Baker Donelson - USA
On 31 March 2020 the USPTO and the US Copyright Office announced grace periods for certain fees and deadlines during the coronavirus pandemic. Leaders of these offices cited the Coronavirus Aid, Relief and Economic Security (CARES) Act – the $2 trillion relief bill signed by the president on 27 March.
Most deadlines for patent and trademark filings and/or fees that would ordinarily be due between 27 March and 30 April 2020 will be extended for one month if the delayed submission includes a statement that the hold-up was caused by covid-19. The USPTO will accept an affirmation that a person associated with the filing or fee, which could include the patent or trademark applicant, owner or inventor(s), was personally affected by the covid-19 outbreak, including by office closures, inaccessibility of files, travel delays, cash-flow interruptions or personal or family illness.
The USPTO’s declaration specifically noted the outsized impact of covid-19 on small businesses and independent inventors. Relief for certain patent prosecution and maintenance deadlines is not available to large businesses with 500 or more employees. Specifically, large businesses are not eligible to delay payment of patent maintenance fees or their responses to pre-examination formalities notices (eg, a notice to file missing parts of a patent application).
Subject to the exclusion of large businesses in the limited instances as noted, eligible patent deadlines include those to respond to office actions, file a notice of appeal or appeal brief or pay issue or maintenance fees. Eligible trademark deadlines include those to respond to office actions, file a statement of use or request for extension of time for this, file a notice of opposition and make certain trademark maintenance filings.
Although not subject to the numerous prosecution deadlines applicable before the USPTO, copyright applicants are also seeing relief under the CARES Act. In particular, if a copyright applicant is delayed in submitting an application electronically because of inability to access the Internet or required physical materials, the Copyright Office will annotate the resulting copyright registration. This is critical to applicants who need to enforce their copyright through an infringement action. Generally, statutory damages for infringement claims are only available if the copyrighted work is registered with the Copyright Office prior to the infringement or within three months of the work’s first publication. The temporary relaxation of these requirements, as reflected in the Copyright Office’s annotation of affected registrations, is designed to compensate for an applicant’s inability to register a copyright within this statutory timeframe. The Copyright Office has also relaxed timing requirements for filing notices of termination of copyright for affected persons.
Both the USPTO and the Copyright Office continue to accept electronic filings but have altered their mail or in-person operations to prevent the spread of covid-19. The latter is closed to the public and the former has shifted all in-person meetings and hearings to phone or video conferences until further notice.