The rapid spread of COVID-19 brought about massive global events that led to a dizzying array of changes—including in intellectual property law, shaking up administrative procedures, court rules, and law firm best practices. As the legal community settles into the new reality brought about by the COVID-19 pandemic, we thought it would be helpful to outline a number of the changes and provide links to help readers stay updated.
US Patent and Trademark Office
Following a short period during which various on-site hearings, examiner interviews and other events had been cancelled on an ad hoc basis, the USPTO campus offices were closed to the public on March 16 like many other federal facilities. Much of the USPTO's business had already been conducted remotely, with many examiners and Patent Trial and Appeal Board judges "hoteling" or otherwise operating remotely for years, so this expansion of remote operation was not as disruptive as it otherwise might have been.
Initially, the USPTO expressed concern that it had limited power to help impacted parties deal with pandemic-related issues. It could readily do things such as relax "wet signature" requirements for certain procedures or payments and it took such actions quickly. On March 16, USPTO Director Andrei Iancu issued a notice that the USPTO considered the coronavirus outbreak to be "an 'extraordinary situation' within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners."
Accordingly, Director Iancu said the USPTO will waive petition fees needed to revive certain abandoned patent applications and treat inclusion of the March 16 notice as a representation that the delay in responding to an office action was due to the outbreak. While inclusion of the notice itself is sufficient for the fee waiver, the petition still needs to assert that the delay "was because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply." There are time limitations on this waiver, so action should still be taken as quickly as possible.
A similar fee waiver and process for trademark petitions (those set by waiver rather than statute) is provided for in the notice. The USPTO having been powerless to waive statutory requirements, the notice made clear that it did not grant waivers or extensions of dates or requirements set by statute.
The situation changed dramatically on March 27, when the Coronavirus Aid, Relief and Economic Security Act—or CARES Act—was signed into law. The Act gives Director Iancu the power to "toll, waive, adjust, or modify, any timing deadline established by [the patent and trademark statutes] or regulations promulgated thereunder."
Since March 27, the USPTO has taken additional actions including waiving original handwritten signature requirements and extending some deadlines (both statutory and regulatory) related to filing patents and trademarks, and paying associated fees. One issue not yet clear is whether the USPTO will address the pandemic's impact on continuous use of a trademark (once a registered mark has been in continuous use for five years, the registration can become incontestable upon filing of a corresponding declaration). It is likely that there are numerous such secondary issues that will play out over time to a greater or lesser degree based on how long the impacts of the pandemic persist.
On April 14, members of Congress asked the USPTO for a status update on its operations during the pandemic, including the extent to which trademark applications are declining and how the financial implications of that might impact future USPTO operations.
Other Patent/Trademark Offices
The European Patent Office issued a blanket extension of time limits expiring on or after March 15 to May 4, 2020 (an end date that could be extended further), and provided certain remedies for earlier time limits "for users located in areas directly affected by disruptions due to the COVID-19 outbreak." Likewise, oral proceedings in examination and opposition proceedings have been postponed until further notice, and the EPO has determined that it "may use additional means of communication (e.g., email)" for further notifications.
In Geneva, the World Intellectual Property Organization, which is responsible for administering the PCT System for international patent applications and the Madrid System for international trademark applications (among other things), announced that it is remaining operational through remote working arrangements for most WIPO personnel. That said, all events/meetings of WIPO through the end of May are either cancelled or postponed. Additionally, the WIPO has stopped sending paper PCT forms and will only send documents by email. The organization called for all PCT users to ensure that the International Bureau has an email address on file for their international applications. And on April 9, the International Bureau of WIPO announced that the current global pandemic is considered a "natural calamity" triggering the force majeure provision in its rules regarding delay in meeting PCT time limits. Not only will WIPO itself delay issuance of certain withdrawal notifications (e.g., for failure to pay fees) until May 31, it is recommending that other "receiving offices" (national/regional patent offices) do the same and for at least another month delay such notifications and waive PCT late payment fees.
More proactively, the Korean Intellectual Property Office has launched multiple initiatives to encourage innovative responses to the pandemic, including a fast-track examination for related technologies. Brazil implemented similar measures on April 7.
Notably, although the Italian Patent and Trademark Office announced that certificates and IP titles expiring between January 31 and April 15 will remain valid until June 15, trademark deadlines in Italy—one of the countries that has been hardest hit by COVID-19—have not been extended.
India is an important jurisdiction for many companies because of the need to obtain foreign filing licenses for patent applications having inventors who are Indian residents. The lockdown in India, which originally extended through April 14, was extended further in mid-April and those with upcoming deadlines need to communicate with their counsel early to ensure this requirement is addressed.
US Copyright Office
The facilities of the U.S. Copyright Office were also closed due to the pandemic, but like the USPTO, it promptly moved to teleworking for its staff. Electronic copyright registration applications are still being processed, and "special handling" for prompt action (e.g., as needed in advance of bringing a copyright infringement action in court) is promised with a five-day turnaround time. It appears that paper applications and paper deposit materials, however, will not be processed until such time as the Library of Congress building reopens for workers.
Also, as noted above, the new CARES Act gives the Register of Copyrights additional authority similar to that given to the Director of the USPTO.
Following the passage of the CARES Act, the acting Register extended copyright registration and other deadlines in situations where an applicant can demonstrate that the delay resulted from the COVID-19 pandemic. The Copyright Office has also implemented new filing options for copyright registration applications and other services as a result.
IP Matters in Federal and State Courts
There has been no uniform response to the pandemic by courts to date, and different jurisdictions have widely varying and quickly changing procedures. The sampling of court orders provided below shows a range of approaches. While these have undoubtedly helped dispel some confusion, it is also clear that the pandemic has had a real impact on the ability of the legal system to work. For example, an ongoing patent trial in the U.S. District Court for the Southern District of California between Finjan and ESET was declared a mistrial on March 16 in midstream, with the judge citing the pandemic as the cause. Nevertheless, the courts are doing what they can, as indicated below.
The U.S. Supreme Court provided a blanket 150-day extension for petitions for a writ of certiorari and noted that other extensions will be routinely granted by the Clerk. The Court also postponed oral arguments scheduled for the April session and determined to hear oral arguments by phone in May for certain cases. Additionally, the Court may postpone some cases even further, including ones significant for the technology industry.
The U.S. Court of Appeals for the Federal Circuit issued administrative orders on March 16 and March 20, restricting public access to the court and suspending the requirement for providing paper copies of documents submitted electronically. On March 27, the court issued guidance on alternatives to service via postal mail (given restrictions that might "inhibit access to postal mail") and in mid-April began hearing oral arguments remotely, reportedly with few glitches. Courts in other countries, such as the UK, have been doing the same.
The California Supreme Court suspended in-person oral arguments until further notice and expanded mandatory electronic filing rules. It also suspended all jury trials for 60 days and empowered trial courts to adopt other pandemic-related rule changes immediately (i.e., without the typical advance circulation). On the federal side, the U.S. District Court for the Northern District of California has consolidated all operations to the San Francisco Courthouse, operating almost entirely by electronic filings and video/teleconferenced hearings.
In New York, both federal (SDNY) and state trials were halted effective March 16, and a March 20 SDNY memo provided that civil case operations are to proceed at the discretion of each judge. The U.S. District Court for the Western District of Washington posted a new General Order on March 30 calling for the Seattle and Tacoma courthouses to remain closed and setting procedures for remote hearings in certain circumstances in criminal cases (as a reminder of relevance, certain copyright and trade secrets actions are criminal rather than civil in nature).
Numerous judges and veteran trial lawyers have been reported as saying that counsel need to carefully consider what they would otherwise label as "emergency" requests and the like, given the other stresses that courts and other public infrastructure facilities are being subjected to by the pandemic. And in a now-famous letter to the local bar, one Florida judge noted that lawyers had appeared before him in extremely inappropriate manners during video hearings: "One male lawyer appeared shirtless and one female attorney appeared still in bed, still under the covers."
One issue of ongoing concern is whether various companies and law firms were sufficiently prepared for mass remote working arrangements to ensure that their own, and their clients', trade secrets remain adequately protected.
Anecdotes abound regarding insecure networks, shared computers being used by a parent for company business one moment and by a teenager for homework or a remote class stream the next. Employees will undoubtedly want to work on the larger monitors and ergonomic keyboards of their home computers rather than the small screens and cramped keyboards of their work laptops, and will be using flash drives and personal email accounts for work materials as a result. Employers touting secure systems to their customers will unknowingly become more susceptible to phishing schemes, ransomware and other malware attacks, and those will now implicate greater exposure for company trade secrets. Added to that, concerns about hand washing, social distancing and family health can well distract employees from all of the measures they need to keep thinking about regarding trade secret protection, at the same time that the risk increases due to changes in the physical locations from which they are working. Speaking of which, physical security remains an important consideration—not only for the laptops that may be less secure from theft while at home, but also for any paper that attorneys may be printing at home and leaving on desks or dining room tables. To learn more about important COVID-19-related privacy considerations, including work-at-home practices, see this article. For additional insights, also see this video covering the top five challenges employers face as a result of the pandemic, as well as Fenwick's COVID-19 Resource Center.
Other Related Matters
Unsurprisingly, the pandemic has had wide-ranging impacts on IP. New legislation has been proposed throughout the world. Various private agreements have been made. There are those who are seeking to take advantage of the pandemic. The variety of IP repercussions has been reflected in numerous stories that have emerged over the past month or so. For example:
- Multiple sources have been tracking the growing numbers of trademark applications that are being filed worldwide for marks relating to the pandemic, including COVID-19; these are likely to be unsuccessful as generic or descriptive. Nonetheless, as of mid-April hundreds of such applications have been filed worldwide.
- Labrador Diagnostics (a subsidiary of Fortress Investment Group), the current owner of certain Theranos patents related to blood testing, brought an infringement complaint against coronavirus test developer bioMérieux SA only to change course soon thereafter and offer to make licenses freely available.
- After public outcry, on March 25, Gilead Sciences requested the U.S. Food and Drug Administration to rescind "the orphan drug designation it was granted for the investigational antiviral remdesivir for the treatment of COVID-19."
- U.S. Customs and Border Protection seized apparently counterfeit COVID-19 test kits at Los Angeles International Airport.
- Auto manufacturers and others rushing to create medical equipment such as face shields and ventilators must do so with little opportunity to consider possible third-party patent or other IP rights.
- Manufacturers of personal protection equipment such as facemasks have taken to bringing lawsuits under trademark law to stem alleged price gouging by some suppliers of their products. Other manufacturers are bringing trademark actions to address misleading representations being made to the public regarding test kits.
- While in 2001 there was widely reported consideration by the U.S. government to override Bayer's patent on the Anthrax antibiotic Cipro, no similar indication has been reported to date regarding this pandemic. Nonetheless, there has been speculation that the U.S. government may seize patents for COVID-19 drugs in an effort to control costs and make them widely accessible to all. Support for such moves could come from several statutory and treaty provisions such as the "march-in" rights provision of the Bayh-Dole Act for inventions supported by federal funding, 28 USC 1498 for non-funded innovations, and Article 31 of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement. A Senate bill, the Facilitating Innovation to Fight Coronavirus Act, has been promulgated with provisions that would broadly exempt steps to address the virus from various federal and state laws, apparently including patent laws.
- Outside the U.S., other countries have already taken steps in this general direction. Part 12 of Canada's new COVID-19 Emergency Response Act amends the country's Patent Act to authorize the government and anyone specified in a patent application "to make, construct, use and sell a patented invention to the extent necessary to respond to a public health emergency that is a matter of national concern." Israel's attorney general allowed a special compulsory license to be issued that permits generic versions of the patented Kaletra drug to be imported to treat COVID-19—the first compulsory license that the country has issued for a patented drug in more than two decades. As a result, AbbVie, the creator of Kaletra, has determined not to enforce its patents for the drug worldwide. Israel's decision and the process by which the country reached it has been met with criticism from some in the patent community, despite the extraordinary circumstances. In other countries, such as India, compulsory licensing has been part of patent law for years.
- Similar voluntary initiatives are underway by various groups. The Open COVID Pledge grants free, albeit temporary, access to IP rights for the sole purpose of addressing the pandemic. Various universities have agreed to rapid, royalty-free licensing of related technologies as well.
These examples illustrate the wide range of ripple effects of the pandemic on intellectual property. In addition to the momentous issues regarding how our legal system can continue to address issues of justice with such dramatic changes, smaller issues have arisen, too. The International Olympic Committee announced that although the upcoming Tokyo Games will begin in July 2021 rather than 2020, the "Tokyo 2020" name will continue to be used, obviating the need to scramble for new trademark registrations.
We hope the links provided here will help readers find the information they need as we all adjust to working in a manner very different than what we're used to. We will publish IP-related updates as they arise.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.