CARES Act Permits Extensions of Statutory Deadlines for Patent, Trademark and Copyright Matters

The “Coronavirus Aid, Relief, and Economic Security Act” (or the “CARES Act”) has been approved by both the House and Senate, and was signed by President Trump on March 27, 2020.

While the Act significantly impacts employers, employees and individuals alike, this article will address only the impacts of the Act on the U.S. Copyright Office and the U.S. Patent and Trademark Office (“USPTO”), and the newly granted authority of the Register of Copyrights and the Director of the USPTO to amend certain timeframes to deal with the coronavirus and the effects of business closures around the country.

USPTO’s Initial Response to COVID-19

At the beginning the coronavirus outbreak, the USPTO released a statement that confirmed it considers the effects of COVID-19 to be an “extraordinary situation,” but rather than putting a moratorium on official deadlines or suspending current activities before the USPTO, the USPTO would simply “waive petition fees” relating to inadvertently abandoned or cancelled patents or trademark applications/registrations due to the coronavirus. The USPTO further acknowledged that it would not grant waivers, extensions of deadlines or any relaxation of requirements set by statute. We practitioners have heard many times that in the absence of any delegation of specific authority by the legislature, the USPTO cannot amend any statutory deadline.

According to the “Official Notice” in its March 16 statement, the USPTO would waive the filing fees for trademark applicants or registrants to petition the Director to revive an application or a registration that was abandoned/cancelled due to the inability to respond to an Office communication “due to the effects of the Coronavirus outbreak,” provided that such requests were filed within two months after the issuance of the notice of abandonment/cancellation and provided that these petitions included a statement about how the applicant/registrant was affected by the outbreak. (Official Notice at 2).

With respect to patent filings, the USPTO placed even more restrictions: the petition fee would be waived, but only if the patent applicant or patent owner was unable to respond (or was delayed in responding) to an Office communication “because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply.” (Id. at 1). The petition filed must include a statement that the delay in filing the reply to the Office’s communication was due to the impacts of coronavirus on the filer.

In both cases, the USPTO made it clear that statutorily-set deadlines – such as (a) the deadline to file a nonprovisional application based on a prior-filed foreign patent application, (b) the full 36-month period in which to file a statement of use for a trademark application, (c) the deadline to file declarations of continued use under Section 8, or (d) the deadline to oppose a trademark application – could not be extended by the USPTO and would remain in force. (Id. at 3)

CARES Act – Copyright Office Deadline Extensions

The Copyright Office did not announce any suspension of deadlines for applications filed with the Office as a result of the coronavirus – but instead simply announced on March 13, 2020 that the physical Office would be closed to the public and all applications and other filings could still be made through the Copyright Office’s online systems.

The Senate’s March 25, 2020 amendment to the prior House version of the CARES Act includes a delegation of authority to the Register of Copyrights to permit extensions of deadlines under certain circumstances, under a provision entitled, “National Emergency Relief Authority for the Register of Copyrights.”  Specifically, Senate Amendment 1578 (Section 19011 at p. 84 of 96) permits the Register of Copyrights to extend certain deadlines with the following caveats:

  • The Register must determine that a national emergency “generally disrupt[s] or suspend[s] the ordinary functioning of the copyright systems, or any component thereof”.
  • The “national emergency” must be declared by the President under the National Emergencies Act (50 USC § 1601 et seq.).
  • A national emergency that disrupts or suspends the copyright systems on only a regional basis could still qualify as a “national emergency” permitting the extension of deadlines.
  • The extensions of deadlines could include a toll, waiver, adjustment or modification of “any timing provision including any deadline or effective period” provided that these extensions are only temporary and last no longer than the “Register reasonably determines to be appropriate to mitigate the disruption caused by the national emergency”.
  • The Register’s authority to amend deadlines can be retroactive, provided that the “deadline has not already passed before the declaration of a national emergency described in subsection (a) of this Section.

The Amendment clarifies that statutes of limitation (by which civil actions must be commenced or federal court actions filed) cannot be extended by this provision. Id. § (d).

CARES Act – USPTO Deadline Extensions

The temporary authority given to the USPTO Director to respond to an emergency is more narrowly defined than that under the Copyright Office section. In a section entitled “Temporary Authority of Director of the USPTO During COVID-19 Emergency,” Senate Amendment 1578 (Section 12004 at p. 66 of 96) permits the USPTO Director to “toll, waive, adjust or modify any timing deadline” established by the Patent Act (Title 35), the Trademark Act (15 U.S.C. § 1051 et seq.), Section 18 of the America Invents Act (35 U.S.C. § 321) “or regulations promulgated thereunder” if the Director determines that an “emergency” (as defined under subsection (e)) has the following effects:

  1. “materially affects the functioning of the” USPTO;
  2. “prejudices the rights of applicants, registrants, patent owners, or others appearing before the Office” (which presumably would include litigants in inter partes proceedings before the Patent Trial and Appeal Board (PTAB) or the Trademark Trial and Appeal Board (TTAB)); or
  3. “prevents applicants, registrants, patent owners or others appearing before the Office from filing a document or fee with the Office.”

Id. § (a). Item 3 is not broad enough to allow the Director to extend deadlines simply due to computer system failures at the USPTO (unless they happen to occur during the COVID-19 outbreak, during the national emergency declared by the President on March 13, 2020 or during any other emergency covered by this Section). Id.

Note that the “emergency” to which this Section applies “includes” (but does not appear limited to) the emergency declared by President Trump “pursuant to the National Emergencies Act on March 13, 2020 as a result of the COVID-19 outbreak (and any renewal thereof)” and continues for a 60-day period following such declaration. Id. § (e). The authority granted by this Section expires two years after the date of its enactment. Id. § (g).

Unlike the Copyright Section, this Section does not explicitly preclude the Director of the USPTO from retroactively impacting a deadline that has already passed, although one might interpret the timing of the emergency period as beginning “on or after the date of enactment of this Section” as limiting the Director to only change current or prospective deadlines. Compare Section 19011(b) (Copyright Office provisions) with Section 12004(e) (USPTO provisions).

NEXT STEPS

Now that the final bill has been signed into law, one would expect to see official announcements from both the USPTO and the Copyright Office to identify particular extensions to be expected for specified periods of time.

One confusing provision in both the Copyright Office and the USPTO provisions is that the Register/Director is required to submit a Report to Congress no later than 20 days after the termination to change the deadlines under this Act is made – but only if the extension of time is “in effect for a consecutive or cumulative period exceeding 120 days”. Id. § (c). Assuming the timing glitch is adjusted appropriately, then the Report must contain a description of the action taken, relevant background and a rationale for why the adjustment was made. Id.

(Once the Public Law version of the bill is available, this post will be updated with a link to it.)

New Law Prohibits Non-Disparagement Provisions in Form Consumer Contracts

On December 14, 2016, President Obama signed into law H.R. 5111, a bill that prohibits companies from including within their standard form contracts with its consumers a non-disparagement clause that would prevent such customers from making any statements about the company’s products, services or employees. The Consumer Review Fairness Act of 2016 (“CRFA” or “the Act”) passed overwhelmingly in both the House and the Senate, garnering bipartisan support. See also House Debate, 162 Cong. Rec. H5295-H5298 (daily ed. Sept. 12, 2016) (statements upon introduction by bipartisan cosponsors). In fact, H.R. 5111 passed in the Senate, without amendment, on Unanimous Consent on November 28, 2016. See Senate Debate, 162 Cong. Rec. S6520 (daily ed. Nov. 28, 2016). Upon signing by the president, the Bill became Public Law No. 114-258.

Provisions and Application of CRFA

The law prohibits any “person” (which could be an individual or an entity) from “offer[ing] a form contract containing a provision described as void in subsection (b).” Id. §2 (c). Such provisions that are “void from the inception of the contract” include at least one of the following prohibited characteristics: Continue reading

Business Owners & the New Federal Claim for Trade Secret Misappropriation

On May 11, 2016, Pres. Obama signed into law the Defend Trade Secrets Act of 2016, S. 1890, 114th Congr. (2d Sess. 2016) (“DTSA“), which provides for the first time a federal private right of action to litigants for trade secrets violations. Most states – except for Massachusetts and New York – have enacted versions of the Uniform Trade Secrets Act (“UTSA“) but the DTSA provides additional remedies without preempting state laws or eliminating any of the protections offered by them. Business owners will need to take some actions in the short term in order to take advantage of some of the more powerful remedies created by the DTSA.
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New “Personal Information Privacy” Legislation Introduced

On January 8, 2014, Sen. Patrick Leahy (D-Vt) re-introduced a personal privacy protection bill intended “to prevent and mitigate identity theft, to ensure privacy, to provide notice of security breaches, and to enhance criminal penalties, law enforcement assistance, and other protections against security breaches, fraudulent access, and misuse of personally identifiable information.”  Personal Data Privacy and Security Act of 2014, S. 1897 at preamble (introduced Jan. 8, 2014).  Sen. Leahy introduced prior versions of this bill in 2005, and in each of the four Congresses since.  Press Release, “Leahy Reintroduces Data Privacy Legislation,” Jan. 8, 2014.

Sen. Leahy’s published summary of the bill provides a detailed list of the key components.  There are two principal titles in this bill:  1) Enhancing Punishment for Identity Theft and Other Violations of Data Privacy and Security; and 2) Privacy and Security of Personally Identifiable Information (“PII”).  (There is a third title, relating to compliance with a statutory Pay-As-You-Go Act, but the text is a short paragraph and just relates to budget compliance.)  See Leahy’s Section-By-Section Analysis of the Bill.

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Open Forum at ABA Annual Meeting on Online Piracy and Counterfeiting

In August 2012, the Intellectual Property Law (IPL) Section of the American Bar Association (ABA) will be hosting an open forum during the ABA Annual Meeting in Chicago on online piracy and counterfeiting. I will be moderating one panel (on the scope and severity of the problem) and one of my co-chairs of the Joint Task Force on Online Piracy and Counterfeiting, Chris Katopis, will be moderating the other (essentially, on the U.S. government’s response and remedies). During these panels, and through the work of the Task Force, we are focusing on conduct by entities offshore – essentially foreign sites that currently are beyond U.S. jurisdiction, but who may be engaged in significant copyright piracy of U.S. works and/or trademark counterfeiting of U.S. trademarks.
 

More details about the panels can be found on the ABA’s Annual Meeting Site, and in particular, the Intellectual Property Law Section’s description of the IPL programs that will occur during the meeting.

This panel follows a similar panel that I moderated in March, during the IPL Section’s Annual Meeting in Washington, D.C. (page 9). We had excellent attendance and feedback after the program. I am hoping for a similar result from the Chicago panel discussion, and look forward to getting feedback and input from the attendees about these issues.

In the meantime, here are some governmental resources that identify some of the concerns, and the impacts on the U.S. economy of piracy & counterfeiting that originates outside our borders, but is directed to a U.S. audience:

I look forward to seeing you in August.