By: Katie Rubino
Recently, the United States Patent and Trademark Office (USPTO) released a notice concerning procedural and operational changes due to the coronavirus outbreak.[i] Perhaps most noteworthy, the USPTO announced the extension of deadlines for certain patent and trademark-related matters. These extensions were made possible due to the passage of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), signed into law by President Trump on March 27th.[ii]
The CARES Act provides $2 trillion in relief in response to the pandemic, this relief includes economic assistance to businesses and American citizens affected by the coronavirus outbreak.[iii] Concerning the USPTO, section 12004 of the CARES Act, allows the current Director of the USPTO, Andrei Iancu, to “toll, waive, adjust or modify, any timing deadline established by title 35, United States Code, the Trademark Act, section 18 of the Leahy-Smith American Invents Act, or regulations promulgated thereunder.”[iv]
Prior to implementation of the CARES Act, the USPTO was restricted in its legal authority to extend deadlines determined by statute. However, the USPTO has determined that the coronavirus outbreak materially affects the functioning of the USPTO along with the rights of inventors and applicants alike. As such, the USPTO has implemented the extension of certain deadlines.
Under this new guidance, the due date for certain proceedings will be extended 30 days from the initial date from which it was due, provided that the filing be accompanied with a statement explaining that the delay was due to the coronavirus.[v] Reasons for such a delay can include a practitioner, applicant, patent owner, inventor, and the like being affected by office closures, interruptions in cash flow, travel delays, personal or family illness etc., due to COVID-19.[vi] In addition, the relevant patent or trademark matter must be due between, and inclusive of, March 27, 2020, and April 30, 2020.[vii]
Some patent-related proceedings covered by these extended deadlines include replying to a pre-examination office action notice, replaying to an office action, payment of an issue fee, filing a notice of appeal, and requesting an oral hearing before the Patent Trial and Appeal Board (PTAB).[viii] In addition, the USPTO is waiving fees for petitions to revive patent applications that are held abandoned or reexamination prosecution that has been terminated or limited due to the effects of the coronavirus.[ix] Normally, petitions to revive patent applications can cost upwards of $2000.
Another change the USPTO has announced in response to the coronavirus outbreak is that all USPTO offices have been closed to the public.[x] However, it is important to note that while USPTO offices are closed to the public they remain open for employees, contractors, and those with access badges. These provisions help ensure that USPTO operations will continue without interruption.[xi] With operations continuing, applications will continue to be filed and accepted at the USPTO and office actions and notices of allowances will continue to trickle in. Any proceedings before the PTAB or the Trademark Trial and Appeal Board (TTAB), such as oral hearings and in-person meetings with parties and stakeholders, are being conducted remotely by video or telephone.
Until 2012, the USPTO solely operated out of its central headquarters located in Alexandria, Virginia. With passage of the America Invents Act (AIA) in 2011, the USPTO established regional offices scattered throughout the country, with locations in Detroit, Dallas, Denver, and Silicon Valley.[xii] Much like the headquarters in Alexandria, these regional offices are staffed with patent examiners and PTAB judges, allowing inventors the ability to access these resources in every time zone throughout the country. Staffing at regional offices ranges anywhere between 69-113 total employees at each regional office.[xiii]
Even before the coronavirus outbreak, a very large percentage of USPTO employees across all office locations were already working remotely. In 1997, the USPTO began a pilot program allowing up to 18 trademark examiners to work from home a few days a week.[xiv] More than twenty years later, the USPTO has more than 12,000 employees working from home.[xv] In a recent study conducted in 2018, the USPTO has 88.33% of all positions at the USPTO working remotely.[xvi][xvii]
One unique aspect of the USPTO, as compared to almost all other federal agencies, is that it is completely self-funded by fees collected during the filing and prosecution of applications for patents and trademark registrations. As such, the USPTO does not rely on any taxpayer dollars to operate. In fact, during the 2018–2019 government shutdown, the USPTO remained open for business as normal.[xviii] Similarly, looking ahead, we can continue to anticipate further communications from the USPTO during the pendency of the coronavirus outbreak.