In the midst of the COVID-19 pandemic and social distancing measures, many intellectual property owners are grappling with efforts to address health issues while managing statutory deadlines. In an effort to provide some relief, the Coronavirus Aid, Relief, and Economic Security (CARES) Act of 2020 has given the Patent and Trademark Office (PTO) and the Register of Copyrights the much needed authority to ensure that important intellectual property rights are not lost due to the inability to meet certain renewal or other filing deadlines as a result of the COVID-19. This is particularly significant for trademark and patent owners who are uneasy about their ability to meet statutory deadlines when prosecuting or renewing trademark and patent applications, or making other filings or payments necessary to protect patent or trademark rights.
Without this action by Congress, the PTO would not otherwise be able to modify or extend any of these statutory deadlines, regardless of the reasons or hardship that triggered the inability to meet those deadlines. In the PTO’s March 16, 2020 Notice, the PTO noted that while it was able to waive certain fees for Petitions to Reinstate or Revive applications or registrations where patent or trademark owners have missed certain renewal or filing deadlines, it was not able to provide extensions to filing deadlines, as the Director lacked the statutory authority to do so. The CARES Act addresses this.
Temporary Authority of The PTO Director
Section 12004 of the CARES Act gives the Director of the PTO the authority to “toll, waive, adjust, or modify” statutory deadlines under the Patent Act and the Trademark Act during the Emergency Period, if the Director determines that the emergency “materially affects” the functioning of the PTO, prejudices the rights of trademark or patent applicants, registrants, owners or others appearing before the PTO, or prevents them from filing a document with the PTO or paying a PTO fee. The Emergency Period commenced upon passage of the CARES Act on March 27, 2020 and extends for 60 days following President Trump’s declaration of the end of the Coronavirus National Emergency.
The PTO Director must publish a public notice of any determinations under this provision, along his reasoning.
Temporary Authority of the Register of Copyrights
Copyrights are also addressed by the CARES Act. Much like Section 12004, Section 19011 grants the Register of Copyrights the ability to temporarily “toll, waive, adjust, or modify any timing provision” under copyright law, if the COVID-19 pandemic is found to generally disrupt or suspend the ordinary functioning of the copyright system.
The Register must also provide public notice of any actions taken pursuant to this provision.
The PTO Director and the Register of Copyrights wasted no time exercising their new found authority, each issuing notices of adjusted deadlines on March 31, 2020.
The PTO Director issued a 30 day extension on the time to file certain trademark-related documents or fees - including notice of oppositions, responses to Office actions, and renewal applications - which would have been due between, and inclusive of, March 27, 2020 and April 30, 2020. Delayed filings must be accompanied by a statement showing that delay in filing was due to circumstances created by COVID-19, such as office closures or cash flow interruptions. For more information, and a full list of the extended deadlines, please see the PTO Trademark Notice. For information on similar extensions applicable to patents, please the PTO Patent Notice.
The Register of Copyrights extended copyright registration and notices of termination deadlines to persons who show that they could not meet the deadline due to COVID-19. Affected copyright owners will receive an extension on the three-month window for registering a new work. This is especially significant because under the Copyright Act, statutory damages and attorney’s fees are generally available only if a work is registered before the infringement or within three months after first publication. Affected copyright owners who are prevented from serving or recording notices of termination within statutorily required time periods will also be given accommodations. The Register does not specify the length of these extensions. Presumably, any delay shown to be caused by the pandemic will suffice. For more information please see the Copyright webpage.
What does this mean for Intellectual Property Rights Holders?
COVID-19 has created a rapidly changing landscape and additional deadline adjustments, or guidance, may follow. Intellectual property rights owners are encouraged to watch the federal register and the PTO website to see if any additional modifications are enacted. We will be watching carefully and providing updates as they become available.