Updates on the Impact of COVID-19 on Intellectual Property Law Practice and Procedures – Updated 1/21/2022

As a service to our clients and colleagues, we are tracking the impact of the COVID-19 crisis on intellectual property and related practices. Following are updates from the United States Patent & Trademark Office (USPTO), the Copyright Office, our local state and federal courts, the Court of Appeals for the Federal Circuit, the European Patent Office (EPO), the European Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO).

Please bookmark this page, which we will update as developments occur.

Disclaimer: This general information is being provided as a courtesy, and should not be taken as legal advice. The response to COVID-19 is changing daily, so please consult with an attorney regarding any extended deadlines or other provisions of law that may be affected by the current situation.

United States Patent & Trademark Office (USPTO)

Examiners at the USPTO continue to work remotely, but the office remains closed to the public. All examiner interviews and proceedings are being conducted by telephone or video conferencing. The USPTO has released a FAQ concerning how its operations have changed as a result of the pandemic.

The USPTO has launched a COVID-19 Response Resource Center to provide information about its programs and other relief offered to those affected by the pandemic.

Patent

Under its new COVID-19 Prioritized Examination Pilot Program, the USPTO will grant prioritized exams to up to 500 applications filed by small or micro entity applicants who claim a product or process subject to the U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19. No prioritized examination fees will be due. The USPTO’s goal is to reach the final disposition of these prioritized applications within six months.

The USPTO has also launched a deferred-fee provisional patent application pilot program for inventions that combat COVID-19. Under the program, applicants may defer payment of the provisional application filing fee until the filing of a corresponding, non-provisional application. In exchange, they must agree that the technical subject matter disclosed in their provisional applications will be available to the public on the USPTO’s website, thereby contributing to the fight against COVID-19 while protecting their patent rights.

To qualify for the program, the subject matter disclosed in the provisional application must concern a product or process related to COVID-19, and must require Food and Drug Administration (FDA) approval for COVID-19 use.

The USPTO has also temporarily waived the requirement for original handwritten signatures in situations where they are ordinarily necessary and is temporarily permitting electronic filing of initial patent term extension applications.

Trademark

Applicants who were unable to submit a timely response or fee in response to an Office Action should file a petition to revive the application. Applicants who missed the 36-month statutory deadline for filing a Statement of Use should file a Petition to the Director. Registrants who missed a statutory deadline resulting in a canceled or expired registration, or who were unable to submit a timely response or fee in response to a post-registration Office Action, should file a Petition to the Director.

For TTAB proceedings, a party that has been prevented by the COVID-19 outbreak from making a filing may file a request (in ex parte appeals) or motion (in trial cases) for an extension or reopening of time as appropriate.

Copyright Office

Acting under the CARES Act, the Copyright Office has adjusted or waived certain deadlines set by statute through November 9. In particular:

• A copyright owner who is unable to submit a required physical deposit with their application may submit the application along with a statement that the physical deposit cannot be submitted due to, for example, inaccessibility of the deposit or the applicant being under a stay-at-home order. In some cases, an electronic deposit may now be accepted where a physical deposit was previously required.
• An applicant who is unable to submit an electronic application during the outbreak can toll the three-month window of Section 412 if they submit an application within thirty days after the end of the disruption, accompanied by a statement that the Applicant was unable to complete the filing due to the COVID-19 outbreak due to, for example, an inability to access the Internet or the required application materials.
• The requirements to provide notices of intention, statements of account and associated royalty payments on compulsory licenses relating to phonorecords will be tolled if an individual or entity who previously made such filings by paper sends a declaration that it cannot do so due to the pandemic.

U.S. Supreme Court

will hear the January and February sessions live in the Courtroom, which will not be opened to the general public. Live audio feeds will continue to be provided on the Court’s website. for the 2020-2021 session by teleconference, with Justices and counsel participating remotely.

The Court’s lengthened 150 day deadline for petitions for writs or certiorari has been revoked, meaning that the normal 90-day deadline of Supreme Court Rule 13 is back in place..

Federal Circuit Court of Appeals

In-person arguments for the January and February sessions will be held via videoconference. Access to the Courthouse will be limited to arguing counsel and only one other individual (client, second-chair attorney or paralegal). All attendees must wear face masks, regardless of vaccination status. Counsel may request leave to appear remotely if they believe that travel to and presence at argument would place counsel or a person in counsel’s household at risk of developing health complications from COVD. Leave for individual counsel to appear remotely does not absolve the remainder of attendees from appearing in person.

In-Person paper filings are available through the night drop box on H Street, N.W., as well as by couriers, third-party commercial carriers and members of the public. Despite this, the Clerk’s Office encourages filing paper documents through the U.S. Postal Service to the Clerk of Court.

Audio of Federal Circuit Hearings will be strreamed via YouTube – see https://www.youtube.com/channel/UC78NfBf28AQe3x7-SbbMC2A

The Federal Circuit has specifically indicated that despite the epidemic, all deadlines remain in place. In-person oral arguments, however, are suspended until further notice. Most business before the Court of Appeals for the Federal Circuit (CAFC) can be carried out using their electronic filing system. The CAFC Clerk’s Office has issued guidance on how counsel may accomplish physical service of papers where required. First, it encourages planning ahead to have someone in the office or working remotely handle the printing and mailing of such documents to avoid delay. If that is not possible, a motion may be made to delay the service of process. It should be noted that delaying service may impact responsive deadlines that are calculated from the date of service not filing.

First Circuit Court of Appeals

Oral arguments through at least the February 2022 sessions will be held by videoconference, with live audio available to the public via the First Circuit’s YouTube channel – https://www.youtube.com/channel/UCiq_Kg0zEPrjMFK_s-KP5_g/. Appendices to briefs will not be accepted in paper form, but must instead be filed electronically.

Local Federal Courts

All of New England’s Federal District Courts have issued orders regarding the COVID-19 outbreak, which generally run along the same lines. All but the District of Vermont have allowed bench trials to proceed or be stayed at the discretion of individual judges. The courts have also ordered the following schedule changes:

Federal District Courts:

1. Massachusetts
   • Jury trials are suspended through at least February 11, 2022, as well as in-person proceedings, other than jury trials specifically approved by the Court for the Springfield and Worcester courthouses. The suspension will be revisited on an on-going basis.
   • Trial-specific deadlines to remain or be continued at the discretion of the individual judges.
   • Public counter hours reduced to 9:00 am – 2:00 pm.
   • Members of the public who wish to listen in on a hearing or trial can find the relevant information at https://forms.mad.uscourts.gov/courtlist.html.
2. Maine
   • In-court hearings and non-jury trials have resumed.
   • Court deadlines remain in effect, and are not extended or suspended;
   • All people entering the courthouse must wear a mask, regardless of vaccination status, and those who will remove their mask for a speaking role must submit to a rapid antigen test.
3. New Hampshire
   • Civil jury trials and bench trials and court-sponsored mediations are currently taking place. Mediations can be conducted by videoconference or in-person.
   • All civil and criminal hearings are to occur telephonically or by videoconference or by an in-court hearing at the discretion of the judge.
4. Vermont
   • All civil trials, jury or bench, have resumed.
   • In-person hearings have resumed.
   • Masking is required within Vermont’s federal courthouses regardless of vaccination status. Social distancing is required for unvaccinated people..
5. Rhode Island
   • The Court has resumed in-person civil trials.
   • People entering the courthouse will have to either present proof of vaccination or take a rapid COVID test on site. All who enter must wear a mask
   • Hearings may continue to take place by telephone or video conference.
   • Depositions in civil cases are to be conducted by remote video means absent a court order to the contrary.
   • The Clerk’s Office is closed to the public.
6. Connecticut
   • All jury trials scheduled to begin prior to February 1, 2022 are continued indefinitely. Judges may schedule jury selections and trials to begin after February 1st at their discretion.
   • Individual judges will determine whether to hold non-jury proceedings and whether they will be in-person or video or telephone conference.
   • All courthouse attendees must wear masks. Individual judges may impose additional requirements on a case-by-case basis.

All of the courts have barred access to anyone who has been diagnosed or been exposed to another who has been diagnosed with the virus, exhibited symptoms of the virus, or been asked to quarantine, and those who have traveled internationally within the preceding 14-day period of time. Some of the courts have also imposed restrictions on those who were recently in a cruise ship or in a regional pandemic hotspot.

These courts are also generally allowing most papers to be filed electronically, sent by first-class mail, or placed in a dropbox that date-stamps the documents.

New Hampshire is allowing for filings by e-mail for those without access or authorization to ECF, the courts’ electronic filing system. Such filings should be sent to ecfintake@nhd.uscourts.gov. New Hampshire has also specifically indicated that these changes do not impact service, and all papers remain subject to the service requirements already in existence. The other courts do not specifically address service, and so parties should continue to comply with service requirements of the Federal and local rules.

Massachusetts State Courts

Jury trials are paused until at least January 31, 2022. Courts remain open for in-person business, but will conduct matters remotely where possible. Masks are required for those entering a courthouse.

Depositions may be conducted remotely without the need for leave of court or stipulation of the parties. A witnesses’ desire to appear in person shall not constitute grounds to quash a notice for a remote deposition.

The Supreme Judicial Court of Massachusetts is requiring that all attorneys of record provide an email address to the court and other parties to allow for electronic service. Where the date of service of communication triggers a subsequent due date, three additional days are added to the prescribed period. These rules do not apply to service on a self-represented party unless the party agrees in writing.

Remote Online Notarization in Massachusetts

Massachusetts’ emergency authorization of remote online notarization of signatures has lapsed. Remote online notarization was only temporarily authorized through December 15, 2021, and has not yet been extended, although a bill to make the authorization permanent has been filed.

International

WIPO will transmit documents only via email until further notice. This change affects patent documents for applications filed under the Patent Cooperation Treaty (PCT) system, as well as trademark and design applications under the Madrid and Hague systems, respectively.

The European Patent Office (EPO) has issued several new guidelines as follows:

1. EPO has resumed holding limited oral hearings at the appeals board as of May 15, 2020. The board will contact parties in advance to confirm their ability to attend their hearing.
2. All oral proceedings in opposition proceedings that were scheduled to take place before December 31 are postponed until further notice unless they were already confirmed to take place by videoconference. All oral proceedings in examination will take place by videoconference.
3. Search, examination, and opposition divisions will continue with their other activities, with interviews in examination to occur by videoconference. Waivers to allow for in-person oral proceedings may be submitted and will be decided at the sole discretion of the competent division, which will not be appealable.
4. Where oral proceedings require the taking of direct evidence, they will not be held by videoconference.

European Intellectual Property Office (EUIPO)

The EUIPO has declined to extend time limits beyond the previous extended date of May 18, 2020. Parties that are still affected by the COVID-19 outbreak after that date may request an extension of up until six months, however, and reasoned requests will be granted without detailed justification. Additional extensions may be requested thereafter in the case of exceptional circumstances.

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About Lando & Anastasi, LLP

Founded in 2003, Lando & Anastasi, LLP is a full service, mid-sized boutique intellectual property law firm. We offer creative solutions to protect, expand and leverage our clients’ IP assets. We are trained scientists and engineers who take pride in working collaboratively across practices to best understand the converging technologies of our clients’ businesses. Our practice includes patent prosecution and litigation; opinions and strategic counseling; trade secrets; trademark and copyright prosecution and litigation; post-grant proceedings, and licensing and transactions. We have experience with multinational corporations to venture-funded startups across a broad range of industries.