Updates on the Impact of COVID-19 on Intellectual Property Law Practice and Procedures  

 

Last Updated: November 16, 2020

As a service to our clients and colleagues, we are tracking the impact of the COVID-19 crisis on intellectual property and related practices. Following are updates from the United States Patent & Trademark Office (USPTO), the Copyright Office, our local state and federal courts, the Court of Appeals for the Federal Circuit, the European Patent Office (EPO), the European Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO).

Please bookmark this page, which we will update as developments occur.

Disclaimer:  This general information is being provided as a courtesy, and should not be taken as legal advice. The response to COVID-19 is changing daily, so please consult with an attorney regarding any extended deadlines or other provisions of law that may be affected by the current situation.

 

United States Patent & Trademark Office (USPTO)

Examiners at the USPTO continue to work remotely, but the office remains closed to the public. All examiner interviews and proceedings are being conducted by telephone or video conferencing. The USPTO has released a FAQ concerning how its operations have changed as a result of the pandemic.

The USPTO has launched a COVID-19 Response Resource Center to provide information about its programs and other relief offered to those affected by the pandemic.

Patent

Under its new COVID-19 Prioritized Examination Pilot Program, the USPTO will grant prioritized exams to up to 500 applications filed by small or micro entity applicants who claim a product or process subject to the U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19. No prioritized examination fees will be due. The USPTO’s goal is to reach the final disposition of these prioritized applications within six months.

The USPTO has also launched a deferred-fee provisional patent application pilot program for inventions that combat COVID-19. Under the program, applicants may defer payment of the provisional application filing fee until the filing of a corresponding, non-provisional application. In exchange, they must agree that the technical subject matter disclosed in their provisional applications will be available to the public on the USPTO’s website, thereby contributing to the fight against COVID-19 while protecting their patent rights.

To qualify for the program, the subject matter disclosed in the provisional application must concern a product or process related to COVID-19, and must require Food and Drug Administration (FDA) approval for COVID-19 use.

The USPTO has also temporarily waived the requirement for original handwritten signatures in situations where they are ordinarily necessary and is temporarily permitting electronic filing of initial patent term extension applications.

Trademark

Applicants who were unable to submit a timely response or fee in response to an Office Action should file a petition to revive the application. Applicants who missed the 36-month statutory deadline for filing a Statement of Use should file a Petition to the Director. Registrants who missed a statutory deadline resulting in a canceled or expired registration, or who were unable to submit a timely response or fee in response to a post-registration Office Action, should file a Petition to the Director.

For TTAB proceedings, a party that has been prevented by the COVID-19 outbreak from making a filing may file a request (in ex parte appeals) or motion (in trial cases) for an extension or reopening of time as appropriate.

Copyright Office

Acting under the CARES Act, the Copyright Office has adjusted or waived certain deadlines set by statute through January 8, 2021. In particular:

  • A copyright owner who is unable to submit a required physical deposit with their application may submit the application along with a statement that the physical deposit cannot be submitted due to, for example, inaccessibility of the deposit or the applicant being under a stay-at-home order. In some cases, an electronic deposit may now be accepted where a physical deposit was previously required.
  • An applicant who is unable to submit an electronic application during the outbreak can toll the three-month window of Section 412 if they submit an application within thirty days after the end of the disruption, accompanied by a statement that the Applicant was unable to complete the filing due to the COVID-19 outbreak due to, for example, an inability to access the Internet or the required application materials.
  • The requirements to provide notices of intention, statements of account and associated royalty payments on compulsory licenses relating to phonorecords will be tolled if an individual or entity who previously made such filings by paper sends a declaration that it cannot do so due to the pandemic.

 

U.S. Supreme Court

The Court will hear all oral arguments scheduled for the November and December sessions by teleconference, with Justices and counsel participating remotely

The Court extended the deadline to file any petition for a writ of certiorari due on or after March 19, 2020, to 150 days from the date of the lower court judgment, order denying discretionary review, or order denying a timely petition for rehearing.  The Court further indicated that motions for extensions of time on the grounds of difficulties relating to COVID-19 would be granted as a matter of course, so long as the length of the extension sought was reasonable.

 

Federal Circuit Court of Appeals

All in-person arguments are suspended. Access to the Courthouse is limited to court staff through October 19, with additional access available on a case-by-case basis at the discretion of the Chief Judge. Until further order, all cases will be argued telephonically unless the Court determines that oral argument is unnecessary.

All in-person paper filings, whether by parties, couriers, third-party commercial carriers or members of the public, are suspended. All paper filings or submissions must be made through the U.S. Postal Service to the Clerk of Court.

The Federal Circuit has specifically indicated that despite the epidemic, all deadlines remain in place. In-person oral arguments, however, are suspended until further notice. Most business before the Court of Appeals for the Federal Circuit (CAFC) can be carried out using their electronic filing system. The CAFC Clerk’s Office has issued new guidance on how counsel may accomplish physical service of papers where required. First, it encourages planning ahead to have someone in the office or working remotely handle the printing and mailing of such documents to avoid delay. If that is not possible, a motion may be made to delay the service of process. It should be noted that delaying service may impact responsive deadlines that are calculated from the date of service not filing.

First Circuit Court of Appeals

Oral arguments for the October and November 2020 session will be held by videoconference, with live audio available to the public. Public access to live audio of the court’s October 2020 court sessions will be available here.  Appendices to briefs will not be accepted in paper form, but must instead be filed electronically.

Local Federal Courts

All of New England’s Federal District Courts have issued orders regarding the COVID-19 outbreak, which generally run along the same lines. All but the District of Vermont have allowed bench trials to proceed or be stayed at the discretion of individual judges. The courts have also ordered the following schedule changes:

 

            Federal District Courts:

  1. Massachusetts
    • Jury trials began in late October in two courtrooms that have been modified to allow for proper social distancing.  Criminal trials are taking precedence, with civil trials to resume based on the level of complexity and number of people likely to be required.  All involved will be required to wear masks at all times other than when testifying. A complete summary of the plan can be found here.
    • A limited number of in-person non-jury proceedings may now take place where further delay might harm the interests of justice and the law does not permit video proceedings or requisite consents cannot be obtained; proceedings shall be conducted by video in all other circumstances;
    • Trial-specific deadlines to remain or be continued at the discretion of the individual judges;
    • Magistrate and Senior Judges are free to schedule and conduct mediations in civil proceedings in accordance with the normal practices of the Court.  All such mediations shall occur only by video or telephone conference.
    • Public counter hours reduced to 9:00 am – 2:00 pm.
  2. Maine
    • All jury trials to begin between July and December (for the Bangor division) and between July and January 2021 (for the Portland division are continued. Limited in-court hearings on criminal cases are planned to begin in October; jury trials will not be scheduled, however, until at least January 2021 in the Bangor division and February 2021 in the Portland division.
    • Court deadlines remain in effect, and are not extended or suspended;
    • Court offices closed to the public other than by appointment; the clerk’s office available by phone.
    • In accordance with the planned staged reopening, the Court has set entrance protocols that refuse entry for people exhibiting symptoms or having been exposed to others having COVID or experiencing symptoms. Further, non-Maine residents (or Maine residents who have traveled to or from a state not exempted from Maine’s quarantine/negative test requirements – currently all states other than New Hampshire, Vermont, Connecticut, New York and New Jersey) will not be permitted in the court unless they have received a recent negative COVID test, have quarantined for 14 days upon arrival in the state, unless the entrance into the court is related to a role in an in-court hearing, grand jury proceeding, or jury trial and entrance has been pre-approved by the presiding judge.
  3. New Hampshire
    • All civil jury trials and pre-trial conferences for the same are continued indefinitely;
    • All scheduled in-person court-sponsored or conducted mediations are continued until further order, although mediation by video conference remains available;
    • All civil and criminal hearings are to occur telephonically or by videoconference or by an in-court hearing at the discretion of the judge;
    • Filings may be made by email to the court at ecfintake@nhd.uscourts.gov by those without access or authorization to the court’s electronic filing system.
  4. Vermont
    • All civil trials, jury or bench, resumed effective September 1, 2020, with the presiding judge having discretion as to the safe scheduling and conduct of the trial;
    • At the discretion of individual judges, in-person hearings may resume on a limited basis in Burlington after May 25th and in Rutland after June 8th, although hearings will be conducted by video or telephone where possible.
  5. Rhode Island
    • The Court will resume civil trials in October and begin limited in-person hearings in November.
    • All trial exhibits must be electronically displayed once admitted by the Court, no paper exhibits will be permitted.
    • Proceedings may also continue to take place by telephone or video conference.
    • Depositions in civil cases are to be conducted by remote video means absent a court order to the contrary.
  6. Connecticut
    • All criminal jury trials scheduled to begin November 2nd are continued indefinitely. Civil jury trials may be scheduled at the presiding judge’s discretion beginning  September 1st.  Priority will be given to short civil trials.
    • Individual judges will determine whether to hold non-jury proceedings and whether they will be in-person or video or telephone conference.

Unless otherwise noted above, mediations and conferences are likewise affected. Each of these Federal courts is holding hearings or conferences by telephone or video, though individual judges have the discretion to hold in-person hearings where there are exigent circumstances, such as the need to present in-person evidence or testimony in a hearing seeking injunctive relief.

All of these courts have restricted public access to the courthouses and have staff working remotely to the fullest extent possible.  This has led to closures or limitations on the hours that the clerks’ offices are open to the public.

All of the courts have barred access to anyone who has been diagnosed or been exposed to another who has been diagnosed with the virus, exhibited symptoms of the virus, or been asked to quarantine, and those who have traveled internationally within the preceding 14-day period of time.  Some of the courts have also imposed restrictions on those who were recently in a cruise ship or in a regional pandemic hotspot.

These courts are also generally allowing most papers to be filed electronically, sent by first-class mail, or placed in a dropbox that date-stamps the documents. 

New Hampshire is allowing for filings by e-mail for those without access or authorization to ECF, the courts’ electronic filing system.  Such filings should be sent to ecfintake@nhd.uscourts.gov.  New Hampshire has also specifically indicated that these changes do not impact service, and all papers remain subject to the service requirements already in existence.  The other courts do not specifically address service, and so parties should continue to comply with service requirements of the Federal and local rules.

 

Massachusetts State Courts

Jury trials are resuming on a limited basis. During the first phase, trials will begin on a schedule, with cases beginning after Thanksgiving in Woburn and extending in various courts through the week of January 24, 2021. Initially, trials will be limited to six-member juries.  The bulk of jury trials, and all larger jury trials, are anticipated to resume in February 2021.

Unless otherwise ordered, all orders issued prior to March 17, 2020 that enjoined or otherwise restrained a party from taking some act or engaging in some conduct for a temporary period of time shall remain in force until the matter is rescheduled and heard.

Courts of the Commonwealth are to conduct most proceedings virtually. Oaths and affirmations may be administered remotely by telephone, videoconference, or comparable means in any virtual proceeding, except where it would be with constitutional or statutory requirements.

Depositions may be conducted remotely without the need for leave of court or stipulation of the parties.  A witnesses’ desire to appear in person shall not constitute grounds to quash a notice for a remote deposition.

The Supreme Judicial Court of Massachusetts is requiring that all attorneys of record provide an email address to the court and other parties to allow for electronic service.  Where the date of service of communication triggers a subsequent due date, three additional days are added to the prescribed period.  These rules do not apply to service on a self-represented party unless the party agrees in writing.

Massachusetts state courthouses are open to the public for limited purposes, including some in-person proceedings.  Clerk’s register’s and recorder’s offices reopened on July 13th while still seeking to conduct business virtually as much as possible. Visitors to the courthouse should bring their own mask, and should not enter the courthouse if they have COVID or symptoms thereof or have been exposed to someone with COVID or who exhibits symptoms of COVID.  All persons seeking entry will be subject to screening, which may include answering a survey on potential COVID exposure and having their temperature taken.  If a person is denied entry due to the screening, the person should contact their attorney, the Clerk’s Office, or the Clerk of the session in which they are to appear.

 

Remote Online Notarization in Massachusetts

As of April 27, 2020, Massachusetts allows for remote online notarization of signatures.  The notary, all signatories, and any witnesses must be physically present in Massachusetts for the signing, which must be observed in real-time by the notary via videoconference. Government-issued identification must be presented to the video camera when the document is executed, and copies of the identification must be provided to the notary unless the signatory is personally known to the notary. Once executed, the originally-signed document(s) must be delivered to the notary. Documents relating to real estate transactions or estate planning may only be notarized by Massachusetts attorneys.  The authorization of remote online notarization shall remain in effect for the duration of Massachusetts’ COVID-related state of emergency plus three days.

 

International

WIPO will transmit documents only via email until further notice. This change affects patent documents for applications filed under the Patent Cooperation Treaty (PCT) system, as well as trademark and design applications under the Madrid and Hague systems, respectively.

 The European Patent Office (EPO) has issued several new guidelines as follows:

  1. EPO has resumed holding limited oral hearings at the appeals board. Such hearings can now also be conducted by videoconference upon agreement by the parties.
  2. All oral proceedings in opposition proceedings that were scheduled to take place before December 31 are postponed until further notice unless they were already confirmed to take place by videoconference. All oral proceedings in examination will take place by videoconference. Beginning January 4, 2021, all such proceedings will be conducted by videoconference. Where videoconference is not possible, the proceedings will be postponed until after September 15, 2021.
  3. All oral proceedings in examination will take place by videoconference. Where videoconference is not possible, the proceedings will be postponed until after September 15, 2021.
  4. Search, examination, and opposition divisions will continue with their other activities, with interviews in examination to occur by videoconference.  Waivers to allow for in-person oral proceedings may be submitted and will be decided at the sole discretion of the competent division, which will not be appealable.
  5. Where oral proceedings require the taking of direct evidence, they will not be held by videoconference.

European Intellectual Property Office (EUIPO)

The EUIPO has declined to extend time limits beyond the previous extended date of May 18, 2020. Parties that are still affected by the COVID-19 outbreak after that date may request an extension of up to six months, however, and reasoned requests will be granted without detailed justification. Additional extensions may be requested thereafter in the case of exceptional circumstances.

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