USPTO Extends Trademark-Related Timing Deadlines under the CARES Act, as Other National Trademark Offices Extend their Timing Deadlines or Provide Notice of Delays

On March 31, 2020, in response to the Coronavirus Aid, Relief, and Economic Security (“CARES”) Act, the United States Patent and Trademark Office (“USPTO”) extended the time to file certain trademark-related documents and fees. In its announcement, the Director of the USPTO determined that the outbreak prejudices the rights of trademark applicants, registrants, and owners, and provided that persons who are unable to meet trademark-related deadlines due to the COVID-19 outbreak would be granted a 30-day extension for certain deadlines falling between March 27 and April 30, 2020.

The 30-day extension will be provided to any filing accompanied by a “statement that the delay in filing or payment was due to the COVID-19 outbreak . . . .” This provision applies to practitioners, applicants, registrants, or other persons associated with the filing who were personally affected by the outbreak. The USPTO broadly defines such personal reasons to include any “circumstances” that interfered with timely filing or payment, including office closures, inability to access files or other materials, cash flow interruptions, personal or family illnesses, and travel delays. Any extension of time fees would still be due at the time of filing, but the extension may be requested without payment of any additional fee.

The 30-day extension applies to all of the following: Continue Reading

Complimentary Webinar – The Current State of U.S. Patent Litigation: Have We Reached the Bottom Yet?

Intellectual Property & Technology partners Steven Auvil and Tamara Fraizer will assess the current state of US patent litigation, including historic trends, major law changes impacting patent litigation, a review of 2019 and an assessment of the road ahead.

Join us Thursday, April 9, 2020 at 12pm EDT/9am PDT. For more information, and to register, please click here. (1 Hour General CLE Credit available in AZ, CA, CT, NJ, NY and pending in OH.)

“Numerous Reasons” Support Finding Inequitable Conduct: Another Example of the Federal Circuit’s Current Approach to Inequitable Conduct

gavelWhen the Federal Circuit decided Therasense in 2011[1], many thought the heightened standard announced by the Court for proving equitable conduct spelled the practical end of the doctrine. Contemporary commentators noted, “The Federal Circuit Continues to Make Inequitable Conduct More Difficult to Prove” and asked, “Is Inequitable Conduct in Patent Prosecution Dead?”

It’s not dead. But the Federal Circuit appears more cautious, applying the doctrine often only where it perceives a pattern of misconduct.[2] To find that pattern, the Federal Circuit has taken a more holistic approach, scrutinizing both behaviors before the Patent Office and in business. For example, in Regeneron Pharms, the Court upheld a finding of inequitable conduct based on an adverse inference of intent arising from post-prosecution and litigation misconduct.[3] In Gilead v. Merck, the Court held that Merck’s business and litigation misconduct supported a finding of unclean hands.[4]

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USPTO Joins Other National Patent Offices by Extending Filing and Fee Deadlines in Response to COVID-19

The recent passage of the massive Coronavirus Aid, Relief, and Economic Security (“CARES”) Act by Congress authorized the United States Patent and Trademark Office (“USPTO”) to temporarily adjust its statutory time periods for replies and fees to help applicants file during the COVID-19 outbreak. With countless individuals and businesses significantly impacted by the growing pandemic, on March 31, 2020, the USPTO announced that certain deadline waivers could be requested to prevent patent applicant rights being forfeited as a result of this global hardship.

In its patent notice, an extension of 30 days is now available on deadlines for responses to final and non-final office actions, as well as various appeal documents. For small and micro entities, an extension is also available for responses to pre-examination formalities. These deadlines must have originally fallen between March 27 and April 30, 2020 (inclusive), and the filing must include a statement that the delay in filing was due to the COVID-19 outbreak. The USPTO appears to be taking a wide interpretation of applicants’ reasons on how COVID-19 delayed their filing, and would not require any further documentation nor evidence. The waiver itself can be requested without any additional fee, but any original extension of time fees would still be due at the time of filing. Acceptable reasons include, but are not limited to, office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment. Continue Reading

Potential Bankruptcies Caused By COVID-19: What IP Licensees and Licensors Need to Know

It comes as no surprise that the COVID-19 pandemic has and will continue to negatively impact our economy and increase bankruptcy filings.  Attorneys Mark Salzberg and Ivan Rothman analyze impacts of COVID-19 related bankruptcies for IP licensees and licensors in our sister blog, Restructuring GlobalView. The post details concerns from the licensee’s and licensor’s perspectives, explains what both parties should do to protect their interests, and reviews issues licensees should consider regarding escrow agreements.

To read the full post, click here.

Foreign-based Companies Can Meet the Section 337 Domestic Industry Requirement

The United States International Trade Commission (ITC) can provide a powerful alternative forum for enforcement of Intellectual Property Rights, including U.S. patents.[1] But there are limitations on the actions that can be brought at the ITC. For example, to bring an action for patent infringement at the ITC, a patent owner must demonstrate, inter alia, that a “Domestic Industry” exists or is in the process of being established with regard to the articles protected by the patent.[2] Although the ITC has long held that there is no mathematical threshold or “rigid formula” to establish the existence of a Domestic Industry,[3] foreign-based companies often hesitate to enforce their patent rights at the ITC out of concern that they will not be able to meet the Domestic Industry requirement. The ITC’s recent decision in Certain Beverage Dispensing Systems and Components Thereof, Inv. No. 337-TA-1130, demonstrates, however, that foreign-based companies should not overlook the ITC when considering where to enforce their patents. Continue Reading

CARES Act Authorizes the PTO to Extend Patent and Trademark Deadlines during Coronavirus Emergency

Other Squire Patton Boggs articles on the SPB Coronavirus Hub have highlighted the many remedial provisions of the Coronavirus Aid, Relief, and Economic Security (CARES) Act of 2020. Intellectual Property owners were not left out. Section 12004 gives the Director of the Patent and Trademark Office (PTO) the authority to “toll, waive, adjust, or modify” statutory deadlines under the Patent Act and the Trademark Act during the Emergency Period, if the Director determines that the emergency “materially affects” the functioning of the PTO, prejudices the rights of trademark or patent applicants, registrants, owners or others appearing before the PTO, or prevents them from filing a document with the PTO or paying a PTO fee.

The Emergency Period, for this purpose, commenced with the passage of the CARES Act on March 27, 2020, extends for 60 days following the end of the Coronavirus National Emergency declared by the President. The PTO Director must publish a public notice of any determinations under this provision, along with his reasons; if the modifications will be in effect for more than 120 days, the Director must also submit an explanatory statement to Congress.

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Moving Cases Toward Completion During the Coronavirus Pandemic: Has the Time Finally Come for Increased Reliance on Remote Hearings and Depositions?

As more and more courts grapple with the Coronavirus Public Health Emergency, many are issuing Administrative Orders with provisions for conducting business via teleconference or videoconference. Most courts and litigators are familiar with holding status conferences and discovery dispute hearings by phone conference. But what should courts and parties do about complex hearings such as Markman hearings while social distancing measures are in place, especially if witnesses may be called? And what about using technology to take remote depositions to keep cases moving toward completion? Continue Reading

USPTO Launches New Innovation Platform To Improve Inventor Diversity

On March 24, 2020, the US Patent and Trademark Office (“USPTO”) launched the “Expanding Innovation Hub” (“Hub”), a centralized online platform to make the patent process more accessible to diverse inventors. USPTO Director Andrei Iancu and Deputy Director Laura Peter described the Hub as part of the USPTO’s efforts to “inspire more women, minorities, veterans, and geographically and socioeconomically diverse applicants to join the innovation economy.”

The Hub is comprised of three components:  The first is the Demystifying the Patent System toolkit, designed to help inventors understand the process for obtaining a patent. The second, a Mentoring toolkit, is intended to assist organizations in establishing an infrastructure to “connect experienced innovators with the next generation” of inventors within their organization. The third, Community Group Resources, is designed to help organizations establish an infrastructure to connect groups of employees with shared characteristics, interests, and goals.

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False Advertising Claims Lurk in the Age of COVID-19

Companies around the world are scrambling to respond to the unprecedented challenges posed by the COVID-19 pandemic.  We have all received many emails and seen a plethora of ads and social media posts by manufacturers, retailers and service providers about steps they are taking to respond to COVID-19 related challenges.  The messaging is vital for keeping touch with customers and clients and supporting the public’s confidence that current circumstances are not spiraling out of control.  While critical, however, the rush to provide messaging about the availability of products and services can be a litigation trap for the unwary.  False advertising investigations or enforcement actions by governments, and false advertising litigation spawned by consumer plaintiffs or competitors can dog those who fail to message with care. Continue Reading

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