US Patent and Trademark Office Measures Taken in View of COVID-19 Outbreak: What Applicants and You Should Know

The US Patent and Trademark Office (USPTO) has implemented several measures over the past week to assist patent and trademark applicants in view of the COVID-19 outbreak and its disruption to businesses. The USPTO stresses that, until further notice, USPTO operations will continue without interruption. Below are the key USPTO measures and what you should know if you have a pending patent or trademark application, are planning to file such an application, or are involved actively in a PTAB proceeding.

Unlike the European Patent Office and Canadian Intellectual Property Office, which have eased the burden on their patent applicants by extending all deadlines until at least the earliest April 17 and April 1, 2020, respectively, the USPTO has offered more limited relief. On March 16, 2020, the USPTO announced that it will not extend any deadlines, including new and existing patent and trademark application, prosecution, and PTAB deadlines. Instead, the USPTO will waive revival petition fees for those whose patent applications were deemed abandoned or had reexamination proceedings terminated when the effects of the COVID-19 outbreak led to a missed deadline. This waiver will also apply to trademark applications labeled abandoned or whose registrations were canceled or expired based on missed deadlines. The USPTO has stated that it “considers the effects of the Coronavirus outbreak” to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners, and will waive the fees for certain petitions to revive if the delay in filing the reply that led to the abandonment was “due to the effects of the Coronavirus outbreak.” See the full USPTO notice here.

Importantly, these newly-instituted relief measures are limited and apply only to deadlines for responding to USPTO communications; they do not apply to statutory filing deadlines. The USPTO has specifically stated that it “does not grant waivers or extensions of dates or requirements set by statute.” Accordingly, no patents may issue from patent applications filed after any statutory filing deadlines, despite any filing delay “due to the effects of the Coronavirus outbreak.” Therefore, it is critical that all possible efforts be taken to timely file new patent applications in view of statutory filing deadlines, as no relief is presently offered for reviving late-filed patent applications.

In addition, the USPTO had issued two earlier announcements addressing revised administrative measures in response to the COVID-19 outbreak. The first announcement, issued March 13, provided that, as of that day and until further notice, all meetings between applicants and patent and trademark examiners, along with hearings before the Patent Trial and Appeal Board and Trademark Trial and Appeal Board, shall be conducted remotely by video or telephone. The USPTO has not made any announcement extending PTAB trials as a matter of course or modifying PTAB discovery, such as expert depositions. Thus, parties in PTAB proceedings should expect to proceed as scheduled, except the oral argument will not be conducted in person.

In the second announcement, issued March 15, the USPTO informed the public that it would remain open but that, starting March 16, the USPTO would be closed to the public until further notice out of an abundance of caution for the health and safety of the public and USPTO employees, allowing access only to employees and others with access cards.

Some practice tips in view of the recent USPTO relief measures include:

• Identify and beware of any statutory filing deadlines that may exist for filing your patent application and make every effort to prepare and file such patent application before such deadlines; the instituted measures do not provide any relief for late-filed patent applications.
• If you missed a response deadline in connection with an existing patent and trademark application or prosecution, or a PTAB deadline, and your patent or trademark application was deemed abandoned or reexamination proceedings terminated “due to the effects of the Coronavirus outbreak,” you still have to petition to revive such matters, as you would have done prior to the institution of the relief measures.
• If you file a petition to revive such matters that expired or terminated “due to the effects of the Coronavirus outbreak,” the limited relief provided by the USPTO measures will enable you to have the petition fee waived only if you (a) file your petition within two months of the date of the notice of abandonment or termination; and (b) include in your petition (i) a request for waiving of the petition fee and, importantly, (ii) a statement that the delay in filing the reply required to an outstanding Office communication was because you were personally affected by the Coronavirus outbreak such that you were unable to file a timely reply.
• As PTAB trials are expected to continue without interruption, patent owners and petitioners should continue to actively argue their respective positions, while taking into account COVID-19 related limitations. For example, at the oral argument, attorneys will likely have to adjust to presenting their case without a full array of visual aids and handouts that would be available in the courtroom. Moreover, attorneys will likely have to conduct depositions remotely, which will bring its own set of challenges.

Because the COVID-19 situation is continually evolving, the USPTO may issue further guidance as circumstances change. We will continue to monitor the COVID-19 situation as it relates to patent and trademark procurement and enforcement, and update you accordingly. Please do not hesitate to contact Robert E. Rudnick, a Director in the Gibbons Intellectual Property Department, with any questions.

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