COVID-19 Intellectual Property

Almost all intellectual property offices throughout the world have used an online filing system for some time, which allows IP owners and attorneys the ability to file the required prosecution and maintenance documents online. In addition, many government intellectual property offices, including the United States Patent and Trademark Office (“USPTO”) have been set up to allow employees to work remotely. Therefore, while the physical offices of intellectual property government agencies are likely closed or are operating with minimal on-site staff, we do not foresee any major disruptions.

Noting the potential for some disruption, however, many intellectual property offices around the world, including the United States, have either suspended or extended various deadlines for various intellectual property filings.

UNITED STATES – EXTENSION OF TRADEMARK DEADLINES

Specifically, on March 31, 2020, the United States Patent and Trademark Office (“USPTO”) issued a notice extending certain deadlines for filing certain documents in relation to pending trademark applications or registered trademarks.

Certain trademark filings that were or are due between March 27, 2020 and April 30, 2020 will be extended by 30 days, provided that the failure to timely file the required document or make the required payment was due to the COVID-19 outbreak and is accompanied by a statement to that effect. The USPTO notice specifies that a COVID-19 related delay means that “a practitioner, applicant, registrant, or other person associated with the filing 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 the timely filing or payment.”

The 30-day extension will apply to the following trademark-related filings only:

• Response to an Office Action
• Statement of Use or extension request after the issuance of a Notice of Allowance
• Notice of Opposition or request for extension of time to file a Notice of Opposition
• Priority filing basis
• Transformation of an extension of protection to the U.S. into a U.S. national application under the Madrid Protocol
• Section 8 or 71 Affidavit of Use
• Renewal application

No other deadlines have been extended by the USPTO, and specifically, other than the extension of the Notice of Opposition deadline, no deadlines in the Trademark Trial and Appeal Board have been extended.

In addition to the USPTO, other countries have also extended or suspended certain trademark deadlines, including Canada, the European Union, India, Mexico and Korea.

UNITED STATES - EXTENSION OF COPYRIGHT DEADLINES

On March 31, 2020, the United States Copyright Office extended certain deadlines as well. There are two main areas in which copyright related deadlines may be important – registration timing for certain statutory remedies and timing for serving and recording notices of termination.

Timing of Registration for Statutory Remedies

With regard to the registration timing for statutory remedies, a copyright owner may only recover statutory remedies and attorneys’ fees in an infringement litigation if the work was registered prior to infringement or within three months after the work was first published. The effective date of registration is when the Copyright Office receives the application, deposit material and filing fee. The Copyright Office recognizes that there are three types of copyright filings: electronic filings of both the application and the deposit material; electronic filings of the application but not the deposit material; and both the application and deposit material are submitted non-electronically.

• If an applicant is able to submit an application and the deposit material electronically – the deadlines are not changed
• If an applicant is unable to submit BOTH the application and the deposit material electronically, the three-month window will be tolled between March 13, 2020 and the date that the disruption due to the COVID-19 pandemic ends

In order for an applicant to take advantage of the deadline tolling, the applicant will need to submit satisfactory evidence, along with a declaration under penalty of perjury stating that the applicant would have submitted the required application and/or deposit material in a timely manner but was prevented from doing so because of the COVID-19 national emergency. Satisfactory evidence may consist of, but is not limited to, a statement that:

• The applicant was subject to a stay-at-home order; or
• The applicant was unable to access the required physical materials needed for the deposit due to the closure of the business where such materials are located; or
• The applicant did not have access to a computer and/or the Internet

Timing of Serving and Recording Notices of Termination

Under the Copyright Act, individual authors may reclaim copyright interests previously transferred in certain circumstances. If applicable, the Copyright Act allows an author to terminate a copyright transfer within a five-year window, provided that the author serves notice on the transferee between two and ten years before the chosen termination date. After such service, the author must record the notice with the Copyright Office. Where an author must take an applicable action with regard to the termination during the period of time effected by the current national emergency, the Copyright Office has provided various extensions of time. In order to take advantage of these extensions, the author must provide a statement, under penalty of perjury, that the author was prevented from taking certain actions due to the COVID-19 outbreak together with satisfactory evidence as discussed above.

We are monitoring the situation around the world and will post any further updates as we become aware of them.