Section 12004 of the Division B-Emergency Appropriations for Coranavirus Health Response and Agency Operations authorizes the director of the United States Patent and Trademark Office (USPTO) to “toll, waive, adjust or modify any timing deadline” established by title 35 of the United States Code, the Trademark Act or regulations promulgated thereunder. The authority given to the director is effective during an emergency period within which the director determines that the emergency related to such period:

• materially affects the functioning of the USPTO;
• prejudices the rights of applicants, registrants, patent owners or others appearing before the USPTO; or
• prevents applicants, registrants, patent owners or others appearing before the USPTO from filing a document or fee.

If the director determines that changing a deadline is appropriate, the director shall publicly publish a notice to such effect. The emergency period includes the duration of the portion of the emergency declared by the president pursuant to the National Emergencies Act on March 13, 2020, as a result of the COVID–19 outbreak (and any renewal thereof).

Regarding situations that materially affect the functioning of the USPTO, it is unclear how the USPTO will be able to address prolonged or expanded stay-at-home orders. The USPTO has historically implemented a telework program that has provided a means for many USPTO employees to work remotely at least some of the time. The FY 2018 Telework Annual Report (Annual Report) lists 11,093 USPTO employees utilizing the telework program. As one example, that Annual Report indicates that during one day of federal office closures, trademark examining attorneys performed more than 85 percent of the work they did on recent comparable days without closures or storms, and patent examiners accomplished an average of 105 percent of the work they did on recent comparable days. Accordingly, the USPTO may be well-suited to address prolonged stay-at-home orders without materially affecting its functions if required to do so.

It is less certain how the director will assess how the COVID-19 emergency is prejudicing the rights of applicants, registrants, patent owners, etc. Regarding patent applicants, it is likely more difficult for applicants to communicate with, and acquire information from, inventors if they are unable to meet at their place of employment. Further, acquiring signatures for documents to be filed before the USPTO is likely more difficult with employees under stay-at-home orders.

While the telework options for USPTO employees may have partially prepared the USPTO for the current COVID-19 situation, the outbreak likely prejudices various applicants, registrants, patent owners or others appearing before the USPTO. Accordingly, the director may likely toll, waive, adjust or modify certain timing deadlines and publications from the USPTO should be monitored for potential changes in timing deadlines.

At Taft, we will be monitoring publications from the USPTO for potential changes in timing deadlines. Please don’t hesitate to contact one of Taft’s Intellectual Property attorneys with any questions regarding interactions with the USPTO.

Please visit our COVID-19 Toolkit for all of Taft’s updates on the coronavirus.