The historic $2 trillion coronavirus (COVID-19) relief bill has been widely reported on and discussed by the media. The Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”) is focused, of course, on providing economic relief for Americans and businesses affected by the coronavirus pandemic. While not quite as exciting as the $1,200 stimulus payments that will be made to millions of Americans, the CARES Act also provides additional authority to the Director of the U.S. Patent and Trademark Office (“USPTO”).
In light of the ongoing pandemic, the USPTO has taken a number of actions to help slow the spread of the virus and to provide relief to affected patent and trademark applicants, registrants and owners. These efforts are described in more detail in the U.S. Patent and Trademark Office’s response to COVID-19. As noted there, the USPTO has been unable to grant extensions or waivers of certain statutory deadlines, because it lacks the authority to do so. The CARES Act changes this.
Specifically, Section 12004 of the CARES Act, provides the Director of the USPTO with the authority to “toll, waive, adjust or modify, any timing deadline established by” the patent or trademark act (or “regulations promulgated thereunder”) during the period of the current coronavirus emergency. In order to do so, the Director must determine the emergency:
- Materially affects the functioning of the Patent and Trademark Office;
- Prejudices the rights of applicants, registrants, patent owners, or others appearing before the Office; or
- Prevents applicants, registrants, patent owners, or others appearing before the Office from filing a document or fee with the Office.
The bill defines the period of the current coronavirus emergency as beginning on or after the enactment of the CARES Act, extending through the “duration of the portion of the emergency declared by the President … as a result of the COVID-19 outbreak (and any renewal thereof),” and ending 60 days thereafter. It, therefore, does not appear the Director will have any authority to retroactively extend deadlines that expired prior to the enactment of the CARES Act. In addition, the Director’s authority completely sunsets two years after enactment of the bill.
For now, applicants, registrants and patent owners should assume statutory deadlines cannot be extended. Before any such extensions, the Director will need to actually exercise the discretion granted by the CARES Act. But it is expected that the patent and trademark community will be hearing more from the USPTO on this in the coming weeks.
Tony Blum is a member of Thompson Coburn’s Intellectual Property group.
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