After CARES Act Passed, Certain Patent, Trademark and Copyright Deadlines are Extended to Lessen the Impact of COVID-19

As noted in our prior alert, the timing of many United States Patent and Trademark Office (USPTO)—and Copyright Office—filings are dictated by statute, and those offices do not have the authority to alter such
deadlines.¹ However, in an effort to minimize the impact of the COVID-19 pandemic, the USPTO previously offered some relief by waiving fees associated with petitions to revive unintentionally abandoned applications.

Now, the CARES Act, signed into law on March 27, 2020, has provided temporary authority to the USPTO and Copyright Office to waive or alter deadlines under the relevant statutes.²  Both offices have taken advantage of this authority and issued Notices extending certain deadlines.

On March 31, 2020, the USPTO issued two Notices that extend certain deadlines due between March 27, 2020, and April 30, 2020, for 1) patent and trademark applications, 2) documents in patent and trademark proceedings and 3) associated fees, for a period of 30 days from the initial date.³ The filing(s) for which extension is sought must be accompanied by a statement that the delay (in filing or payment) is due to COVID-19, and must indicate whether a practitioner, applicant, patent owner, petitioner, third-party requester, inventor or other person associated with the filing or fee is/was personally affected by the COVID-19 outbreak.

A list of extendable patent- and trademark-related deadlines may be found in the respective Notices. Note that, while many deadlines related to patent prosecution efforts and PTAB proceedings are extended, the deadlines for filing patent applications (e.g., to claim priority from earlier applications, preserve rights in view of imminent disclosure, etc.) are not extended and thus must still be complied with.

Also on March 31, 2020, the Copyright Office issued a similar notice allowing registration deadlines to be extended as long as copyright owners provide similar statements.⁴ Affected copyright owners can receive additional time to register a work in order to be eligible for certain remedies in infringement actions. Individuals who are prevented from serving or recording notices of termination will also be permitted additional time.

The availability of extensions granted by the USPTO and Copyright Office will certainly be welcome relief for some applicants/registrants working in these challenging times.

For more resources to help you understand and respond to the legal implications of the current global health emergency, including our most recent updates and alerts, please visit the firm’s Coronavirus/COVID-19 Resource Center.

1. In the Face of Unalterable Statutory Deadlines, the USPTO Waives Fees for Petitions to Revive to Minimize the Adverse Impact of COVID-19.

2. See Subsection 12004(a) of the CARES Act.

3. See Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act (patents) and Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act (trademarks).

4. See Copyright Office Announces Temporary Changes to Certain Timing Provisions for Persons Affected by the COVID-19 Emergency.