Finding IP Value

Intellectual Property & COVID-19

By Julie Laemmle Watts

COVID-19 has drastically impacted people’s lives and livelihoods. It has also had drastic impacts on many legal sectors, but its impact on intellectual property has been much less severe with the United States Patent and Trademark Office (“USPTO”) and Copyright Office moving forward via remote operations.

Despite the USPTO’s physical closure to the public, its online filing system is still up and running. This physical closure, however, should not substantively impact the ability to obtain and record rights in trademarks and patents through electronic filings, including new applications, renewals, assignments, and security interests, as the USPTO has had many years of telework experience. Moreover, it appears the USPTO is optimistic that there will not be processing delays of electronic filings.

Because the USPTO is proceeding remotely and business is closed to the public, in-person events such as examiner interviews or meetings, hearings before the Patent Trial and Appeal Board (“PTAB”) and the Trademark Trial and Appeal Board (“TTAB”) are either postponed or taking place by video or teleconference.

While the USPTO continues to take the position that it cannot change statutory deadlines, such as the six-month timeframe to respond to an office action, it is making it easier to revive an application that has been abandoned for failure to respond due to the effects of COVID-19. As a result of the pandemic, which the USPTO has deemed an “extraordinary situation” under 37 C.F.R § 1.183 and 37 C.F.R. § 2.146, the USPTO released an official notice waiving fees for petitions to revive trademark applications and registrations that were abandoned or canceled due to COVID-19 and waiving fees to revive patent applications held abandoned due to the effects of COVID-19. Specifically, a petition must be filed within either two months of the issue date of cancellation or abandonment or within six months after online records indicate cancellation or abandonment if the applicant or registrant did not receive the notice of cancellation or abandonment. In either case, a petition must explain how the failure to respond was due to the effects of COVID-19. Please note that other deadlines remain in place without assistance to cure, including, but not limited to, foreign application deadlines.

The United States Copyright Office is also closed to the public. Applications to register new copyrights can be made online; however, security interests and other assignments are not accepted electronically. Currently, the Copyright Office is only accepting security interest and assignment filings made by mail carriers, including U.S. postal service, UPS, or FedEx; no filings can be made in person or by courier. The Copyright Office will use the postmark date as the filing date. Processing delays are expected, but the ability to obtain and record rights should not be substantively impacted.

Please contact a member of Wyatt, Tarrant & Combs’ Intellectual Property Service Team if you have questions or concerns about how these provisions, or COVID-19 generally, could impact you or your intellectual property.

Julie Laemmle Watts
Julie Laemmle Watts is a member of the Firm’s Litigation & Dispute Resolution, Labor & Employment and Intellectual Property Protection & Litigation Service Teams. She concentrates her practice in the areas of commercial disputes, trademark and copyright transactions and litigation work, healthcare litigation and employment matters. Read More