The Coronavirus Aid, Relief, and Economic Security (CARES) Act, the historic $2.2 trillion fiscal stimulus bill signed into law on March 27, authorizes the US Patent and Trademark Office and US Copyright Office to extend statutory deadlines in response to the coronavirus pandemic.
Section 12004, paragraph (a) of the CARES Act gives the director of the USPTO discretion to toll, waive, adjust, or modify deadlines that are established by “[T]itle 35, United States Code [Patents], the Trademark Act, section 18 of the Leahy-Smith America Invents Act (35 U.S.C. 321 note), or regulations promulgated thereunder.”
Such tolling can occur if the director determines that the COVID-19 emergency (1) materially affects the USPTO; (2) prejudices the rights of applicants, registrants, patent owners or trademark owners, or others appearing before the USPTO; or (3) prevents applicants, registrants, patent or trademark owners, or others appearing before the USPTO from filing a document or fee with the USPTO. If the director makes the necessary determination, he is required to issue a public notice to that effect.
Section 12004, paragraph (e) provides that the emergency period shall include the duration of the portion of the emergency declared by the president pursuant to the National Emergencies Act on March 13, 2020; begins on or after the enactment of the CARES Act; and extends for 60 days after the national emergency is concluded.
In any event, the director’s ability to take action under the CARES Act will sunset two years after the passage of the CARES Act (or by March 27, 2022). The bill does not say whether the director will have the authority to retroactively extend deadlines that expired prior to the enactment of the CARES Act. (In contrast, Section 19011, discussed below, affirmatively gives the register of copyrights the ability to grant extensions retroactively.)
The CARES Act gives wide discretion to the director concerning deadlines established by US patent and trademark laws and regulations, but does not address the obligations of the United States or other jurisdictions under international conventions and treaties, such as Patent Cooperation Treaty deadlines or priority filing deadlines under the Paris Convention. As a result, applicants should use caution before taking or delaying an action that might impact an international filing right.
It remains to be seen whether the director of the USPTO will undertake any of the actions authorized by Section 12004(a), particularly in light of the capability of applicants to file most documents electronically. Nevertheless, giving the director the discretion to act here will provide flexibility should any aspect of a USPTO function be adversely impacted by the coronavirus (COVID-19).
The CARES Act provides similar emergency provisions for copyrights. In particular, Section 19011, paragraph (a) creates new Section 710 of the Copyright Act, which affords the register of copyrights “emergency relief authority” to temporarily “toll, waive, adjust, or modify any” timing provision, effective period, or procedural provision under the Copyright Act or related regulations in Title 37 of the Code of Federal Regulations (other than most statutes of limitations and most copyright term provisions).
Such authority, however, can only be exercised if, “on or before December 31, 2021, the Register of Copyrights determines that a national emergency declared by the President under the National Emergencies Act . . . generally disrupts or suspends the ordinary functioning of the copyright system . . . or any component thereof, including on a regional basis.” In the event of such emergency, the register’s modifications can apply on a prospective or retroactive basis, provided the deadline relevant to any retroactive measure did not lapse before the declaration of the national emergency.
Notably, to effectuate such modifications, new Section 710(b) of the Copyright Act also suspends normal rulemaking procedures under the Administrative Procedure Act (APA), instead only requiring that the register provide “general public notice detailing the action being taken.” (In contrast to Section 19011, Section 12004 does not reference the APA, but only requires the director of the USPTO to publicly publish notice of his intent to toll, waive, adjust, or modify a timing deadline.)
For both the USPTO and the USCO, notice to Congress is required within 20 days if a modification is to be in effect for a consecutive or cumulative period exceeding 120 days.
Morgan Lewis will continue to monitor developments as they occur.
For our clients, we have formed a multidisciplinary Coronavirus COVID-19 Task Force to help guide you through the broad scope of legal issues brought on by this public health challenge. We also have launched a resource page to help keep you on top of developments as they unfold. If you would like to receive a daily digest of all new updates to the page, please subscribe now to receive our COVID-19 alerts. One of our many resources includes a list of current known IP office closures and extensions around the world.
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, Christopher I. Halliday, Anita B. Polott, Seth A. Rappaport, Rachel E. Fertig, Kenneth J. Davis, and Dana S. Gross, or any of the members of Morgan Lewis’s COVID-19 Intellectual Property Working Group:
Jason C. White
Christina A. MacDougall, Ph.D.
John V. Gorman