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.
The CARES Act defines the emergency period to be the period starting from the date of the enactment of the legislation (March 27, 2020) and ending 60 days after termination of the COVID-19 national emergency.
Only when the director of the USPTO determines that a timing deadline meets one of three criteria can be it be waived:
- It materially affects the functioning of the USPTO.
- It prejudices the rights of applicants, registrants, patent owners or others appearing before the office.
- It prevents applicants, registrants, patent owners or others appearing before the office from filing a document or fee with the office.
Once the director determines such a waiver is appropriate, the USPTO has to publish a notice to implement the waiver.
Within 20 days of issuing the notice, the CARES Act also requires the USPTO to report to Congress for any waiver that adjusts due dates for more than 120 days. Furthermore, the USPTO’s authority to alter these due dates during the emergency period expires two years after the date of enactment.
Thus, once the CARES legislation is enacted, the USPTO will be able to alter certain deadlines for patent applicants and owners as well as trademark applicants and owners. We will continue monitoring the situation and provide an update when the USPTO issues a notice.
Until the USPTO issues such a notice, patent applicants and owners as well as trademark applicants and owners will need to comply with the timing deadlines. Furthermore, even once a deadline waiver granted by the CARES Act is implemented via a USPTO notice, patent and trademark applicants will need to be cognizant of certain deadline dates mandated by treaties, such as being able to claim priority under the Paris Convention in patent cases. It is unclear how foreign jurisdictions will handle such waivers. Accordingly, it may be prudent to abide by normal deadlines if foreign protection is ultimately being pursued.