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

 

Last Updated: May 21, 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)

The CARES Act has given the USPTO temporary authority to extend deadlines set by statute.. Accordingly, most patent and trademark prosecution deadlines, and certain other deadlines, falling between March 27 and May 31, 2020, will be extended to June 1, 2020 if the filing is accompanied by a statement that the delay in filing was “caused by” the COVID-19 outbreak, defined as a person involved with the filing being “personally affected.” The statement need not be verified in a declaration or affidavit. The patent and trademark guidelines give examples in which a practitioner, applicant, or inventor is faced with such situations as personal or family illness, office closures, inaccessibility of files, or cash flow interruptions.

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 will waive fees for petitions to revive following missed deadlines in some cases and has also temporarily waived the requirement for original handwritten signatures in situations where they are ordinarily necessary.

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.

 

Copyright Office

Acting under the CARES Act, the Copyright Office has adjusted or waived certain deadlines set by statute. 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 postponed both of its April oral argument sessions and held oral arguments in ten cases by teleconference on May 4th and May 12th. Oral arguments in other cases have been delayed until the fall.

The Court has also 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. Cases for the June session will be argued telephonically unless the Court determines that oral argument is unnecessary.

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.

 

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
    • All trials scheduled to begin on or before May 29 are continued indefinitely;
    • Trial-specific deadlines to remain or be continued at the discretion of the individual judges;
    • Effective May 7, 2020, 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 in July continued indefinitely
    • All deadlines falling prior to May 1 automatically extended by 30 days (with objections considered on a case-by-case basis);
    • Court offices closed to the public other than by appointment; the clerk’s office available by phone.
  3. New Hampshire
    • All jury trials, pre-trial conferences for the same, and all court-sponsored mediations scheduled to begin before July 1 are continued indefinitely;
    • All civil and criminal hearings scheduled before June 1 are to be continued or rescheduled 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, continued indefinitely.
    • 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.
    • Jury trials will not be scheduled before September 1st unless the presiding judge determines otherwise.
  5. Rhode Island
    • All in-person civil matters through June 30, 2020 are canceled.
    • All jury trials are continued until July 2020.
    • Courthouses are closed to the public for several months, possibly until September. Proceedings will take place by telephone or video conference where possible.
  6. Connecticut
    • All civil and criminal jury trials through September 1 are continued indefinitely.

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

All jury trials scheduled to begin before July 1, 2020, are continued to a date not earlier than July 1, 2020.  All bench trials scheduled to begin before June 1, 2020, are continued to a date not earlier than June 1, 2020, unless they can be conducted virtually by agreement of the parties and the court.  Affected parties may apply for an exception by motion to the court in which the trial or evidentiary hearing was to occur, but under no circumstances will a jury be empaneled or a jury trial occurs.

All deadlines set forth in statutes, court rules, tracking orders, standing orders or guidelines that expired or will expire between March 16, 2020, and June 1, 2020, are tolled until June 1, 2020, with the number of days remaining between March 16 and the original deadline added to June 1 to arrive at the new deadline.  The same applies to court-ordered deadlines unless specifically ordered otherwise by the applicable court.

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.

All Massachusetts state courthouses are closed to the public.  Emergency matters will be conducted by telephone or videoconference or on the papers.  No in-person matters will be conducted unless the virtual resolution is impossible or would affect a party’s constitutional rights.

 

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. All time limits expiring on or after March 15, 2020, are extended to June 2, 2020, including the payment of fees and renewal fees.
  2. This extension applies to anything that must be done within a set time period.  This extension does not apply, however, to procedural acts that must be performed under specific conditions (such as the filing of a divisional application) or by a specific date (as opposed to within a set period of time), such as the deadline for making a written submission in preparation for oral proceedings under Rule 116 EPC.
  3. Any fee extended to June 2 will be held to the original amount due; the fee increases that took effect April 1 will not be applied unless the fee itself was due on or after April 1.
  4. EPO has resumed holding limited oral hearings at the appeals board as of May 15, 2020. The board will contact parties in advance to confirm their ability to attend their hearing.
  5. All oral proceedings in examination and opposition proceedings that were scheduled to take place before June 2 are postponed until further notice unless they were already confirmed to take place by videoconference.
  6. 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.
  7. 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 until 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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Founded in 2003, Lando & Anastasi, LLP is a full service, mid-sized boutique intellectual property law firm. We offer creative solutions to protect, expand and leverage our clients’ IP assets. We are trained scientists and engineers who take pride in working collaboratively across practices to best understand the converging technologies of our clients’ businesses. Our practice includes patent prosecution and litigation; opinions and strategic counseling; trade secrets; trademark and copyright prosecution and litigation; post-grant proceedings, and licensing and transactions. We have experience with multinational corporations to venture-funded startups across a broad range of industries.

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