The CARES Act did not leave out patent, trademark and copyright owners. Instead, the CARES Act grants the U.S. Patent & Trademark Office (USPTO) and the Register of Copyrights temporary authority to modify filing deadlines, which is good news for intellectual property holders.
On March 31, 2020, the USPTO and the Register of Copyrights issued notices modifying certain deadlines. Here’s what you need to know.
U.S. Patent & Trademark Office
Shortly after the coronavirus national emergency was declared, the USPTO closed its physical offices but remained open for business. While it did not extend patent and trademark deadlines at that time, it waived certain petition fees and implemented remote interviews, meetings and hearings.
The recently-passed CARES Act granted the USPTO director the power to, on a temporary basis, toll, waive, adjust or modify patent and trademark deadlines and regulations if the coronavirus emergency materially affects office functions, prejudices rights or prevents the filing of documents or fees with the office. The director has considerable latitude in modifying deadlines and can extend such deadlines beyond 120 days if a proper statement is submitted to Congress. If the director decides such deadline relief is necessary, he must issue a public notice.
The director promptly issued such a notice on March 31, 2020, announcing extensions for both trademark and patent matters.
For trademarks, most prosecution deadlines falling between March 27 and April 30, 2020, can be extended by 30 days with a statement explaining the deadline was missed because you were personally affected by the COVID-19 outbreak. This includes illness, office closures, cash flow interruptions and travel delays, among others. Notices of appeal, opposition and requests for extension of time to file an opposition before the Trademark Trial and Appeal Board (TTAB) may also be extended. For other TTAB situations, requests or motions for an extension may be made.
For patents, most prosecution deadlines falling in that same period of time can be extended by 30 days with the filing of a proper COVID-19 statement. Also included in the extension are requests for rehearing of a Patent Trial and Appeal Board (PTAB) decision, a petition to the chief judge, and a patent owner’s preliminary response and any related PTAB responsive filings. Requests for extension of time for other PTAB situations can also be made following certain protocol. Notably, the extension does NOT cover: original patent filing deadlines; PCT or national stage filing deadlines; deadlines for filing a non-provisional application following a provisional; or the deadline for filing an inter partes review petition.
Register of Copyrights
Like the USPTO, the Copyright Office closed its buildings until further notice after the national coronavirus emergency was declared; however, business continued and deadlines did not change. But the CARES Act empowered the Register of Copyrights to, on a temporary basis, toll, waive, adjust or modify copyright timing provisions, barring certain exceptions, if the coronavirus emergency disrupts or suspends the ordinary functioning of the copyright system. The modified timing provisions cannot be longer than the Register of Copyrights reasonably deems appropriate to mitigate the disruption of the national emergency, and deadlines beyond 120 days must be justified in a statement to Congress.
On March 31, 2020, the Register of Copyrights announced that certain copyright deadlines may also be extended as long as copyright owners provide similar statements about the impact of COVID-19. The details of those changes can be read here.
Whether the USPTO director or the Register of Copyrights extend deadlines falling after April 30, 2020, remains to be seen. Our Technology and Intellectual Property Practice Group at Warner will keep you posted of any such changes, but in the meantime, please contact a member of the group with any questions or concerns.