The unprecedented $2.2 trillion Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”), which was enacted on March 27, 2020, includes Section provisions which grant the Director of the United States Patent and Trademark Office (“USPTO”) and the Register of Copyrights discretionary emergency authority to modify statutory deadlines during the coronavirus emergency. Last week, both the Director of the USPTO and the Register of Copyrights announced that they were invoking their emergency authority provided by the CARES Act to extend certain deadlines and modify other requirements to provide additional relief for those affected by the ongoing coronavirus emergency.
In accordance with Section 12004 of the CARES Act, the Director of the USPTO has determined that the coronavirus emergency has prejudiced the rights of applicants, patent and trademark owners, or others appearing before the USPTO in patent and trademark related matters and has prevented those persons from filing a document or fee with the USPTO. The Director specifically noted that the spread of the virus has significantly disrupted operations of numerous businesses, law firms, and inventors, and that small businesses and independent inventors may face particular difficulties. Accordingly, the Director has invoked his emergency authority under the CARES Act to extend certain patent- and trademark-related deadlines for persons who are unable to meet the original deadline due to the COVID-19 outbreak.
Specifically, with regard to patents, the USPTO is granting an automatic 30-day extension for certain filings whose initial due dates are between March 27, 2020 and April 30, 2020, if the delay in filing is due to the COVID-19 outbreak. The filings which are extended by 30 days include:
Notably, for items (i) and (xi) above, the extension only applies to small and micro entities. Persons who do not qualify for small or micro entity status must still comply within the initial deadline for these filings.
The USPTO is also providing a 30-day extension for the following patent-related filings at the PTAB which have initial due dates between March 27, 2020 and April 30, 2020, upon request, if the requestor affirms that filing within the original deadline was or may be delayed due to the COVID-19 outbreak:
With regard to trademarks, the USPTO is granting an automatic 30-day extension for the following types of filings, if the initial due dates for the filings are between March 27, 2020 and April 30, 2020, and if the delay in filing is due to the COVID-19 outbreak:
As a catch-all for all other filings before the PTAB and the Trademark Trial and Appeal Board (TTAB) not specifically covered by the USPTO notices, the USPTO will consider individual requests for extension or reopening of time in situations where the COVID-19 outbreak has prevented or interfered with the filing.
All filings identified by the USPTO which are subject to the 30-day extension must be accompanied by a statement that the delay in filing was due to the COVID-19 outbreak. A delay in filing will be considered by the USPTO to be due to the COVID-19 outbreak if a practitioner, applicant, patent owner, petitioner, third party requester, inventor, trademark registrant, or other person associated with the filing 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.
The official USPTO patent-related notice is available here. The official USPTO trademark-related notice is available here.
In accordance with 17 U.S.C. § 710 (which was added to the Copyright Act by Section 19011 of the CARES Act), the Register of Copyrights has determined that the coronavirus emergency has generally disrupted the ordinary functioning of the copyright system with respect to the ability of certain persons to comply with statutory deadlines pertaining to copyright registration and the service and recordation of notices of termination. Accordingly, the Register of Copyrights has invoked her authority under Section 710 to adjust certain timing provisions in specific cases where compliance is not possible due to the coronavirus emergency.
With regard to copyright registrations, the Register has modified certain requirements to provide relief to copyright applicants in limited circumstances. Section 412 of the Copyright Act generally allows for a copyright owner to be eligible to be awarded statutory damages in an infringement action so long as the work is registered prior to the infringement or within three months of the work’s first publication.
The Register has recognized that the COVID-19 emergency may prevent some copyright owners of published works from being able to complete and submit copyright applications in a timely manner due to a lack of access to physical documents or the inability to deliver materials to a mail carrier. Accordingly, for applicants who are seeking to register their works within three months of the work’s first publication in accordance with Section 412, the Register has modified the timing provision for such applications as follows:
The Register has also modified certain timing requirements to provide relief for certain individual authors who seek to reclaim copyright interests previously transferred to another party under 17 U.S.C. §§ 203 and 304(c). In general, under Sections 203 and 304(c), in order to reclaim the interests, the individual author must terminate the prior transfer within a specified five-year window and the author must serve notice of the termination on the transferee within a period between two and ten years prior to the chosen date of termination. The termination notice must also be recorded with the Copyright Office before the date of termination.
The Register has recognized that the COVID-19 emergency may affect an author’s ability to serve notices of termination within the statutorily required time period and to submit the notices to the Copyright Office for recordation within the time period set forth by the Copyright Office. Accordingly, for individual authors who seek to reclaim copyright interests under Sections 203 and 304(c), the Register has modified the timing provisions for serving and recording notices of termination as follows:
For copyright applications and transfer terminations that fall within the COVID-19 relief measures discussed above, the Copyright Office will annotate the registration and public records appropriately.
The COVID-19 relief measures will be in effect for a period of sixty days (i.e., through May 30, 2020), unless the Register issues an announcement shortening or extending the period.
The official notice from the Copyright Office is available here.
For additional information about the relief measures outlined in this article and further coronavirus developments relating to intellectual property rights, please contact Michael Golenson.
 For additional information about the emergency authority granted to the Director of the USPTO and the Register of Copyrights under the CARES Act, please refer to Masuda Funai’s article titled "COVID-19 Emergency Relief Measures Relating to Intellectual Property Rights", which was published on March 31, 2020, and can be accessed here.
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