March 26, 2020

Intellectual Property Offices Grant Relief to Applicants and Registrants During Coronavirus Pandemic

by Stites & Harbison, PLLC

The United States Copyright Office (“Copyright Office”) and United States Patent and Trademark Office (“USPTO”) have taken steps to follow the CDC recommendations for slow the spread of COVID-19. The Copyright Office buildings are closed to the public until April 1, 2020, though it is anticipated that this closure will be extended. During this closure, the Copyright Office is not accepting any deliveries. However, users of Copyright Office services may still conduct business through, including filing copyright applications submitting questions, and appointing and updating DMCA agents. The Copyright Office also remains accessible by phone at 202.707.3000.

Likewise, the USPTO is closed to the public, and will remain closed to the public until further notice. All USPTO employees other than “mission critical” employees have been directed to telework until further notice. As a result of this closure, all examiner and examining attorney interviews, Patent Trial and Appeal Board oral hearings, Trademark Trial and Appeal Board oral hearings, and other in-person meetings are being conducted remotely by video or telephone. However, everything else remains business as usual for the USPTO. Users of USPTO services are still able to conduct filings through, and examiners are still available to applicants via email and telephone.

The USPTO has deemed the coronavirus pandemic to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146 and has therefore taken additional steps to provide relief for USPTO customers impacted by COVID-19. The USPTO is waiving certain petition fees for impacted customers. Specifically, for patent applicants or patent owners who were unable to timely reply to a USPTO communication as a result of the effects of COVID-19, the USPTO has agreed to waive the fee that accompanies a petition to revive an abandoned patent application, a delayed payment of the fee for an issuing patent, a delayed response by a patent owner in a reexamination proceeding, a delayed maintenance fee, or a delayed submission of a priority or benefit claim, an extension of the period for filing a subsequent application, and a petition to excuse an application’s failure to act within the prescribed time limits in an international design application. To take advantage of this relief, the applicant or patent owner must include a copy of the notice published by the Patent Office describing the relief in its reply, and the USPTO will interpret this a request for a sua sponte waiver of the petition fee under 37 CFR 1.17(m). Additionally, the applicant or patent owner must include a statement in its petition that the delay in filing the reply resulted from the practitioner, applicant, or at least one inventor, being personally affected by the coronavirus outbreak such that they were unable to file a timely reply. The USPTO provides additional specific instructions about how to file such a petition, and advises that a petition seeking relief due to the coronavirus outbreak must be filed within two months of the issue date of the notice of abandonment or the notification that the reexamination prosecution has been terminated. In the event a patent applicant or owner did not receive an office notification, that applicant or owner shall have six months from the date of issuance of the notification to file a petition.

The USPTO is making a waiver for trademark applicants and registrants who failed to timely respond to a USPTO communication or deadline as a result of COVID-19. For applicants or registrants whose applications or registrations were abandoned or cancelled due to their inability to complete a timely filing because of COVID-19, the USPTO will waive the petition fee to revive the abandoned application or reinstate the registration. To revive abandoned applications, applicants should use the TEAS form titled Petition to Revive Abandoned Application and to reinstate a canceled registration, registrants should use the Petition to the Director TEAS form. All petitions must include a statement explaining how the failure to respond to a USPTO communication or deadline was due to the effect of coronavirus. Like on the patent side, any petition seeking relief due to the coronavirus outbreak must be filed within two months of the issue date of the notice of abandonment or cancellation. In the event a trademark applicant or registrant did not receive an office notification, that applicant or registrant shall have six months from the date of issuance of the notification to file a petition.

Intellectual Property Offices around the world are making similar accommodations for those impacted by COVID-19. For instance, the Canadian Intellectual Property Office has extended deadlines for Trademark Opposition Board proceedings falling between March 16 and March 31 to April 1, 2020, and permitting any deadlines falling after April 1, 2020 to be extendable as a result of COVID-19. The European Union Intellectual Property Office has also extended deadlines, moving time limits expiring between March 9 and April 30, 2020 until May 4 2020. The World Intellectual Property Organization has agreed to extend deadlines for applicants who have failed to meet a time limit for a communication if they send that communication within five days after regaining access to mail services, delivery services, or electronic communication, so long as sufficient evidence of the reason for the delay is communicated to WIPO. The United Kingdom Intellectual Property Office has stated that it will take whatever measures it can to support the rights of applicants impacted by COVID-19, including considering requests for extensions of time as favorably as possible and reinstating lost rights when possible.

Generally, intellectual property offices around the world seem to be willing to work with applicants and registrants to protect their rights and grant extensions when possible and when not prohibited by statue. It seems as though applicants and registrants can expect further closures of intellectual property offices and further extensions as this pandemic continues.