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USPTO and US Copyright Office Extend Certain Timing Deadlines Under CARES Act
Practical Law Legal Update w-024-8068 (Approx. 5 pages)
USPTO and US Copyright Office Extend Certain Timing Deadlines Under CARES Act
by Practical Law Intellectual Property & Technology
| Law stated as of 01 Apr 2020 • USA (National/Federal) |
The US Patent and Trademark Office (USPTO) and the US Copyright Office announced extensions of certain patent, trademark, and copyright-related timing deadlines under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).
On March 31, 2020, the USPTO and the US Copyright Office extended certain patent, trademark, and copyright deadlines, in accordance with the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), which grants these agencies temporary authority to toll, waive, adjust, or modify timing deadlines due to the COVID-19 national emergency. For more information on the CARES Act's intellectual property provisions, see Legal Update, CARES Act Grants Temporary Authority to USPTO and Copyright Office.
The USPTO announced that it will extend for 30 days certain deadlines due between, and inclusive of, March 27, 2020 and April 30, 2020, including deadlines during:
- Trademark prosecution and Trademark Trial and Appeal Board proceedings for:
- office action and notice responses;
- statements of use or their extensions;
- priority filing bases;
- notices of oppositions or related requests for extensions of time;
- renewal applications; and
- other situations upon application to, and approval of, the TTAB.
- Patent prosecution for:
- notices during pre-examination processing for small and micro-entities;
- office actions and notice responses during examination and publication processing;
- prosecution appeals;
- issue fee payments;
- maintenance fee payments by a small or micro entity.
- Patent Trial and Appeal Board trials for:
- a patent owner's preliminary response or related responsive filings;
- a request for rehearing;
- petitions to the Chief Judge; and
- other situations upon application to, and approval of, the PTAB.
The USPTO requires that any filing under the extended deadline be accompanied by a statement that the delay was due to COVID-19, which the USPTO defines as:
- Applying to a practitioner, applicant, patent owner, petitioner, third party requester, inventor, registrant, or other person associated with the filing or fee who is personally affected by the COVID-19 outbreak.
- Including office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances causing material interference with timely filing or payment.
For additional details, see the USPTO's:
The Copyright Office also announced that it will implement emergency modifications and adjustments for 60 days due to the COVID-19 national emergency to temporarily adjust timing requirements.
The Acting Register is temporarily adjusting the timing provisions under 17 U.S.C. § 412 for applicants who cannot submit either:
- A required physical deposit but can submit an application electronically. The applicant must submit a declaration certifying that the applicant cannot submit the physical deposit but would have done so but for the national emergency, for example by stating that the applicant is:
- subject to a stay-at-home order issued by a state or local government; or
- unable to access the physical materials due to closure of the business where they are located.
- An application electronically or physically. The applicant must submit a declaration certifying that the applicant cannot submit an application electronically or physically but would have done so but for the national emergency, for example, by stating that the applicant:
- did not have access to a computer or the internet; or
- was prevented from accessing or sending required physical materials because of a government stay-at-home order or business closure.
The Acting Register is also temporarily adjusting the timing requirements under 17 U.S.C. §§ 203 and 304(c) to serve and record notices of termination where either:
- The author’s five-year termination window expires on or after March 13, 2022 but less than two years after the date the COVID-19 disruption ends, if:
- the author serves a notice of termination within 30 days after the date the Acting Register announces as the date the disruption ended; and
- the notice of termination is accompanied by a declaration certifying that but for the national emergency, the author would have been able to serve the notice within the five-year window with an explanation supporting that certification.
- The recordation window is expiring. The Acting Register will waive the requirement for a notice to be recorded before the termination date if:
- the author already served the notice on the transferee;
- the termination date listed on the notice is on or after March 14, 2020 and on or before the date the Acting Register announces as the date the disruption ended;
- the author records the notice within thirty days after the date the disruption ended; and
- the recordation submission includes a declaration certifying that the author would have submitted the notice in a timely manner but for the national emergency with evidence supporting the certification.
For an up-to-date record of COVID-19 changes and modifications to the USPTO, Copyright Office, and other courts and agencies related to the Intellectual Property and Technology practice, see Article, COVID-19: Intellectual Property & Technology Practice Changes.