COVID-19 IP Takeaways, Deadlines & FAQs

Supplement to IP Deadline Extensions During COVID-19 (Barack Ferrazzano Client Alert, April 2020)

Key Takeaways

• Be vigilant. While this limited relief is welcome, we caution that currently the only deadlines eligible for relief are for a finite period of time. Furthermore, because a statement regarding the cause of the delay must be filed, we strongly recommend retaining evidence of the reason for delay. Also, the ability to seek a one-month delay does not displace other means of obtaining USPTO deadline relief, such as paying extension fees where available. We encourage applicants who have the means to pay extension fees rather than make a statement on the record regarding the cause of the delay, as such statements may come under scrutiny during litigation. 
• Try to meet existing deadlines. Because the COVID-19 crisis is ongoing and circumstances are continuously changing for intellectual property owners as well as the federal government – including the USPTO and the Copyright Office, it is a good idea to regard the foregoing information as advisory only, and to determine on a case-by-case basis whether the exact details of your particular situation and relevant deadlines are impacted by the latest updates to the procedures and regulations of each office.
• Check around the world. The current pandemic is, by definition, a global one, and it is affecting patent and trademark offices around the world. Countries are in varying states of lockdown, including their patent and trademark offices. Some offices are completely closed and deferring all filings and deadlines, others are open, and some, such as the U.S., are a mix regarding how deadlines fall and to what they relate. This creates an issue, considering that in most scenarios, a business will want to file a trademark internationally before public disclosure (beginning a marketing campaign, revealing a product in a presentation, etc.). In the U.S., the timing for filing is within a year of the disclosure, so there is some flexibility at home. Nevertheless, this is a confusing time. If business owners want to have global protection for their intellectual property (IP), they should be consulting with their counsel. With different rules that are constantly changing around the world, these professionals will be in the best position to coordinate with foreign associates.
• Help is available, but don’t make assumptions. Filing an application for a copyright or trademark and the fees and costs related to maintaining this intellectual property can be expensive for a small business. That problem is only compounded if the current pandemic has disrupted a company’s cash flow or operations. The CARES Act provides relief by extending due dates for a number of copyright and trademark deadlines after an application is filed, as well as certain trial and appeal board action items. Depending on how the COVID-19 crisis develops, these extensions could apply to future due dates, but anyone with pending due dates beyond April 30 should prepare themselves to meet those deadlines. In general, owners cannot assume all due dates for all actions are extended, though some missed deadlines may be recused if a late fee is paid. For trademarks, there is also a grace period if a deadline is missed, though that doesn’t apply to all situations.

Statement to Obtain U.S. Extension

What is an acceptable statement of COVID-19 (coronavirus) impact to obtain a U.S. extension? Director Iancu’s notices of March 31, 2020 identify situations warranting an extension. A delay is “due to the COVID-19 outbreak” for the purposes of an extension if a practitioner, applicant, trademark registrant, patent owner, 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.

The statement of COVID-19 impact accompanies the response or fee when submitted. The U.S. Patent and Trademark Office (USPTO) prefers that the statement is in a separate paper from the response or otherwise made in a conspicuous manner. No guidance is provided regarding the details or content required for such a statement. Furthermore, the USPTO decides whether to grant the extension only after the delay has already occurred. Thus, applicants considering use of a COVID-19-related extension should carefully consider the absolute necessity of the extension and the ramification if the extension is not approved, whether by the USPTO in the near future or by a judge or jury in the distant future.

Frequently Asked Questions

How do I take advantage of the 30-day extension of time for certain Trademark- and TTAB-related deadlines?

If an eligible document or fee was or is due between (and inclusive of) March 27, 2020 and April 30, 2020, the filing will be considered timely if made within 30 days of the original due date, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Does the statement that the delay in filing or payment was due to the COVID-19 outbreak need to be verified or in the form of a declaration or affidavit?

No, the statement need not be verified or provided in affidavit or declaration form. The statement may be provided in the relevant TEAS or ESTTA form or included in the document being filed.

What is the standard for determining whether the delay in filing or payment was due to the COVID-19 outbreak?

A delay in filing or payment is due to the COVID-19 outbreak if the outbreak materially interfered with timely filing or payment.

What circumstances qualify as materially interfering with timely filing or payment?

Circumstances that qualify as materially interfering with timely filing or payment include, without limitation, office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances.

Who must have been affected in order to take advantage of the 30-day extension of time?

The person affected by the outbreak may be a practitioner, applicant, registrant, or other person associated with the filing or fee.

How do I determine my new trademark deadline?

You can determine your new filing deadline by adding 30 calendar days to your original filing deadline if the original due date was between (and inclusive of) March 27, 2020, and April 30, 2020. If the new deadline falls on a Saturday, Sunday, or a federal holiday, your new filing deadline will be the next business day. 

Will the USPTO extend the CARES Act relief beyond April 30, 2020?

The USPTO will continue to evaluate the evolving situation around COVID-19 and the impact on the USPTO’s operations and stakeholders. If the USPTO extends the CARES Act relief, the USPTO will provide timely notice.

What trademark filings are eligible for the 30-day extension of time if the delay was due to the COVID-19 outbreak?

The following filings are eligible for the 30-day extension of time:

• Response to an Office action, including a notice of appeal from a final refusal;
• Statement of use or request for extension of time to file a statement of use;
• Priority filing basis under Sections 44 or 66;
• Transformation of an extension of protection to the United States into a U.S. application;
• Affidavit of use or excusable nonuse; or
• Renewal application.

Has the USPTO provided any other relief for trademark filers in view of the COVID-19 outbreak?

Yes. For trademark applications that were abandoned and registrations that were canceled/expired due to an inability to timely respond to a trademark-related Office communication as a result of the effects of the COVID-19 outbreak, the USPTO waived the petition fee to revive the abandoned application or reinstate the canceled/expired registration.

In all cases, the petition must include a statement explaining how the failure to respond to the Office communication was due to the COVID-19 outbreak. The petition must be filed not later than two months after the issue date of the notice of abandonment or cancellation. If the applicant or registrant did not receive a notice of abandonment or cancellation, the petition must be filed not later than six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is canceled/expired.

Trademark Trial and Appeal Board (TTAB) Deadlines

The following TTAB filings are eligible for the 30-day extension of time:

• A notice of appeal from a final refusal under 15 U.S.C. § 1062(b) and 37 C.F.R. § 2.62(a); or
• A notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a).

For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, a party can make a request (in ex parte appeals) or file a motion (for inter partes cases, e.g., opposition/cancellation) for an extension or reopening of time, as appropriate.

Copyrights

The U.S. Copyright Office has exercised its authority under the CARES Act in an attempt to blunt the adverse effects of the COVID-19 pandemic on visual artists, musicians, and other content creators—along with the companies that employ them—by seeking to protect revenue streams affected by stay-at-home orders. Specifically, the Copyright Office has temporarily extended certain deadlines for those who cannot access physical materials or mail services. Creators should take advantage of the new procedure in order to help secure continued revenue in an uncertain economic climate where online fraud and misappropriation continue unabated.

Statutory Damages

The Copyright Act is one of a handful of federal statutes that provides for statutory damages, ranging between $750 and $30,000 per work infringed, or up to $150,000 per work in cases of willful infringement. (The Act also allows for actual damages, although those often are difficult or disproportionately expensive to prove.) A federal copyright registration is not necessary to claim copyright ownership in original works. But registration of a work within three months of its first publication is required to sue for infringement and recover statutory damages.

The three-month period is calculated from the date of first publication to the “effective date” of registration. The “effective date” is the date the Copyright Office receives the application to register the work, along with the filing fee, and the “deposit” material, or a copy of the work. Typically, an applicant will submit the deposit material “virtually,” i.e., online. But the Copyright Office requires physical materials in some cases, so applicants need to arrange for delivery of those to the Copyright Office.

Under the new allowance, an applicant may now upload a statement certifying under penalty of perjury that he was unable to submit a physical deposit and would have done so, but for the pandemic. The application requires supporting evidence, such as a sworn statement that the applicant is subject to a stay-at-home order or was unable to access the required physical materials. The three-month window would then be tolled for at least 60 days, or until the “date the disruption has ended.” Applicants have 30 additional days beyond the end of the disruption to avail themselves of this protection. Applicants who did not have access to a computer or the internet during the pandemic will be able to submit statements after the end of the disruption. Finally, in the case of urgent pending litigation or other good cause, applications to register can be expedited via “special handling.”

Reclamation & Termination Rights

Another COVID-19 related allowance pertains to the reclamation and termination of copyright interests. In certain circumstances where an author previously transferred rights to another party, the author can reclaim those rights, or terminate the other party’s rights, within a specific five-year time window. These termination rights are particularly valuable to creators who may need the royalty stream from their published works, especially now.

Before terminating another’s rights, an author must serve the other party with notice of termination no later than two years and no earlier than 10 years before the date of intended termination. For example, if a songwriter has until 2022 to terminate the rights assigned to a publisher, she must serve notice to the publisher in 2020. The notice of termination must also be recorded with the Copyright Office before termination.

Under the new guidance, where (i) the five-year termination window is closing or (ii) the deadline to record the termination notice with the Copyright Office is imminent, the Copyright Office will provide authors relief similar to that pertaining to the submission of deposit material. Specifically, authors must take the requisite action within 30 days after the “disruption” ends. They also must file a statement and supporting evidence, akin to that required in connection with the submission of deposit material, explaining that the delay was due to COVID-19.

USCO Extensions On Physical Deposits

For new electronically filed applications filed on or after April 2 that require submission of a “best edition” physical copy, the applicant may submit an electronic copy of the edition in addition to mailing the physical copies and submit a declaration that the electronic copy is identical. This will permit USCO staff (who are currently working remotely) to process the application. If no electronic copy is filed, examination may be delayed but the application date will still be the effective date of registration. This relief does not apply to paper-filed applications.

Second, if for some reason the physical copies cannot be mailed at all, the applicant may file a statement that the physical copies could not be mailed and obtain an extension of the deadline for providing the physical copies until 30 days after the disruption causing the delay has ended. The statement must include “satisfactory evidence” of the inability to mail physical copies, including but not limited to (i) “a statement that the applicant is subject to a stay-at-home order issued by a state or local government;” or (ii) "a statement that the applicant is unable to access required physical materials due to closure of the business where they are located.”

Extensions are also provided relating to serving and recording notices of termination of transfers of copyrights. Because this is a complex procedure, we encourage you to contact a Barack Ferrazzano IP Group attorney if you believe this may apply to you.