USPTO COVID-19 Response
Following the Coronavirus outbreak in March, President Donald Trump signed the Coronavirus Aid, Relief, and Economic Security (“CARES”) Act into law.[1] Part of the CARES Act addresses the authority that is given to the director of the United States Patent and Trademark Office (“USPTO”) by temporarily expanding certain statutory deadlines due to the impact of COVID-19.[2] Prior to COVID-19 and the passage of the CARES Act, the USPTO was only able to extend deadlines by statute for applicants, registrants or patent owners filing patent and trademark-related documents.[3] However, under 37 C.F.R. § 1.183, the USPTO declared COVID-19 an “extraordinary situation” and allowed the USPTO director “to suspend or waive regulations that are not statutory requirements.”[4]
Specifically, the USPTO released official Patent and Trademark notices on their website on March 31, 2020 with descriptions of permitted deadline adjustments and waivers.[5] The notices explain how the COVID-19 outbreak might prejudice the rights of applicants, registrants or patent or trademark owners from appearing before the USPTO or from filing documents or fees with the office.[6] The notices specify the burden on small businesses and independent inventors “who frequently have less access to capital and for whom patent-related fees may constitute a more significant expense, may face particular difficulties.”[7] For patent applications and reexamination proceedings, the USPTO extended the initial deadline by thirty days for:
• replies to a notice issued during pre-examination processing by a small or micro entity
• replies to an Office notice or action issued during examination or patent publication processing
• issue fees
• notices of appeal, appeal briefs or reply briefs
• appeal forwarding fees
• requests for an oral hearing before the Patent Trial and Appeal Board (PTAB)
• responses to a substitute examiner’s answer
• amendment swhen reopening prosecutions in response to or request for rehearing of a PTAB decision designated as including a new ground of rejection;
• maintenance fee, filed by a small or micro entity
• request for a rehearing of a PTAB decision[8]
For trademark filings and registrations, the USPTO extended the due date by 30 days for:
• responses to an Office action, including a notice of appeal from a final refusal
• statements of use or requests for extension of time to file a statement of use
• notices of opposition or requests for extension of time to file a notice of opposition
• priority filing basis for a request for extension of protection to the United States or for an application in the United States filed within six months from the date on which the application was first filed in the foreign country
• transformations of an extension of protection to the United States into a U.S. application
• affidavits of use or excusable nonuse
• renewal application[9]
These extensions were announced in March for practitioners, applicants, registrants, patent owners, petitioners, third-party requesters, inventors, or others personally affected by the COVID-19 outbreak, regarding actions between March 27, 2020 and April 30, 2020.[10] The examples of possible impacts the office provided included 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.[11] Following the March 31st notice release, the USPTO issued a subsequent alert on April 28th extending the deadline to file specific patent and trademark-related documents and to pay required fees to June 1, 2020 for those impacted by COVID-19.[12]
In addition to the extensions, the USPTO has announced additional programs for COVID-19-related trademarks and inventions.[13] One such program is the COVID-19 examination program for specific patent and trademark services related to the prevention or treatment of COVID-19.[14] The office explains that the USPTO, under this new program, “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 fees associated with these petitions.[15] Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, explained how this is greatly beneficial because inventors have been working tirelessly to develop products to help prevent, treat or cure COVID-19, and accelerating these trademark applications will hopefully expedite bringing these life-saving treatments to market.[16]
The USPTO also announced a COVID-19 deferred-fee provisional patent application pilot program for inventions created to combat COVID-19.[17] This program allows applicants with inventions that combat COVID-19 to defer provisional application filing payments until a subsequent nonprovisional application is filed.[18] In order to defer the payment, applicants must agree that the subject matter disclosed in their provisional application will be available to the public on the USPTO website.[19] The USPTO recognizes the importance of issuing high-quality patents to investors and how this is closely intertwined with the dissemination of scientific information to promote further innovation and collaboration.[20] As the COVID-19 pandemic continues to impact the United States, it is likely the USPTO will continue to implement future programs in an effort to expedite bringing future scientific discoveries to the public.
Footnotes
