Category Archives: Stimulus Act

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

by Christina Frangiosa

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.)

Newly Introduced Bill Proposes Chief Privacy Officer for Health Information Technology (i.e., Electronic Medical Records)

by Christina Frangiosa

On February 13, 2009 – four days before the Stimulus Bill was enacted by President Obama – Senator Sheldon Whitehouse (D-Rhode Island) introduced Senate Bill 444, entitled “National Health Information Technology and Privacy Advancement Act of 2009.” This Bill follows on the heels of both HIPAA’s Privacy Rule (45 CFR Parts 160 and 164, Subparts A and E) and certain amendments in the Stimulus Bill (enacted on February 17, 2009 as Public Law No. 111-5) in that it provides specific detail about how the health information technology system would be created.

Among other things, this Act proposes the creation of a Corporation to coordinate the activities of various federal agencies and to effectuate the creation of a national program for health information technology. (Section 5.) The corporation would be required to be incorporated, within 180 days of the enactment of the Bill, by nine individuals whose skills and background are specified in the Act. (Id.)

Of particular interest in this Bill is the identification of a Chief Privacy Officer, along with a detailed specification of duties. (Section 5(d)(1).) Although the Stimulus Act provided that a Chief Privacy Officer be appointed within 12 months after the enactment of the Stimulus Act (i.e., by February 2010), the duties ascribed to this CPO were vague: “to advise the National Coordinator on privacy, security, and data stewardship of electronic health information and to coordinate with other Federal agencies (and similar privacy officers in such agencies), with State and regional efforts, and with foreign countries with regard to the privacy, security, and data stewardship of electronic individually identifiable health information.” (Pub. L. No. 111-5 § 3001(e).)

In contrast, S. 444 provides more substantial detail about the duties of this Chief Privacy Officer: (i) “ensure that the use of technologies by the corporation sustain, and do not erode, privacy protections relating to the use, collection, and disclosure of personal information;” (ii) ensure that all personal information kept in the system is maintained as required by the Privacy Act of 1974; (iii) “evaluate legislative and regulatory proposals involving the collection, use, and disclosure of personal information by the Federal Government;” (iv) report on proposed rules and procedures of the corporation, including the type of information collected and the number of people affected; and (v) provide an annual report to Congress on the corporation’s activities affecting privacy. (Section 5(d)(1)(B).) The corporation is only supposed to exist for ten years. (Section 5(h).)

This corporation – and implicitly the Chief Privacy Officer as the operating head of the corporation – would operate a national health information technology and privacy system and would be the gatekeeper to the data held in the system. The Bill contemplates that the corporation would provide data access both to individuals and to “authorized providers and payers of health care services” – as well as determine the rules for accessing the non-personally identifiable information in the system. (Section 5(f)(1)(B) and (C).)

Impact

Currently, individual providers and health plans maintain their own sets of their patient’s medical records. If one wanted a copy of his or her medical records from his or her family doctor, he or she could obtain a copy from the doctor. Hospital records are similarly kept by the hospitals. Each of these providers can also set up relationships with data repository centers (known as “business associates” under HIPAA) to manage the protected health information (PHI) of their patients. This system allows them to forward to an outside administrative organization any requests for access to a particular patient’s record – and thereby reduce some of the administrative burden of maintaining electronic medical records on the actual provider.

Both the Stimulus Act and this Bill (and perhaps others) contemplate the collection of these data on a national level, in a central repository. HIPAA’s Privacy Rule is apparently unaffected – “This title may not be construed as having any effect on the authorities of the Secretary [of Health and Human Services] under HIPAA privacy and security law.” (Pub. L. No. 111-5 § 3009(a)(1).) As a result, the national repository would similarly be required to keep as sacrosanct an individual’s personally identifiable information. Still, it’s a national repository – a centralized collection of all of the medical data relating to a particular individual.

The Bill was read twice and referred to the Senate Committee on Health, Education, Labor, and Pensions. See current status. It remains to be see whether this Bill will see any further action in Congress. Given the heightened interest in creating centralized electronic medical records, however, it is likely that a bill of this type, providing the administrative structure to implement the requirements of the Stimulus Bill, would indeed be enacted in the near future.