August 4, 2020

Volume X, Number 217

August 03, 2020

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USPTO Extends Trademark And Patent Deadlines Due to Coronavirus Pandemic

As IP Offices around the world work to mitigate the impact of the global health threat, the U.S. CARES Act gives USPTO authority to extend statutory deadlines to help ease burden of IP owners affected by COVID-19

The Coronavirus Aid, Relief, and Economic Security (CARES) Act signed into law on March 27, 2020, which provides relief to individuals and businesses affected by the COVID-19 crisis, also offers relief to intellectual property owners facing challenges meeting filing and response deadlines due to the unprecedented health crisis.

Section 12004 of the CARES Act gives additional authority to the Director of the United States Patent and Trademark Office to “toll, waive, adjust, or modify any timing deadline” established by law in order to help bring relief to trademark and patent owners currently facing business uncertainties due to the pandemic.

On Tuesday, the USPTO announced that various trademark filing and Trademark Trial and Appeal Board deadlines originally due between March 27, 2020 and April 30, 2020 will be extended 30 days from the initial due date for those affected by the crisis.

These extensions apply to, among others, responses to office actions, statements of use, notices of opposition, priority filings, and renewal applications. In order to qualify, the relevant filing must be accompanied by a statement that the practitioner, applicant, registrant, or other person associated with the filing was personally affected by the COVID-19 outbreak, including through office closures, cash flow interruptions, or inaccessibility of files.

The USPTO has also extended deadlines for patent applications, patent re-examinations and certain proceedings before the Patent Trial and Appeal Board, provided the delay was due to the outbreak.

Up until the signing of the CARES Act, the USPTO had not extended deadlines because, as most trademark and patent deadlines are set by statute, the Director has had no authority to do so.  The Director did, however, waive fees for petitions to revive applications or cancelled/expired registrations where patent and trademark applicants or owners were unable to timely reply because of the coronavirus outbreak.

The Act grants a similar authority to the U.S. Copyright Office to offer extensions.  On Tuesday, the Copyright Office adjusted deadlines for 60 days for individuals affected by the crisis, including extending the three month window to qualify for statutory damages to remedy copyright infringement in cases where the copyright owner is either unable to complete the electronic filing of the copyright application or cannot submit the required physical deposit due to the national emergency.

IP offices worldwide have been scrambling to adapt their practices to this unprecedented situation. As of March 16, the European Intellectual Property Office (EUIPO) has extended all deadlines that expire between March 9 and April 30 to May 1. Similarly, the European Patent Office (EPO) announced on March 16 that all deadlines are extended to April 17 and could be extended further if the disruption continues. The UK Intellectual Property Office (UKIPO) has announced that deadlines for patents, supplementary protection certificates, trademarks, and designs which fall after March 24 are suspended until at least April 17. China’s National Intellectual Property Administration (CNIPA) indicated on February 14 that if trademark applicants and registration holders fail to meet deadlines due to the epidemic, the deadlines will be suspended from the date when business could no longer be handled normally due to prevention and isolation measures.

© 2020 Bracewell LLPNational Law Review, Volume X, Number 96

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About this Author

Erin Hennessy, trademark, copyright attorney, Bracewell law firm
Partner

Erin Hennessy is a partner in Bracewell's Technology Group and is the head of the firm’s Trademark and Copyright practice. Her practice focuses on trademark law, copyright law, and internet and social media issues spanning many industries including media, publishing, technology, retail, fashion, and financial services.  Having served as a former chief trademark counsel in-house, she brings an innate business sense and first-hand insights to her practice.

Erin counsels clients on all aspects of IP with a particular emphasis on supporting legal,...

212-938-6428
Annie Allison, Bracewell Law Firm, Copyright and IP attorney
Associate

Annie Allison focuses on advising and assisting clients on intellectual property issues related to trademark, copyright, and technology law.

She regularly prepares and prosecutes trademark applications and assists in the management of global trademark portfolios. Annie also assists on a broad array of IP and technology related matters, including IP licensing and technology transactions focused on software, digital media, advertising, merchandising, and innovative technology. She advises clients on data privacy strategies and related regulatory compliance. Her experience also includes drafting and negotiating multi-national media distribution and IP licensing agreements for software and entertainment technology companies.

Prior to joining Bracewell, Annie served as an extern to the Washington State Attorney General’s Office, Antitrust Division and as a judicial assistant to the Honorable Charles Weller of the Second Judicial District Court of the State of Nevada. Prior to practicing law, Annie was a television broadcast news reporter and producer.

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