As discussed in an earlier post, the CARES Act authorizes the Director of the United States Patent and Trademark Office (“USPTO”) and the Register of Copyrights to “toll, waive, adjust, or modify” certain timing deadlines and provisions under trademark and copyright law in response to the coronavirus outbreak. The USPTO and the Copyright Office have now issued notices exercising these powers.
The notice issued by the USPTO extends by 30 days the deadline for certain trademark filings that were due March 27 through April 30, 2020, including certain of the following:
- Responses to Office Actions, including notices of appeal from a Final Refusal;
- Statements/Affidavits of Use, Requests for Extension of Time to file Statements of Use, and Affidavits of Excusable Nonuse;
- Notices of Opposition and Requests for Extension of Time to File Notices of Opposition;
- Priority Filings based on foreign applications and Requests to Transform an Application based on foreign applications; and
- Renewal Applications.
The filing must be accompanied by a statement that the delay in filing or payment was due to the fact that the practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, such that the outbreak materially interfered with the timely filing or payment. This could be due to office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances.
The USPTO also reaffirmed its offer to waive fees for petitions to revive and reinstate applications and registrations that are abandoned or canceled or which expire due to the inability to timely respond to a USPTO communication as a result of the COVID-19 outbreak as we described in this prior post.
For all other situations not addressed by the USPTO notice, a request or motion for an extension of time may be made as appropriate.
- Copyright Office
The notices issued by the Copyright Office relating to the COVID-19 outbreak are available here. They provide the following:
- Timing for Registration – Generally, a copyright owner is eligible to be awarded statutory damages in an infringement action only if the work has been registered prior to the infringement or within three months of the work’s publication. To mitigate the effect of any disruption in registration timing due to the coronavirus outbreak, the Copyright Office has provided the following:
- For copyright applications that can be submitted entirely in electronic form, the timing provisions are unchanged.
- If the applicant can submit an application electronically but is unable to submit a required physical deposit, the applicant should upload, together with the application, a declaration or similar statement certifying, under penalty of perjury, that the applicant is unable to submit the physical deposit and would have done so but for the national emergency. The declaration must also include supporting evidence, such as statements that the applicant is subject to a stay-at-home order or that the applicant is unable to access the physical materials due to closure of their business. In this case, if the three-month window for registration after the date of first publication was open as of March 13, 2020, the window will be extended, provided that the applicant submits the required deposit within 30 days after the date the disruption ended as determined by the Register.
- If the applicant is unable to submit an application electronically or physically, the applicant may submit an application after the Register has announced the end of the disruption. The applicant must include a declaration or similar statement certifying, under penalty of perjury, that the applicant was unable to submit the application and would have done so but for the national emergency. The declaration must include supporting evidence, such as statements that the applicant did not have access to a computer or the internet or that the applicant was prevented from accessing or sending the required physical materials for reasons similar to those set out in the preceding bullet. In this case, the three-month window will be tolled between March 13, 2020, and the date that the disruption ended.
- Timing for Termination – Under certain circumstances, the Copyright Act allows authors to reclaim copyright interests that have been transferred to others. In general, an author may terminate a transfer within a five-year window, provided that the author serves a notice on the transferee between two and ten years before the chosen termination date. After service, the notice must be recorded with the Copyright Office. To ensure that authors are not deprived of their ability to effect this termination, the Copyright Office has provided the following:
- If the termination window is expiring, the window for service of a notice of termination will be extended if:
- the termination window expires on or after March 13, 2022, and less than two years after the date the disruption by coronavirus ends;
- the author serves a notice of termination within 30 days after the date the Register announces as the date that the disruption ended; and
- the notice of termination is accompanied by a declaration or similar statement certifying, under penalty of perjury, that, but for the national emergency, the author would have been able to serve the notice at least two years before the close of the window, setting forth an explanatory statement supporting the declaration.
- If the window to record is expiring, the requirement that the notice be recorded before the date of termination will be waived if:
- the author has already served the notice on the transferee;
- the termination date listed on the notice is on or after March 14, 2020, and on or before the date the Register announces as the date the disruption ended;
- the author records the notice within 30 days after the date the disruption ended; and
- the recordation submission includes a declaration or similar statement certifying, under penalty of perjury, that, but for the national emergency, the author would have served the notice in a timely manner. The declaration must also set forth an explanatory statement supporting the certification, such as a statement that the author was prevented from accessing or mailing the required materials.
The Copyright Office says it will also consider additional appropriate modifications as it becomes aware of sufficient disruption to the copyright system caused by the outbreak. The above modifications will be in effect for 60 days, unless the Register issues an announcement stating that the period of disruption ended before that time or that a further extension is necessary.
In its notices, the Copyright Office has also set out some alternate procedures for electronic applications accompanied by physical deposits to mitigate the effect of the temporary closure of the Copyright Office.
It would be best if all applicants and registrants could timely file their documents with the USPTO and the Copyright Office if they are able. However, for those who are unable to timely file because of the effects of the Coronavirus outbreak, we recommend you confer with an intellectual property attorney to confirm if and how your deadline may be extended under the guidance issued by the USPTO and the Copyright Office.
Elizabeth M. Stamoulis