Global Overview Of IP Entity Responses To COVID-19 Crisis

IP entities throughout the world have responded to the COVID-19 pandemic by closing physical locations, suspending in-person meetings, and in some cases extending deadlines. The following report outlines COVID-19 related measures taken by certain courts, IP offices, and other government agencies in the United States and around the world that regularly impact our clients. We also provide information on signature requirements in various jurisdictions and IP offices, including whether and how electronic signatures may be used, available here. We will continue to update this report as the situation develops.

Latest Updates Related to COVID-19:

The U.S. Copyright Office is further extending emergency measures, including the extension of statutory deadlines, through July 9, 2021 for persons affected by the COVID-19 pandemic.

In the Northern District of Illinois, the Chief Judge released a notice that an employee from the Dirksen Courthouse, who was last present on May 3, 2021, has tested positive for COVID-19.

United States

Patent, Trademark, & Copyright Prosecution

USPTO

Updates available here

Practice Group Heads: Hogene Choi and Samir Bhavsar

April 14, 2021 –  The USPTO is accepting petitions for expedited resolution of ex parte appeals for COVID-related inventions at no cost.  The program is limited to 500 appeals and the goal is to issue a decision within six months of entry into the program.  More information is available here.  

April 5, 2021 –  The USPTO has announced a new category for its Patents for Humanity Program for patents which address the COVID-19 pandemic. The award allows applicants to received accelerated processing for one eligible matter (including utility patent applications and ex parte reexaminations).

December 31, 2020 –  At the USPTO, there were 251 patents in 2020 that were granted COVID-19 Prioritized Patent Examination resulting in 33 patents being allowed or granted.  The COVID-19 Prioritized Patent Examination program allows prioritized examination for patent applications relating to COVID-19 medical products and services.

October 26, 2020 –  The USPTO, along with the other Intellectual Property Offices operating in the G20 countries (IP20+) released a Joint Statement at the Global IP Challenges Forum organized (virtually) by the Saudi Authority for Intellectual Property.  Each of the Offices promises enhanced cooperation as well as sharing practices and operations, in part to support the ongoing battle against COVID-19 and in view of the increasing importance of intellectual property throughout the world. The full statement is available here.

October 13, 2020 –  USPTO Director Andrei Iancu will meet with representatives of the Australian IP Office and the Korean IP Office on October 15 in order to discuss the impact of COVID-19, cooperation in target areas, and WIPO Director General priorities. 

October 5, 2020 –  USPTO Director Andrei Iancu discussed how the USPTO has spurred innovation during the COVID-19 pandemic at the Eagle Forum Education and Legal Defense Fund Patent Event.  In particular, Director Iancu discussed the following initiatives:

• extending patent and trademark filing deadlines;
• making electronic filing available for almost all filings;
• providing the option for early publication of COVID-related applications;
• starting the Patents 4 Partnership platform that lists COVID-related patents/applications that are available for licensing;
• creating a COVID-19 Prioritized Examination Pilot Program for patents and trademarks for COVID-19 related applications.

September 25, 2020 –  USPTO Director Andrei Iancu discussed COVID-19 initiatives, such as encouraging the early disclosure of COVID-related applications in exchange for deferral of provisional application fees, at the Promoting Innovation in the Life Sciences conference.  Director Iancu's full speech is available here.

September 21, 2020 –  USPTO Director Andrei Iancu spoke about new programs offered by the USPTO to help applicants during the COVID-19 pandemic during his remarks at the 61st Series of Meetings of the Assemblies of the Member States of the WIPO.  Director Iancu's full speech is available here.  

September 18, 2020 –  USPTO Director Andrei Iancu has released a blog post outline the Office's seamless transition to all-virtual hearings in light of the COVID-19 pandemic. 

September 16, 2020 –  The USPTO has announced a deferred-fee provisional application pilot program for inventions that combat COVID-19.  Qualifying subject matter must concern a product or process related to COVID-19 and require FDA approval for COVID-19 use (regardless of whether such approval has been granted).  The Official Notice will be published here on September 17.

August 21, 2020 –  The 21st annual Invention-Co hosted by the USPTO will take place virtually in light of COVID-19.

July 23, 2020 –  Director Iancu addressed the National Association of Manufacturers on combating counterfeit products during a pandemic and highlighted the USPTO COVID-19 Response Resource Center, which includes, among other things, resources to help the public identify and report instances of fraud and counterfeiting relating to COVID-19, available here.  

June 30, 2020 – The USPTO has launched a website to answer applicants' questions regarding the Office's prioritized trademark examination of certain COVID-19 related products and services.  The website is available here.

June 29, 2020 –  The USPTO has extended the time to pay certain patent-related fees for small and micro entities from July 1 to September 30.  These fees include basic filing fees, issue fees, and maintenance fees.  In addition to this extension, other extensions of time and other relief remain available on a case-by-case basis.  The USPTO has also waived the fee for filing a petition for revival of an abandoned application, so long as the petition is accompanied by a statement explaining how the delay in filing or payment was due to the COVID-19 outbreak.  More information is available here. 

June 15, 2020 –  The USPTO will accept petitions to advance the initial examination of applications for marks used to identify qualifying COVID-19 medical products and services.  The fee for such petitions is also waived.  The full notice is available here.

June 12, 2020 –  The USPTO has provided addition relief and extended the time period for filing petitions for certain rights of priority or benefit and waived the associated petition fees:

• For Non-Provisional applications seeking the benefit of a provision application for which the twelve month period for filing ends between March 27 and July 30, when the petition is accompanied by a statement that the failure to timely file was due to the COVID-19 outbreak, the USPTO will:
  • Permit the two-month time period under 35 U.S.C. § 119(c) to run until the later of (1) July 31 or (2) the expiration of the two month period set forth in 35 U.S.C. § 119(c); and
  • Waive the petition fee.
• For International Applications, the USPTO will waive petition fees under 37 C.F.R. § 1.17(m) for a petition under 37 C.F.R. § 1.452 (to restore the right of priority) where the time period for filing ended between March 27 and July 30, provided that the application (1) is filed within the two-month period set forth in 37 C.F.R. § 1.452 and (2) is accompanied by a statement that failure to file was due to the COVID-19 outbreak.

June 3, 2020 –  The USPTO launched the COVID-19 Response Resource Center to provide stakeholders and other interested parties with improved access to USPTO initiatives, programs, and other helpful intellectual property related information regarding the COVID-19 outbreak. 

June 1, 2020 –  The USPTO and JPO published a joint message describing how their close cooperative relationship is vital to combating COVID-19 by supporting inventors around the world.  More information on the message is available here.  

May 29, 2020 –  The USPTO will allow filing of patent term extension applications via EFS until further notice.  The application must include: an appropriate document description; an email address; and the applicable fee.   

May 27, 2020 –  The USPTO has further extended the time to file certain patent and trademark related documents and fees for small and micro entities due between March 27 and June 30 to July 1. Similar relief will be available to large entities on a case by case basis, and requests may be submitted through a petition for an extension of time or a petition to revive. Further, the Office has extended its waiver of petition fees for filing a petition for revival of an application that became abandoned on or before June 20, if accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.  

May 18, 2020 –  The USPTO has provided a website offering further information regarding the COVID-19 Prioritized Examination Pilot Program, available here. 

May 8, 2020 –  The USPTO has announced a new COVID-19 Prioritized Examination Pilot Program for applications with claims covering a product or process that is subject to FDA approval for use in the prevention and/or treatment of COVID-19.  Under the Program, the USPTO will grant requests for prioritized examination to patent applicants that qualify for small or micro entity status without payment of the typical fees associated with other prioritized examination.  In addition, the USPTO will endeavor to reach final disposition of applications in this program within six months if applicants respond promptly to communications from the USPTO.

May 6, 2020 –  The USPTO will allow the filing of plant patent applications and correspondence electronically until further notice.  

May 5, 2020 –  The USPTO has released a form for applicants or patent owners to use when making the statement of delay due to the COVID-19 outbreak, available here. The statement is available to excuse certain deadlines, but not deadlines applicable to converting provisional applications.

May 4, 2020 –  The USPTO has launched its Patents 4 Partnerships platform, https://developer.uspto.gov/ipmarketplace/search/patents, to provide a repository of patents and published applications related to the COVID-19 pandemic.  

April 30, 2020 –  The USPTO and the EPO have released a joint statement promising to support innovation during the COVID-19 crisis, available here, https://www.uspto.gov/sites/default/files/documents/20200430_EPO-USPTO_JointStatement.pdf.  

April 29, 2020 –  The USPTO has further extended the time to file certain patent and trademark-related documents and to pay certain required fees, which otherwise would have been due between March 27  and May 31, to June 1.

April 20, 2020 –  Patent Center Beta is now available.  This tool allows for electronic filing and management of patent applications in a single unified interface. Patent Center allows for submission of the specification, claims, and abstract as a single DOCX document without the need to manually separate sections. 

April 6, 2020 –  The USPTO released a series of FAQs and accompanying answers relating to deadline extensions for patent and trademark applications.  See https://www.uspto.gov/patent/laws-and-regulations/cares-act-faqs for patent related deadlines and https://www.uspto.gov/trademark/laws-regulations/cares-act-faqs for trademark related deadlines. 

March 31, 2020 –  For patents, due dates between March 27 and April 30 will be extended 30 days from the initial date it was due, provided that the filing is accompanied by a statement that the delay was due to the COVID-19 outbreak, for the following items: reply to a pre-examination office action by a small or micro-entity; reply to an Office notice or action; issue fee; notice of appeal; appeal brief; reply brief; appeal forwarding fee, request for an oral hearing before the PTAB; amendment reopening prosecution in response to PTAB decision; maintenance fees for small or micro entities; request for rehearing of a PTAB decision.  The 12 month date to convert provisional applications, and the 30 month date to enter national stage, have not been altered. For trademarks the same extensions are available for: response to an Office Action; statement of use; notice of opposition; priority filing basis; affidavits of use or excusable nonuse; renewal application.

March 19, 2020 – Requirements for original handwritten signatures have been waived.

March 16, 2020 – The USPTO has notified applicants that it will be waiving all fees for petitions to revive patent and trademark applications where abandonment occurred due to circumstances associated with COVID-19. However, all statutory deadlines remain in place. For patents these include: deadlines for priority under 35 U.S.C. §§ 119, 120; co-pendency requirements; payments of issue fees; and reply statements by a requester in an ex parte reexamination. For trademarks these deadlines include: the 36-month deadline for filing a statement of use under 15 U.S.C. §1051; filing affidavits of continued use or excusable non-use; filing a renewal; filing an opposition or cancellation proceeding.

March 15, 2020 – The USPTO closed all offices to the public until further notice. Offices remain open for employees, contractors, and those with access badges.

PTAB

Updates available here

Practice Group Heads: Brian Oaks and Chad Walters

July 2, 2020 –  The PTAB has announced a new Fast-Track Appeals Pilot Program for certain ex parte appeals.  More information available here.

June 9, 2020 –  The PTAB updated a number of operational FAQs, available here.  

May 29, 2020 –  The PTAB has released a number of operational FAQs, available here. 

May 4, 2020 –  The USPTO answered 19 FAQs in response to the extension of deadlines under the Cares Act (available here).  

April 28, 2020 –  The USPTO has extended certain PTAB deadlines in accordance with the CARES Act.  Any filing with a deadline falling between March 27 and May 31 will be considered timely if filed on or before June 1.

April 6, 2020 –  The USPTO released a series of FAQs and accompanying answers, including some related to PTAB practice, available at https://www.uspto.gov/patent/laws-and-regulations/cares-act-faqs. 

March 31, 2020 –  Upon request to the USPTO affirming that a filing due between March 27 and April 30 was or may be delayed because of the COVID-19 outbreak, the PTAB shall provide a 30 day extension of time for: a requested for rehearing of a PTAB decision; a petition to the Chief Judge; or a patent owner preliminary response.  No additional relief is available before the TTAB, but requests for extensions or reopening of time may be made.  

March 13, 2020 – Until further notice, all PTAB and TTAB in-person meetings, including oral hearings, will be conducted remotely by video or telephone. Parties will receive instructions on a case-by-case basis.

U.S. Copyright Office

Updates Available here

Practice Group Head: Paul Reilly

May 10, 2021 -  The Office is further extending emergency measures, including the extension of statutory deadlines, through July 9, 2021 for persons affected by the COVID-19 pandemic.

More information is available here.

July 6, 2020 –  The Office announced that it is extending the deadline for the Board's initial determination in the Web V webcaster rate setting proceedings by up to 120 days, thus extending the deadline for the issuance of an initial determination from December 16, 2020, to April 15, 2021.  The Board requested the initial determination deadline be extended in light of a delay in the hearing date resulting from the closure of the Library of Congress.   

June 18, 2020 –  The Office has updated the timing requirements for serving Section 115 Notices of Intention and Statements of Account.  These adjustments do not affect substantive payment obligations, but only reflect specific timing adjustments. The following adjustments apply:

• Notice of Intention: The requirement for serving a NOI will be tolled during the period of disruption if the affected 1) entity has sent a clear alert to the copyright owner that the NOI cannot be served by paper and provides an option for allowing electronic delivery, 2) the notice is served within 30 days of the end of the disruption, and 3) complies with the general conditions set out below.
• Statements of Account and Royalty Payments: The requirement for monthly or annual SOA to be served will be tolled during the period of disruption if the affected entity 1) has sent a clear alert to the copyright owner that the SOA cannot be served by paper and provides an option for allowing electronic delivery , 2) serves the SOA within 30 days of the end of the disruption, 3) complies with the general conditions outline below, and 4) continues to make timely payments unless they show an inability to make the required payments.

The general conditions with which affected entities must comply are as follows:

• A certification that the failure to serve the NOI, SOA, or royalty payment was caused by the national emergency.
• The adjustment is only available to NOIs and SOAs that were previously sent in paper format before the national emergency.
• Entities using this adjustment must make contact information available, including an option to opt out of temporary electronic delivery.
• Entities using this adjustment must provide a means for copyright owners to opt in (temporarily) to electronically delivery and, separately, to direct deposit of payments.
• Entities using this adjustment must maintain a record of licensees by copyright owners for which these adjustments are used.
• Digital Music Providers must continue to deliver royalty payments to their chosen administrator.
• Meet the due diligence requirements of Section 115(d).

May 28, 2020 –  The Office issued a final rule on group registration of newsletters, effective June 29, that changes the publication frequency requirement from bi-weekly to bi-monthly. 

May 27, 2020 –  The Office now permits members of the public to submit requests for expedited processing ("special handling") of document recordation submissions by email.  

May 8, 2020 –  The Office has published an interim rule that amends its regulations regarding eligibility for the Office's special registration procedure for "secure tests."  Due to the COVID-19 emergency, certain tests normally administered at specified centers (as required by the prior regulations) are temporarily being administered remotely.  Under the interim rule, these tests will remain eligible for registration as secure tests, provided the administrator employs sufficient security measures.

May 1, 2020 –  The Office is extending deadlines until July 10. 

April 27, 2020 –  The Office has launched a limited pilot program for electronic recordation that will eventually replace the current paper-based process. 

April 9, 2020 –  The Office is extending the deadline until June 15 for public comment on those issues concerning the application of the statutory definition of publication to an online context identified in the Office's December 4, 2019 inquiry.

April  7, 2020 –  The Office has suspended requirements for physical submission of certain materials.  As a result, electronic submission is permitted for certain materials and services, including: filing notices of termination for recordation; requests for reconsideration of refusals to registers; and requests for removal of personally identifiable information from the public record. Further information and services affected can be found on the Copyright Office's website, https://www.copyright.gov/rulemaking/coronavirus-electronic-submissions/?loclr=eanco.   

April 6, 2020 –  The CARES Act includes a provision which allows the Register of Copyrights to "toll, waive, adjust or modify" filing deadlines in light of the pandemic, including extending registration deadlines.  The Copyright Office has issued a notice on emergency relief for Section 115 Paper Processes during the pandemic, temporarily adjusting certain timing provisions for Notices of Inquiry, Statements of Account, and potentially royalty payments as they relate to processing physical specimens.  More detail is available on the Copyright Office's website https://www.copyright.gov/coronavirus/.

March 31, 2020 –  No timing provisions are changed for submissions that are entirely electronic. For electronic submissions which require a physical deposit, applicant should include a statement that the applicant is unable to submit the physical deposit due to the COVID-19 outbreak, providing supporting evidence, in which case the three-month window for submission under section 412 will be tolled between March 13 and the date that the disruption ends. Sufficient evidence includes but is not limited to evidence that they are 1) subject to a stay-at-home order or 2) unable to access physical materials due to closure of the business where they are located. If applicant is unable to submit an application electronically or physically, they may provide a written statement describing this inability once the disruption is complete, and the three-month window under section 412 will be tolled between March 13 and the date that the disruption ends, with satisfactory evidence including 1) a statement that the applicant did not have access to a computer and/or the internet and 2) a statement that the applicant was prevented from accessing or sending required physical materials.  

March 26, 2020 –  All Library of Congress buildings are closed to the public until further notice. 

March 20, 2020 –  The Office will now send refusal letters via email instead of sending a physical copy through the mail.  The letter will be sent as a PDF attachment to the email address provided in the registration application.  Also included will be instructions as to how to respond to the Office in order to request reconsideration of the registration decision.  The Office will follow similar procedures for responding to requests for reconsideration.

March 18, 2020 – The Office has implemented a special handling procedure for registration of copyrighted works. In effect until the Library of Congress is reopened to the public, physical deposits and paper applications cannot be examined at this time. As such, all applicants should submit electronic applications and digital deposits through the electronic registration ("eCO") system. Where a physical deposit is required, applicants must still submit these, however, they should additionally submit an electronic deposit and a declaration that the two are identical.

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