US Patent and Trademark Office Issues FAQ on Temporary Extension of Due Date in Patent and Trademark Matters Authorized by CARES Act

As previously noted, on March 31, the US Patent and Trademark Office (USPTO) used its authority granted under the Coronavirus Aid, Relief, and Economic Security (CARES) Act to extend by 30 days due dates for certain patent and trademark matters having an original due date between March 27 and April 30. The USPTO now has posted answers to frequently asked questions (FAQs) it received in response to the notices granting the extension under the CARES Act in patent and trademark matters. According to the FAQs, the next-business-day rule applies if the 30-day extension ends on a weekend or a federal holiday.

1. Patent FAQ

The patent FAQ provides an extensive listing of filings and fees eligible for the 30-day extension in patent matters. However, the deadlines for filing a petition for an inter partes review, post-grant review and covered business method review are not extended.

The USPTO clarifies that the statement necessary to take advantage of the extension under the CARES Act does not need to be verified or provided in the form of an affidavit or declaration. While for prosecution-related matters the USPTO prefers the statements in a separate paper, the USPTO will accept the statement as part of the paper, but “it should be made in a conspicuous manner.” Continue Reading

3D Printing Comes of Age in the COVID-19 Crisis

Thanks to the global availability of additive manufacturing and 3D printing (3DP) and to the easy sharing of 3DP designs, a teenager in Iowa with a 3D printer can print face shields based on a design uploaded only minutes earlier by an engineer in France.  Indeed, in only a few weeks, the world has seen the 3DP community come together and quickly produce items – like face shields – that are desperately needed in the fight against COVID-19 and that would take weeks or months to manufacture using traditional approaches.  Medical equipment has been in such short supply that the CEO of Massachusetts General Hospital called on those with 3DP capability to help make masks for his hospital’s staff.

In case any doubt remained, these recent activities show that 3DP has advanced far beyond a plaything for home hobbyists and is now a globally distributed tool for quick-turnaround manufacture.  These recent activities also provide an opportunity to consider the 3DP community at large and also raise important legal considerations for those with 3DP capabilities. Continue Reading

US Patent and Trademark Office Uses Authority Granted Under CARES Act to Temporarily Extend Due Date for Certain Patent and Trademark Matters

The Coronavirus Aid, Relief, and Economic Security (CARES) Act gives the director of the U.S. Patent and Trademark Office (USPTO) the ability to manage due dates in patent and trademark matters if certain criteria are met. On March 31, the director of the USPTO issued a notice of waiver of patent-related timing deadlines (patent notice) and a notice of waiver of trademark-related timing deadlines (trademark notice). The notices indicate that certain due dates in patent and trademarks matters having an original due date between March 27 and April 30 are extended by 30 days.

I. Patent matters

A. Patent application and reexamination proceedings

For the following patent matters having due dates between and including March 27 and April 30, the USPTO will grant a 30-day extension from the initial due date if the filing includes a statement that the delay in the filing or payment was due to the COVID-19 outbreak: Continue Reading

Invoking Equity in the Time of COVID-19

Talk about bad timing. On Friday, March 6, 2020, non-practicing patent holding company Labrador Diagnostics formed in Delaware and obtained a patent portfolio directed to testing patients for the presences of coronavirus—when the United States had 282 cases. Three days later, Labrador Diagnostics decided to file a lawsuit seeking damages and injunctive relief against a practicing company that was in the process of securing emergency FDA approval for a COVID-19 test utilizing technology that Labrador Diagnostics alleged infringed two of its patents.

Specifically, on Monday, March 9, 2020, Labrador Diagnostics sued BioFire Diagnostics LLC and parent company bioMerieux S.A. in the United States District Court for the District of Delaware for the alleged infringement of U.S. Patent No. 8,283,155, titled “Point-of-Care Fluidic Systems and Uses Thereof,” and U.S. Patent No. 10,533,994, titled “Systems and Methods of Sample Processing and Fluid Control in a Fluidic System.”  By then, the novel coronavirus had infected 108,000 people around the world and killed more than 3,800. Continue Reading

The Coronavirus Aid, Relief, and Economic Security Act Grants the US Patent and Trademark Office the Authority to Manage Statutory Due Dates

As described in our previous alert, earlier this week the U.S. Patent and Trademark Office (USPTO) issued a notice waiving certain petition fees. In the notice, the USPTO cautioned that “[t]his notice does not grant waivers or extensions of dates or requirements set by statute.”

The Coronavirus Aid, Relief, and Economic Security (CARES) Act, H.R. 748 116th Cong. (2020), gives the USPTO the authority during the emergency period to “toll, waive, adjust, or modify any timing deadline established” in the Patent Act or Trademark Act, including any regulations implementing these timing deadlines. Continue Reading

Patent Portfolio Considerations During Times of Financial Uncertainty

In response to the economic effects of the COVID-19 pandemic, many companies are reevaluating their expenditures. Some may look to their intellectual property portfolios as a place to cut costs. But any decisions to scale back on investments in patents should be driven by business considerations and not by panic. In order for a well-informed decision to be made, the available options must be considered.

Regarding patent applications that have not yet been filed or even drafted, the question may be whether the costs to prepare the patent application, file the application and eventually “prosecute”[1] the application are worth it. If a potential applicant is on the fence, it may be best to file a provisional patent application. The cost of filing a provisional application often is considerably less than the cost of filing a non-provisional application. While a provisional application is neither published nor examined by the U.S. Patent and Trademark Office (USPTO) for patentability, it serves as a placeholder to establish a priority date for the claimed invention.

Even during a pandemic such as the one we are currently facing, innovation will continue and may even accelerate in certain fields, such as cloud computing, e-commerce, streaming and medical technology. As large companies may be more immune to the economic impacts of the pandemic, putting a stake in the ground of the IP landscape and establishing an early priority date may be one of the most effective ways for small players to protect the fruits of their R&D. Continue Reading

Really? Someone thinks I HEART COVID-19 should be awarded a US trademark registration?

Aside from I HEART COVID-19 (stylized) being an offensive slogan given the hundreds of thousands of people affected throughout the world by the coronavirus pandemic, the U.S. trademark application for this slogan, filed by an entity called Bad Covid, LLC, is likely to fail like most of the other opportunistic trademark filings for terms related to the pandemic.

As of March 26, there were no less than two dozen trademark applications filed with the U.S. Patent and Trademark Offices (USPTO) for marks that include the term COVID and at least 32 applications filed for marks that include the term CORONAVIRUS. The vast majority of the applications are for T-shirts or other forms of clothing and include such “tasteful” slogans as Class of Covid-19, FXCK COVID-19, COVID KIDS, CORONAVIRUS: MADE IN CHINA and CORONAVIRUS INFECTED. There are also several new applications filed for marks that include “social distancing,” such as SOCIAL DISTANCE FITNESS. Not surprisingly, there are even two new competing pending applications for QUARANTINI and one new application for QUARANTEEN. Continue Reading

Breaking Down the Briefing in Google v. Oracle: Respondent’s Brief

A decadelong dispute between Google and Oracle regarding Google’s alleged infringement of Oracle’s copyright in its application programming interface (API) will culminate in a Supreme Court decision that will have lasting effects on the copyrightability of software. This post, which summarizes Oracle’s opening brief, is the second installment in a series analyzing the briefing and issues in Google v. Oracle. A breakdown of Google’s brief is available here.

Oracle asserts that Google infringed Oracle’s copyright by copying both 11,330 lines of Java SE and its “elaborate organization.” See Brief for Petitioner at 5, Google LLC v. Oracle Am., Inc. (No. 18-956), available here. Oracle calls Java SE’s creation a result of “a creative choice that could have been written countless ways” and “an art, not a science” worthy of copyright protection. Id. at 6, 7, 16. Oracle rebuts both of Google’s theories that Google is permitted to copy Oracle’s Java SE code: First, Oracle argues that the declaring code and organization are copyrightable works. Id. at 16. Second, Oracle argues that Google’s use is commercial in nature and therefore not protected under the fair use doctrine. Id. at 17. The first issue has greater implications for the copyrightability of software. Continue Reading

U.S. Supreme Court Rules That Sovereign Immunity Shields States From Copyright Suits

On March 23, the U.S. Supreme Court issued its first of three anticipated copyright decisions for this term – Allen v. Cooper – in which the Court unanimously held that states are shielded from copyright suits by sovereign immunity. Thus, the plaintiff filmmaker did not prevail in his copyright infringement suit against the state of North Carolina.

In 2015, photographer and filmmaker Frederick Allen and his video company, Nautilus Productions, LLC, sued North Carolina and various state officials, including Gov. Roy Cooper III, over the state’s use of his copyrighted footage of the infamous pirate Blackbeard’s shipwreck of the Queen Anne’s Revenge off the coast of North Carolina in the early 1700’s.

Allen relied on the Copyright Remedy Clarification Act, 17 U.S.C. § 501(a) (CRCA), passed in 1990, that allowed individuals to sue states for copyright violations. The issue before the district court, Fourth Circuit, and ultimately the Supreme Court, was the constitutionality of the CRCA and whether Congress had lawfully abrogated the States’ sovereign immunity under the Eleventh Amendment when it enacted the CRCA. The district court held the CRCA was lawfully enacted, finding that Congress clearly stated its intent to abrogate state sovereign immunity and a proper constitutional basis for that abrogation, but the Fourth Circuit disagreed, and the Supreme Court affirmed this decision, holding that Congress’ power to provide copyright protection did not authorize it to abrogate the States’ Eleventh Amendmnent sovereign immunity from copyright infringement suits in the CRCA. Continue Reading

US Government Cracks Down on Counterfeits in 2020

Combating counterfeit goods has become a serious focus of the U.S. government in 2020. This article is the first in an ongoing series about the actions being taken in this fight and the implications for e-commerce platforms and companies seeking to protect their brands from the threat of counterfeit goods.

The U.S. Department of Homeland Security (DHS) recently issued a report to address the rapidly growing e-commerce marketplaces that created new channels for the trafficking of counterfeit and pirated goods. Counterfeit goods are no longer restricted to street corners and back-alley shops; they are now just a click away. E-commerce platforms and online third-party marketplaces created new, easy and profitable channels for trafficking counterfeit goods. Continue Reading