Trademark Applicants, Registrants, and Owners Due to COVID-19

By Staff on Monday, November 16th, 2020
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By Stephanie Nikitenko

In light of the effects of the Coronavirus pandemic, requiring most Americans to work from homeand many businesses to cease operation for the foreseeable future, the USPTO has classified current circumstances as an “extraordinary situation” as per the meaning provided for in 37 CFR 1.183 and 37 CFR 2.146. [1] This has prompted the USPTO to issue an official notice (“Notice”) that will afford certain types of relief for patent and trademark applicants, registrants, and owners. Past this initial Notice, the USPTO has issued numerous additional Notices. The information from those additional Notices has been included below.

The Process for Patents:

In the information provided in the initial Notice, if an application became abandoned or the reexamination prosecution was terminated or limited due to the inability to timely reply to an Office communication because of the effects of the Coronavirus outbreak, the USPTO will waive the petition fee in 37 CFR l .17(m) when the patent applicant or patent owner files the reply with a petition to revive. [2] The petition must be filed no later than two months after the issue date of the notice of abandonment or the notification that reexamination prosecution has been terminated or limited in order to be entitled to a waiver of the petition. [3] If the patent applicant or patent owner did not receive a notice of abandonment or notification that reexamination prosecution has been terminated or limited, the petition must be filed no later than six months after the date of abandonment, termination or limitation in order to be entitled to a waiver of the petition fee. [4] A copy of the Notice must be enclosed along with a timely filed petition to revive in order to use the waiver. [5] The USPTO will treat the enclosure of the Notice “as a representation that the delay in filing the reply was due to the effects of the Coronavirus outbreak, and as a request for sua sponte waiver of the petition fee.” [6]

In the Notices that followed, the USPTO provided further relief in the form of extensions for deadlines in patent application and reexamination proceedings. [7] In accordance with the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the USPTO further extended the time to file certain patent and trademark-related documents and to pay certain required fees to June 1, 2020. [8] Specifically, for small and micro-entities, filings that would have been deemed timely filed if filed by June 1, 2020, are now deemed timely filed if filed by July 1, 2020, to account for any financial hardships that these entities may be experiencing. [9] For large entities, relief will be available on a case-by-case basis after May 31, 2020. [10]

Additionally, the USPTO has temporarily permitted the filing of plant patent applications and follow-on documents via the USPTO patent electronic filing systems (EFS-Web or Patent Center) until further notice, which is ordinarily not allowed. [11] The prohibition against filing initial patent term extension applications in accordance with 37 CFR 1.740 or 37 CFR 1.790 via the USPTO patent electronic filing systems is also waived until further notice, and the following must be provided in order to be entitled to a filing date for the initial patent term extension application: (1) an appropriate document description, (2) an email address for correspondence, and (3) the applicable fee set forth in 37 CFR 1.20G. [12] Furthermore, the USPTO is extending the time period for petitioning for certain rights of priority or benefit in a patent application and waiving the associated petition fee. The relief extends the two-month time period for restoring the right of priority to, or benefit of, a foreign or provisional application for any nonprovisional application due to be filed on or after March 27, 2020, but on or before July 30, 2020. [13]

The Process for Trademarks:

In the initial Notice, it was stipulated that for trademark applications and registrations that have been abandoned or canceled/expired due to inability to timely respond to a trademark-related Office communication as a result of the effects of the Coronavirus outbreak, the USPTO will waive the petition fee (set by regulation, rather than statute) to revive the abandoned application or reinstate the canceled/expired registration. [14] As with patents, the petition must be filed no later than two months after the issue date of the notice of abandonment or cancellation/expiration. [15] If the applicant or registrant did not receive a notice of abandonment or cancellation, the petition must be filed no later than six months after the date the trademark electronic records system indicates that the application has been abandoned, or the registration has been canceled/expired. [16]Again, to utilize the fee waiver, a copy of the Notice must be enclosed along with a timely filed petition to revive. [17]

For both patents and trademarks, it is important to make sure that you have evidence to substantiate your claim that COVID-19 was a direct cause of the trademark abandonment or cancellation/expiration, or patent abandonment or termination or limitation of the patent reexamination prosecution. [18] This validates the usage of the fee waiver.

Similar to how the USPTO has been handling patents, the following Notices stated that certain deadline extensions were made for trademarks until May 31, 2020. After that date, however, relief was switched to evaluation on a case-by-case basis. [19] On June 15, 2020, the USPTO announced a new COVID-19 prioritized examination program for certain trademark and service mark applications. Under this new program, the USPTO will accept petitions to advance the initial examination of applications for marks used to identify qualifying COVID-19 medical products and services and will waive the associated fee. [20] To qualify for the new program, the application must cover a product that is subject to FDA approval for use in the prevention and/or treatment of COVID-19 or a medical or medical research service for the prevention and/or treatment of COVID-19. [21]

Limitations:

The Notice does not grant waivers or extensions of dates or requirements set by statute. [22]For patents, this specifically relates to the deadline for non-provisional patent applications that claim priority to a foreign priority application, a provisional patent application, or a previously filed parent patent application, or the three-month deadline to pay an issue fee, as well as several other instances specified in the Notice. [23] For trademarks, this specifically relates to filing statements of use; filing affidavits of continued use or excusable nonuse; filing a renewal; and filing an opposition or cancellation proceeding at the Trademark Trial and Appeal Board. [24]

Other Relief Information:

On May 8, 2020, the United States Patent and Trademark Office (USPTO) announced the COVID-19 Prioritized Examination Pilot Program, permitting COVID-19-related applications filed by small and micro entities to be put on a fast track for patent examination. The program was effective as of May 14, 2020. On May 18, the USPTO launched a related webpage, where you can find additional resources and information pertinent to the program. [25]

On June 3, 2020, the USPTO launched the COVID-19 Response Resource Center, which allows users to easily view information on a number of critical initiatives to aid the public throughout the ongoing crisis, including the USPTO’s “Patents 4 Partnerships” IP marketplace platform, the COVID-19 Prioritized Examination Pilot Program for accelerating the evaluation of patent applications directed to COVID-19 related technologies, information on trademark counterfeiting and consumer fraud, updates on international developments related to the COVID-19 outbreak, as well as links to the USPTO’s Pro Bono Program, information on voluntary early patent application publication, and resources for inventors and small businesses. [26]

How This Actually Helps:

The USPTO recognizes that practitioners, inventors, and trademark applicants/owners are simply people, and that current circumstances are going to make things more challenging in terms of communication and ensuring documents are being filed in a timely manner. Thankfully, with the leeway provided, it is more likely that individuals will be able to retain their intellectual property rights without the process being unduly burdensome. This is a well-received provision of relief for those who cannot currently afford the fees associated with reviving/filing patents and trademarks. This is especially true for businesses that are not deemed to be “essential businesses” by their states and are therefore not currently in full operation and suffering financial hardship. The USPTO has done a very thorough job of working to mitigate the current circumstances and creating resources for those who truly need them.

*Disclaimer Note: As the COVID-19 situation is very fluid and dynamic, the USPTO has been making updates accordingly. Therefore, this information only covers relief and aid afforded up through Friday, June 19, 2020. Any additional updates and relief after that date is not included in this post. Please go to the “USPTO Notices Regarding COVID-19” page, linked here, for up-to-date notices and information.

[1] Andrei Iancu, Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak 1-3, USPTO (2020), https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf.

[2] Id.

[3] Id.

[4] Id.

[5] Fabian Koenigbauer, USPTO Waives Petition to Revive Fees for Patents, Patent Applications, Trademarks and Trademark Application Abandoned Because of an Inability to Respond Due to COVID-19, JDSupra (Mar. 2020), https://www.jdsupra.com/legalnews/uspto-waives-petition-to-revive-fees-75869/.

[6] Id.

[7] Andrei Iancu, Notice of Waiver of Patent-Related Deadlines under the Coronavirus Aid, Relief, and Economic, Security Act 1, USPTO (2020), https://www.uspto.gov/sites/default/files/documents/Patents-Notice-CARES-Act-2020-03.pdf.

[8] Andrei Iancu, USPTO extends certain patent and trademark deadlines to June 1, USPTO (2020), https://www.uspto.gov/about-us/news-updates/uspto-extends-certain-patent-and-trademark-deadlines-june-1.

[9] Andrei Iancu, USPTO grants further relief for certain patent-related fees and deadlines, USPTO (2020), https://www.uspto.gov/about-us/news-updates/uspto-grants-further-relief-certain-patent-related-fees-and-deadlines.

[10] Id.

[11] Andrei Iancu, Relief Available to Plant Patent Applicants in View of the COVID-19 Outbreak: File Plant Patent Applications and Correspondence via USPTO’” Patent Electronic Filing Systems 1, USPTO (2020), https://www.uspto.gov/sites/default/files/documents/plant-efiling-20200504.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=.

[12] Andrei Iancu, Relief Available to Patentees in View of the COVID-19 Outbreak for Submission of Initial Patent Term Extension Applications Filed Pursuant to 35 U.S.C. 156 1-2, USPTO (2020), https://www.uspto.gov/sites/default/files/documents/156-efiling-20200529.pdf.

[13] Andrei Iancu, USPTO announces relief to restore priority or benefit rights for patent applicants, USPTO (2020), https://www.uspto.gov/about-us/news-updates/uspto-announces-relief-restore-priority-or-benefit-rights-patent-applicants.

[14] Iancu, supra note 1.

[15] Id.

[16] Id.

[17] Koenigbauer, supra note 5.

[18] Iancu, supra note 1.

[19] Andrei Iancu, USPTO Grants Further Relief For Certain Trademark-Related Fees and Deadlines, USPTO (2020), https://www.uspto.gov/about-us/news-updates/uspto-grants-further-relief-certain-trademark-related-fees-and-deadlines.

[20] Andrei Iancu, Relief Available to Trademark and Service Mark Applicants in View of the COVID-19 Outbreak: Petitions to Prioritize the Initial Examination of Certain Applications 1, USPTO (2020), https://www.uspto.gov/sites/default/files/documents/TM-COVID-19-Prioritized-Examination.pdf.

[21] Id.

[22] Iancu, supra note 1.

[23] Theodore Brown III & Andrew Serafini, Ph.D., COVID-19-related Delays in Filing Patent and Trademark Documents, JDSupra (Mar. 2020), https://www.jdsupra.com/legalnews/covid-19-related-delays-in-filing-67177/.

[24] Koenigbauer, supra note 5.

[25] Andrei Iancu, USPTO releases additional information on the COVID-19 Prioritized Examination Pilot Program, USPTO (2020), https://www.uspto.gov/about-us/news-updates/uspto-releases-additional-information-covid-19-prioritized-examination-pilot.

[26] USPTO Launches COVID-19 Response Resource Center, USPTO (2020), https://www.uspto.gov/about-us/news-updates/uspto-launches-covid-19-response-resource-center.

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