As we continue to track evolving COVID-19 (coronavirus) developments, we hope that you, your families and your colleagues remain safe and healthy. We also wanted to reassure you of our continuing availability to serve your legal needs. We remain committed to providing the highest quality legal counsel to our clients, consistent with the need to protect the safety and well-being of our attorneys and staff. To that end, the vast majority of our attorneys and staff are working remotely. We are fortunate that we have the resources and technology available to work and collaborate remotely with the same secure system used in our offices.
Not surprisingly, COVID-19’s impact has extended to intellectual property cases. The situation at the U.S. Patent and Trademark Office (USPTO) is a dynamically changing one.
In the last few days, our U.S. Senate passed the Coronavirus Aid, Relief and Economic Security Act (CARES ACT), which would provide temporary authority to the USPTO Director to “toll, waive, adjust or modify” any timing deadline. However, unless and until enacted into law (and the USPTO Director would have to exercise such authority), we continue to advise our clients, friends and worldwide colleagues to proceed as normal and comply with all existing deadlines.
At this time the USPTO is operational, and although COVID-19 has been deemed to merit an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146, all deadlines are still in place and attorneys and agents should proceed accordingly.
On the patent side, what this means is that the USPTO has at this time, only waived the requirement for certain patent-related petition fees. In particular, the USPTO will waive the petition fees for applicants or patent owners who were unable to timely reply to an Office communication due to the effects of the Coronavirus outbreak, which resulted in the application being held abandoned. Upon filing a petition to revive under 37 CFR 1.137(a), the applicant or patent owner must include a statement that the delay in filing the reply was because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply.
Importantly, however, this “extraordinary situation” notice does not currently grant waivers or extensions of dates or requirements set by statute, including the following:
- the 6-month time period to file a response to an outstanding Office Action;
- the 12-month time period to file a nonprovisional patent application claiming the benefit of a prior filed foreign application;
- the 12-month time period during which a nonprovisional application claiming the benefit of a prior filed provisional application must be filed in order to obtain benefit of the provisional application’s filing date;
- the copendency requirement between a parent application which issues as a patent and a later filed child application, which requires that the child application be filed prior to issuance of the parent application; and
- the 3-month time period to pay the issue fee.
On the trademark side, the “extraordinary situation” implementation similarly means only that the USPTO has also waived the requirement for certain trademark-related petition fees. In particular, the USPTO will waive the petition fee to revive an abandoned application or reinstate a canceled/expired registration. Upon filing a petition to revive, the applicant or trademark owner must include a statement that the delay in filing the reply was because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply. The petition must also be filed not later than two months of the issue date of the notice of abandonment or cancellation (or within six months after then date that the trademark electronic records system indicates that the application is abandoned or the registration is canceled/expired if the application or registrant did not receive a notice of abandonment or cancellation). However, this “extraordinary situation” does not currently grant waivers or extensions of dates or requirements such as office action deadlines and the like.
We will continue to monitor the situation closely and provide updates as often as possible.
In the interim, if you have any questions or concerns about U.S. patent or trademark practices or rules during this time, do not hesitate to contact one of our attorneys who stand ready to assist and answer any of your IP related questions or concerns. Our COVID-19 Resource Center is also updated regularly to provide you with the latest information and can be accessed here.
Nicholas P. Caiafa
(203) 784-3157; [email protected]
Jennifer A. Calcagni
(203) 575-2648; [email protected]
Damian K. Gunningsmith
(203) 784-3185; [email protected]
John R. Horvack Jr.
(203) 784-3120; [email protected]
(203) 784-3116; [email protected]
Arthur G. Schaier
(203) 575-2629; [email protected]