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Law360 (March 24, 2020, 2:42 PM EDT) --
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| Jason Lohr |
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| Cory Szczepanik |
These changes are expected to allow the USPTO to operate without significant interruption during the coronavirus pandemic. Patent and trademark prosecutors will be helped the most by these changes, as the USPTO has eased the consequences for missing some deadlines due to the coronavirus.
However, practitioners are warned that important statutory deadlines cannot be excused by the USPTO regardless of the coronavirus's effect on a prosecution.
For litigators before the Patent Trial and Appeal Board and Trademark Trial and Appeal Board, videoconferencing or teleconferencing is available to replace in-person meetings. Some litigators may feel that the lack of human connection will hurt their advocacy. In such cases, it may be advised to request a postponement of hearings.
If the coronavirus pandemic becomes worse, however, the USPTO may issue more precautions, and hearings may be postponed or cancelled until further notice. If time is of the essence, litigators should consider insisting that hearings occur as soon as possible, regardless of any effects on advocacy.
Coronavirus Is Considered to Be an Extraordinary Situation
The USPTO considers the coronavirus to be an extraordinary situation within the meaning of Title 37 of Code of Federal Regulations Sections 1.183 and 2.146 for affected patent and trademark applicants, patentees, reexamination parties and trademark owners.[2] These federal regulations permit the USPTO to suspend or waive nonstatutory requirements for those affected by the coronavirus.
This exercise of authority should not be surprising to seasoned USPTO practitioners. The USPTO has previously exercised its authority to consider other natural disasters extraordinary situations, for instance: Hurricane Harvey[3] and Hurricane Irma in 2017,[4] Japan's severe earthquakes in 2016[5] and Japan's earthquake and resulting tsunami and nuclear emergency in 2011.[6]
Given past practice, the coronavirus is likely to be an extraordinary situation for at least the upcoming weeks.
USPTO Offices Closed to Practitioners
Beginning March 16, the USPTO closed its offices to the public until further notice. All scheduled in-person meetings at USPTO offices will instead be conducted remotely by video or telephone, including PTAB and TTAB hearings. Impacted parties will receive further instructions on how to participate by video or telephone in advance of the interview, hearing or meeting.
USPTO operations are otherwise continuing without interruption. USPTO offices remain open for employees, contractors and those with access badges.
It is unlikely that USPTO deadlines and trial schedules will be significantly impacted at this point, as the USPTO is well equipped to operate using remote communications. Administrative patent judges, for example, often use videoconferencing to attend hearings, as many judges are not located near a USPTO office.
More significant delays could result if the USPTO deems it necessary to close USPTO offices to employees such that technical and administrative staff would not be available to facilitate videoconferencing or teleconferencing. As discussed above, if time is of the essence, litigators are advised to participate in hearings as soon as possible.
USPTO Excuses Delays and Waives Fees Due to Coronavirus
The USPTO has the authority to waive nonstatutory requirements for patent and trademark prosecutors. In the grand scheme of prosecution, these waived requirements do not significantly affect most of the important deadlines in a prosecution. However, they may help if a prosecutor avoid a significant consequence — such as abandonment — if the prosecutor misses a response deadline.
For example, if a patent application is abandoned due to the applicant's inability to file a timely reply due to the coronavirus, the USPTO will waive the $500 to $2000 petition fee to revive an abandoned application required by Title 37 of Code of Federal Regulations Section 1.17(m) when a petition to revive the application is included with the applicant's reply pursuant to Section 1.137(a).
The petition to revive the application must include a statement that the practitioner, applicant or one inventor was personally affected by the coronavirus outbreak such that he or she was unable to file a timely reply. The USPTO advises that applicant's should include in the petition the March 16 USPTO notice titled "Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak."[7]
This will be treated as a representation that the delay in filing the reply was due to the coronavirus and a request for sua sponte waiver of the petition fee otherwise required by Title 37 of Code of Federal Regulations Section 1.17(m). It is unclear from the USPTO's instructions whether the inclusion of the March 16 notice replaces the requirement for a statement that an involved party was personally affected by the coronavirus.
At this time, the best practice is to include both the statement and the notice. A petition to revive an application must be filed no later than two months from the issue date of the notice of abandonment in order to be entitled to a waiver of the petition fee, or no later than six months after abandonment of the application if no notice of abandonment was received.
A similar procedure is available for ex parte or inter partes reexamination proceedings that were terminated under Title 37 of Code of Federal Regulations Sections 1.550(d) 1.957(b) or limited under Section 1.957(c) due to the effects of the coronavirus.
A petition to revive the abandoned or limited reexamination proceeding must be filed no later than two months from the issue date of the notice that the proceeding was abandoned or limited in order to be entitled to a waiver of the petition fee, or no later than six months after the date the reexamination proceeding was terminated or limited if no notice was received.
The waived nonstatutory requirements also may help a trademark prosecutor avoid a significant consequence due to a missed response deadline. For trademark applications that were abandoned due to an inability to timely respond due to the coronavirus, the USPTO will waive the petition fee to revive the abandoned application.
The petition must include a statement explaining how the failure to respond was due to the coronavirus. The petition must be filed no later than two months from the issue date of the notice of abandonment, or no later than six months after the date the trademark electronic database indicates the application was abandoned.
Similar procedures are available for trademark registrations that were canceled or expired due to the effects of the coronavirus. The petition must be filed no later than two months from the issue date of the notice of cancellation of the registration, or no later than six months after the date the trademark electronic database indicates the registration was canceled or expired.
Of note, the USPTO's waiver of certain fees due to the coronavirus does not affect requirements set by statute. These deadlines are generally more important than those excusable by the USPTO discussed above, as a failure to meet many of these statutory deadlines could result in a loss of intellectual property rights.
Practitioners are advised to exercise caution when deciding what to focus on should their practices be significantly affected by the coronavirus. Examples of patent-related time periods that are not extendable by petition include:
- The time period to file a nonprovisional patent application claiming the benefit of a provisional application or foreign application;[8]
- The copendency requirement requiring that a child application be filed prior to the issuance of its parent application;[9]
- The three-month time period to pay an issue fee;[10] and
- The two-month time period for a requester to file a reply to a statement filed by the patentee in an ex parte reexamination.[11]
Examples of trademark-related time periods that are not extendable by petition include:
- The 36-month period to file a statement of use;[12]
- The time period for filing affidavits of continued use or excusable nonuse;[13]
- The time period for filing a renewal;[14] and
- The time period for filing an opposition or cancellation proceeding.[15]
Waiver of Original Handwritten Signature Requirements
In addition, the USPTO is waiving the requirement for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card required by Title 37 of Code of Federal Regulations Section 1.4(e).[16] In both instances, the office will accept copies of handwritten signatures. This waiver is effective until further notice.
This change is intended to help practitioners, applicants and inventors avoid unnecessary human contact. It is possible that this change will become permanent after the coronavirus, as such signature requirements are arguably antiquated in the modern electronic age.
With this waiver, the USPTO does not currently require original handwritten signatures for any reason. Previous rules for signatures remain the same. For patent correspondence that requires a signature under Title 37 of Code of Federal Regulations Section 1.4(d)(1), the USPTO will accept a direct or indirect copy of an original handwritten signature under Section 1.4(d)(1)(ii) or electronic signature that meets the requirements of Section 1.4(d)(2).
For trademark correspondence that requires a signature under 37 CFR §2.193(a), the USPTO will accept a true copy of a handwritten signature or an electric signature that meets the requirements of 37 CFR §2.193(c).
Jason D. Lohr is a partner and Cory D. Szczepanik is a senior associate at Hogan Lovells.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
[1] https://www.uspto.gov/coronavirus.
[2] https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf.
[3] https://www.uspto.gov/web/offices/com/sol/og/2017/week42/TOC.htm#ref11.
[4] https://www.uspto.gov/sites/default/files/documents/irma-relief.pdf.
[5] https://www.uspto.gov/web/offices/com/sol/og/2016/week27/TOC.htm#ref11.
[6] https://www.uspto.gov/web/offices/com/sol/og/2011/week16/TOC.htm#ref15.
[7] https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf.
[8] 35 U.S.C. §119(a)-(e).
[9] 35 U.S.C. §120.
[10] 35 U.S.C. §151.
[11] 35 U.S.C. §304.
[12] 15 U.S.C. §1051(d).
[13] 15 U.S.C. §§1058 and 1141k.
[14] 15 U.S.C. §1059.
[15] 15 U.S.C. §§1063 and 1064.
[16] https://www.uspto.gov/sites/default/files/documents/Waiver%20of%20Original%20Handwritten%20Signature%20Requirement%20Due%20to%20the%20COVID-19%20Outbreak%20--%20Signed%20and%20Dated%20--%203-19-2020.pdf.
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