Davis Brown Intellectual Property Law Blog 

Patent Office Responses to COVID-19 - March 23, 2020

Sean D Solberg

In these strange and trying times, we are seeing our federal, state, and local governments and administrative entities taking steps to protect their employees and help the people and companies impacted by this pandemic.

The U.S. Patent and Trademark Office (USPTO) and other patent offices are also taking steps to mitigate issues that applicants may have as a result of the Coronavirus/COVID-19. 

U.S. Patent and Trademark Office

All indications are that the USPTO is and will continue to be fully operational throughout this pandemic.  Given that the Office already had many examiners working remotely at least part of the time, it seems logical that the transition to a fully remote workforce is expected to go fairly smoothly. 

In reaction to the virus, USPTO is taking certain steps to promote safety and provide some relief to applicants negatively impacted by the virus:

  1. Restrict person-to-person contact
  2. Simplify revival of an application unintentionally abandoned as a result of the pandemic and to ease original document requirements. However, no deadlines have been extended.

Remote Meetings and Offices Closed

The initial steps taken by the USPTO had little impact on most applicants but were necessary to protect both USPTO employees and applicants. On March 13, the USPTO announced that all examination interviews, appeal board hearings, and other in-person meetings were to be conducted via video conference or telephone.  Two days later, the USPTO closed its offices to the public altogether. 

Waived Petition Fees

On March 16, the USPTO announced that it would waive petition fees for revival or reinstatement of abandoned patent or trademark applications resulting from a deadline missed as a result of COVID-19.

For any patent or patent application that lapses as a result of a deadline missed due to the effects of the outbreak, the applicant can file a petition to revive due to unintentional delay and the USPTO will waive the petition fee, currently $850 for small entities and $1,700 for large.  The petition 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.”

Similarly, for any trademark or trademark application that is abandoned, canceled, or expired as a result of a deadline missed due to the effects of COVID-19, the applicant can file a petition to revive/reinstate the application/registration and the USPTO will waive the petition fee. Like the patent petition, this petition must include a statement “explaining how the failure to respond to the Office communication was due to the effects of the Coronavirus outbreak.”

Waived Original Signature Requirement

The USPTO issued a statement on March 19 announcing a waiver of the requirement for an original handwritten signature in the only two instances that still require such a signature:  (1) certain correspondence with the Office of Enrollment and Discipline (“OED”), and (2) certain payments by credit card.  The correspondence with the OED relates to “registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings,” and the payments in question are “payments by credit cards where the payment is not being made via the Office’s electronic filing systems.”

No Waivers or Extensions for Statutory Dates or Requirements

The USPTO has given every indication that it will NOT be waiving or extending any dates. In fact, it has made a point to expressly state that the above announcements do not apply to dates or requirements set by statute. In the petition fee waiver announcement, the USPTO listed five patent-related deadlines and four trademark-related deadlines that are not extendable by petition. It appears that Director Iancu wants to manage expectations and eliminate all speculation that any relief relating to deadlines will be forthcoming. Alternatively, the emphasis on the statutory nature of these deadlines could be a hint that any relief would have to come from Congress.

Other Patent Offices

Patent offices in other jurisdictions have taken a different approach.

The European Patent Office (“EPO”) has not only postponed all in-person oral proceedings until March 27 but has also pushed all deadlines failing on or after March 15 to April 17.    

Similarly, the Canadian Intellectual Property Office (“CIPO”) has extended deadlines falling on or after March 16 to April 1.

The European Union Intellectual Property Office (“EUIPO”), which oversees registration of EU trademarks and designs, has extended all deadlines falling between March 9 and April 30 to May 1. 

Additional Resources

If you have specific questions about the impact of COVID-19 on the ongoing prosecution of your patent and/or trademark portfolios, please contact your attorney. 

We will continue to monitor the situation at the USPTO and the various other patent offices and take appropriate steps as necessary. You can access additional Coronavirus/COVID-19 Legal Resources on our website.

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