COVID-19 Impact on Trademark & Copyright Law

In reaction to the COVID-19 outbreak, patent and trademark offices have closed their doors; however there are options. In some cases, deadline extensions and electronic filings can help to minimize the negative impacts the outbreak has had on filers. Below is an outline of the procedure modifications set forth by the US Patent and Trademark Office (USPTO) and the US Copyright office.

USPTO

• Extended deadlines: As a result of the Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”), certain patent and trademark deadlines falling between, and inclusive of, March 27, 2020 and April 30, 2020, qualify for a 30 day extension. 
• What types of procedures qualify for a 30-day extension?The extension applies to:
  • Responses to an Office action, including a notice of appeal from final refusal, under 15 U.S.C. § 1062(b) and 37 C.F.R. §§2.62(a) and 2.141(a);
  • Trademark statement of use or requests for their extension, under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a);
  • Trademark notices of oppositions or requests for extensions of time to file them, under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and 2.34(a)(4)(i);
  • Trademark affidavit of use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b);
  • Other deadlines that have been extended can be found in the official Trademark Notice from the USPTO.
• Requests for an Extension must be accompanied by statement:  Any filing seeking to take advantage of an extended deadline must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.  The USPTO published a FAQs with additional information explaining how to take advantage of the extended deadlines.
• USPTO waives original handwritten signature requirement:  The USPTO waived the requirements of 37 C.F.R. § 1.4(e)(1) and (2) for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.  The USPTO has no other requirements for original handwritten, ink signatures.

Copyright Office

• CARES Act Modifies Timing Provisions:  The CARES Act added section 710 to the Copyright Act, authorizing the Register, on a temporary basis to “toll, waive, adjust, or modify and timing provision . . . or procedural provision” in the Copyright Act.
  • On March 31, 2020, the Acting Register of the Copyright Office announced that she would exercise her authority to adjust certain timing provisions related to registration claims and notices of termination for persons affected by COVID-19.
  • On April 6, 2020, the Acting Register announced she would adjust timing provisions related to the paper-based provisions of section 115 notices of intention and statements of account by entities impacted by COVID-19.
  • How long will the emergency modifications last?The emergency modifications are in effect until May 12, 2020, unless the Acting Register issues an announcement stating either that the period of disruption has ended before that time or that a further extension is necessary.
    • What types of submissions do the timing adjustments apply to?
      • Physical deposit copies;
      • Notices of Termination relating to transfers of copyright interests and their recordation;
      • Notices of Intention and Statements of Account relating to compulsory licenses to make or distribute phonorecords of a musical work.
    • Additional information about the impact to the timing deadlines is available at the Copyright Office’s coronavirus website.
  • The Copyright Office has expanded capabilities to receive electronic submissions.
  • The Copyright Office issued interim rules to mitigate the effect of the temporary closure of the Copyright Office buildings due to COVID-19.  Effective April 2, 2020, the Copyright Office will temporarily accept electronic deposit copies to facilitate remote examination of electronic applications which ordinarily must be accompanied by physical deposits.
    • This measure is optional.For electronic applications submitted on or after April 2, 2020: applicants may upload an electronic copy of the work via the Copyright Office’s online registration system (“eCO”), in addition to mailing the required physical copies together with the shipping slip generated by eCO, and must upload a sworn declaration that the electronic copy of the work is identical to the physical copies.
    • Applicants who filed electronic applications with physical deposits before April 2, 2020 may be contacted by the Copyright Office and offered an opportunity to upload an additional electronic copy of the work.  If applicants exercise this option, they must also upload the sworn declaration.
    • Applicants who cannot, or prefer not to, submit electronic deposits may experience significant delays and their applications will not be examined until the Copyright Office suspends its current work-from-home policy for registration specialists.
      • Although examination of the claim will be delayed, the effective date of registration will generally be the date the Copyright Office Received the application, fee, and physical deposits.
    • Additional COVID-19 resources from the Copyright Office are available here.