The impact of Covid-19 on US patents and trademarks

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Yasmin Amin-Reimer
Knobbe Martens, Irvine, California 
yasmin.aminreimer@knobbe.com

Michael R Christensen
Knobbe Martens, Irvine, California
michael.christensen@knobbe.com

For the past few months, many people have been faced with a new normal as many jurisdictions across the globe have implemented stay-at-home orders. Government institutions have attempted to adapt certain functions in response to the Coronavirus. For example, both the United States Patent and Trademark Office (USPTO) and the US Court of Appeals for the Federal Circuit (CAFC) have modified their operations in response to the global pandemic.

US Patent and Trademark Office

As a consequence of the Coronavirus outbreak, a national emergency was declared in the United States on 13 March 2020. That same day the USPTO stated that examiner interviews, Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) oral hearings, and other similar in-person meetings that were scheduled to take place at the USPTO office on or after 13 March 2020, would be conducted remotely by video or phone. A few days later, the USPTO took further action and closed its offices to the public and the examiners and supervisors who normally work at the USPTO campus in Alexandria were transitioned to work from home. Since 13 March, the USPTO has announced a few different forms of relief available to patent and trademark applicants.^[1] The forms of relief can be divided into two broad categories: deadline extensions and fee waivers.

Deadline extensions

Days after the Coronavirus Aid, Relief, and Economic Security (CARES) Act was signed into law, the USPTO announced the availability of extensions to certain statutory deadlines related to patents, trademarks, and patent and trademark applications. The USPTO did not have the authority to extend these statutory deadlines until authorised by Congress.^[2] In Public Notices ('Notices') dated 31 March, the USPTO announced that certain patent and trademark-related documents and fees with deadlines between, and inclusive of, 27 March and 30 April 2020 were extendable 30 days from the initial deadline.^[3] On 28 April, the USPTO published updated Notices that extended the eligible deadline window to 31 May 2020 and qualified documents and fees will be considered timely if filed on or before 1 June 2020. However, unlike the relief granted by other patent offices around the globe, the extensions were not automatically granted but are conditioned on actually being affected by the Covid-19 outbreak. To qualify for an extension, the party seeking relief must submit the required filing or payment with a statement that the delay in filing or payment was due to the Covid-19 outbreak.^[4]

Not all deadlines are extendable. In addition, the deadlines for some of the eligible documents and fees can only be extended if the applicant is a small or micro entity (eg, reply to an Office notice issued during pre-examination processing and maintenance fees). The USPTO has defined the eligibility standard of ‘due to the COVID-19 outbreak’ as meaning that a practitioner, applicant, registrant, patent owner, petitioner, third-party requester, inventor or other person associated with the filing or fee was personally affected by the Covid-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.^[5]

The USPTO notes that ‘additional relief’ of a 30-day extension of time may be provided upon request to the PTAB, including for a patent owner’s preliminary response in a trial proceeding under 37 CFR 42.107 or 42.207, or any related responsive fillings, with a filing deadline between, and inclusive of, 27 March 2020 and 30 April 2020, if the delay was ‘due to the COVID-19 outbreak.’ Note that this additional PTAB relief was not extended further in the 28 April updated Patent Notice.

Fee waivers

The USPTO has also announced relief in the form of fee waivers. In particular, fees for petitions to revive abandoned patent/trademark applications, as well as cancelled/expired/lapsed patents or trademark registrations due to the effects of the Coronavirus outbreak, are waived upon request and subject to certain restrictions.^[6] To receive the fee waiver, the current guidelines require the applicant to file the required reply and a petition under 37 CFR 1.137(a) or the appropriate petition on the Trademark Electronic Application System (TEAS) as would normally be required for revival. In its 28 April updated Notices, the USPTO limited the eligible applications, patents, re-examination proceedings, cancelled/expired registrations to those that are abandoned (or terminated/cancelled/expired) on or before 31 May 2020.^[7] The petition must include a statement that the delay in filing or payment was due to the Covid-19 outbreak. The 28 April updated Notices also harmonised the standard for determining whether the delay in filing or payment was due to the Covid-19 outbreak for a fee waiver with the standard for deadline extensions.^[8]

Cautions regarding Covid-19 related relief

Although the FAQs posted by the USPTO indicate that the term ‘materially’ is intended to have its plain meaning of ‘substantially or considerably’ and is not intended to invoke other legal standards, such as the ‘material event’ standard used in financial reporting regulations,’ it is still unclear how broadly this interpretation will apply when defendants in litigation challenge the propriety of the relief granted to the IP right holder (eg, how much does an applicant’s cashflow need to be interrupted to qualify as ‘substantial or considerable’?).^[9] In addition, nothing in the USPTO Notices suggests that the statement, that the delay was unintentional, that is normally required in petitions to revive under 37 CFR 1.137(a), can be omitted. Thus, applicants and patentees should be cautious in making a decision to avail themselves of the Covid-19 relief. The amount of money required to defend against allegations of improper relief may far outweigh the amount of money that is deferred for a few weeks or months under the Covid-19 relief provisions. Other administrative details are left open as well. For example, who needs to sign the required statements? If a patent practitioner is required to sign for applicants that are juristic entities, what will it take for the patent practitioner to feel comfortable making the certification? Will the cost associated with the amount of work required to get comfortable be more than the amount of the cost deferred? And what effects, if any, will the delay have on patent term adjustment or on applications with special status (such as prioritised examination applications)?

Other USPTO reactions to Coronavirus

In addition to fee waivers and extension of deadlines, the USPTO has waived the original handwritten signature requirement for certain correspondences and certain payments by credit card.^[10] The USPTO has also launched a patent platform to facilitate connections between patent owners and potential licensees for technologies related to Covid-19, modified procedures to allow for use of the USPTO patent electronic filing systems for plant patent applications, and established a Covid-19 prioritised examination pilot programme for small and micro entities.^[11]

The Covid-19 prioritised examination pilot programme is probably the most beneficial to applicants and will hopefully provide additional incentive for innovation to combat the pandemic. The pilot programme includes waiving fees associated with prioritised examination and the USPTO aims to reach final disposition of applications in this pilot programme within six to 12 months from the date the prioritised status is granted. The six to 12-month timeframe is dependent on how timely an applicant responds to USPTO communications. The USPTO defines ‘final disposition’ as including the mailing of a notice of allowance, the mailing of a final Office Action, the filing of a request for continued examination (RCE), the abandonment of the application, or the filing of a Notice of Appeal, whichever is earlier. It will be interesting to observe how the allowance rate for applications in this pilot programme compares to the allowance rate for other prioritised examination programmes. Only patent applications that include claims covering a product or process related to Covid-19 are eligible. The product or process must be subject to an applicable US Food and Drug Administration (FDA) approval for Covid-19 use, which includes New Drug Applications (NDAs) and Premarket Approvals (PMAs). For this pilot programme, the USPTO will only accept a total of 500 requests, a number which the USPTO may increase or reduce.^[12]

There are four requirements to participate in the pilot programme.^[13] First, the request must be made with one of three listed filings:

1. the filing of a non-continuing original utility or plant non-provisional application;
2. the filing of an original utility or plant non-provisional application claiming the benefit of an earlier filing date or one prior non-provisional application or one prior international application designating the US; or
3. the filing of a request for continued examination of such plant or utility application or of a national stage of an international application.

Second, the applicant must certify that at least one of the pending claims covers a product or process related to Covid-19 and that such product or process is subject to an applicable FDA approval for Covid-19 use. Third, the request must include a certification that the applicant qualifies for either small or micro entity status when the request is made. Lastly, the request must include an executed application data sheet. Other features of the pilot programme can be found in the USPTO’s 8 May Notice, which (along with the other Covid-19-related Notices and information) can be accessed at www.uspto.gov/coronavirus.

US Court of Appeals for the Federal Circuit

The CAFC has also modified its operations in response to the global pandemic. Beginning 12 March 2020, the CAFC began removing cases from the calendar that were scheduled for argument in April 2020. For cases remaining on the calendar, cases that involved counsel of either party being located outside the National Capital area were going to be argued over the phone. If the counsel for both parties were local, the court intended to proceed with in-person arguments.^[14] Shortly after this announcement, the CAFC declared all cases scheduled for argument during April 2020 to be conducted over the phone.^[15] The CAFC has since expanded the applicable arguments to include arguments scheduled in May and June 2020^.[16] In addition to holding arguments over the phone, the CAFC has also restricted public access to the National Courts Building complex, suspended the filings of certain paper copies, established modified filing and service procedures for parties appearing pro se, and authorised changes to how the Clerk’s Office provides assistance to the public.^[17]

Conclusion

There is no question that we are in unprecedented times and that our governments are attempting to adapt to the ever-evolving situation. The regulation of intellectual property is not excluded. For example, the CAFC has decided that all in-person arguments will take place over the telephone, and the USPTO has attempted to provide relief in the form of fee waivers and deadline extensions. However, because some of the guidelines, definitions and procedural formalities are unclear, and because certifications must be made that may be subjected to scrutiny in future litigation, the actual long-term benefits or consequences of the relief are uncertain. It will be interesting to see if the temporary changes in litigation practice (eg before the CAFC) will prompt any permanent changes.

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