On Wednesday, World Health Organization Director-General Tedros Adhanom declared that the COVID-19 outbreak "can be characterized as a pandemic," cautioning that the WHO has "rung the alarm bell loud and clear." At the time of the announcement, the WHO noted that there were 118,000 cases reported globally in 114 countries. In its latest situation report, the WHO indicates that as of March 16, there have been 167,511 cases in 151 countries. The Director-General also stated that "[t]his is not just a public health crisis, it is a crisis that will touch every sector – so every sector and every individual must be involved in the fight." The WHO's declaration on Wednesday – and global developments since then – raise the question of how the pandemic is affecting the patent community.
Yesterday, we reported on the impact of the COVID-19 pandemic on the U.S. Patent and Trademark Office, World Intellectual Property Organization, European Patent Office, and Federal courts, including, in particular, the Federal Circuit. Today we present the latest Patent Office and Federal Court responses to the COVID-19 pandemic.
In a USPTO Alert e-mail distributed earlier today, the U.S. Patent and Trademark Office announced some relief for customers affected by COVID-19. In particular, the Office declared that it "considered the effects of coronavirus to be an 'extraordinary situation' within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners," and thus, would be waiving petition fees in certain situations for customers impacted by the coronavirus. More specifically, the Office explained in an official notice posted on its website that:
For patent applicants or patent owners who were unable to timely reply to an Office communication due to the effects of the coronavirus outbreak, which resulted in the application being held abandoned or the reexamination prosecution terminated or limited, the USPTO will waive the petition fee in 37 CFR 1.17(m) when the patent applicant or patent owner files the reply with a petition under 37 CFR 1.137(a). See 35 U.S.C. § 41(a)(7). The inclusion of a copy of this notice with the reply required to the outstanding Office communication will be treated as a representation that the delay in filing the reply was due to the effects of the Coronavirus outbreak, and as a request for sua sponte waiver of the petition fee under 37 CFR 1.17(m). In addition, the petition under 37 CFR 1.137(a) must include a statement that the delay in filing the reply required to the outstanding Office communication was because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply.
The Office recommended that patent applicants and owners taking advantage of the fee waiver should "promptly file the petition under 37 CFR 1.137(a)," and in particular, "not later than two months of the issue date of the notice of abandonment or the notification that reexamination prosecution has been terminated" or "not later than six months after the date the application became abandoned or the reexamination prosecution was terminated or limited" (in the event that the patent applicant or owner did not receive a notice of abandonment or notification that reexamination prosecution has been terminated), in order to be entitled to a waiver of the petition fee.
The Office also makes it clear that "[t]his notice does not grant waivers or extensions of dates or requirements set by statute," reminding stakeholders that:
[T]he following patent-related time periods are not extendable by petition: (1) the period set forth in 35 U.S.C. § 119(a)-(d) to file a nonprovisional patent application claiming the benefit of a prior-filed foreign application; (2) the period set forth in 35 U.S.C. § 119(e) during which a nonprovisional application claiming the benefit of a prior filed provisional application must be filed in order to obtain benefit of the provisional application's filing date; (3) the copendency requirement of 35 U.S.C. § 120 between a parent application which issues as a patent and a later filed child application, which requires that the child application be filed prior to issuance of the parent application; (4) the three-month time period to pay the issue fee set forth in 35 U.S.C. § 151; and (5) the 35 U.S.C. § 304 two-month time period from the date of patentee service, for a requester to file, in an ex parte reexamination, a reply to a statement filed by the patentee.
Like the USPTO, the World Intellectual Property Organization issued an update on COVID-19 today, announcing that it was "reserving access to its Geneva, Switzerland, headquarters for personnel essential to the delivery of the Organization's business continuity protocol, while reassuring that processing of applications filed via WIPO’s Global IP Services has not been affected by the Covid-19 outbreak." WIPO noted that via the implementation of its business continuity plans, it has been able to continue to process applications filed through the Patent Cooperation Treaty (PCT), the Madrid System for the International Registration of Marks, the Hague System for the International Registration of Industrial Designs, as well as administer other IP and related systems.
On Sunday, the European Patent Office provided a notice concerning the disruptions due to the COVID-19 outbreak. In particular, the EPO announced that:
As a state in which the European Patent Office is located the Federal Republic of Germany, like many other Contracting States, is experiencing restrictions on the movement and circulation of persons as well as on certain services, exchanges and public life in general, which can be qualified as a general dislocation within the meaning of Rule 134(2) EPC. Periods expiring on or after the date of the publication of this notice are thus extended for all parties and their representatives to 17 April 2020. In accordance with Article 150(2) EPC this applies also for international applications under the PCT. The above period may be further extended by the publication of another Notice in case the dislocation extends beyond the aforementioned date.
Thus, periods expiring on or after the March 15, 2020 will be extended for all parties and their representatives to April 17, 2020. The EPO also reminded applicants, parties, and their representatives that:
Rule 134(5) EPC offers a safeguard in the case of non-observance of a time limit as a result of a dislocation in the delivery or transmission of mail caused by an exceptional occurrence affecting the locality where an applicant, a party or their representative resides or has his place of business. This provision applies to cases where the failure to observe time limits is the result of exceptional circumstances beyond the applicant's control and may therefore be invoked by any applicants, parties to proceedings or their representatives affected by the disruption in the areas affected by the outbreak.
The EPO's notice suggested that this safeguard would be available to applicants, parties, and their representatives residing in "high risk areas," which currently are defined by the EPO as China, South Korea, Iran, Italy, the German Landkreis Heinsberg in Nordrhein-Westfalen, and the French region Grand Est. The EPO notes that under Rule 134(5) EPC:
[A]ny document received late will be deemed to have been received in due time if the person concerned offers evidence that on any of the ten days preceding the day of expiry of a period, it was not possible to observe the time limit due to this exceptional occurrence and that the mailing or the transmission was effected at the latest on the fifth day after the end of the disruption.
Finally, the EPO notice states that:
[W]here the interested party offers satisfactory evidence that a time limit under the PCT was not met due to natural calamity or other like reason in the locality where the interested party resides, has his place of business or is staying, and that the relevant action was taken as soon as reasonably possible (and no later than six months after expiry of the time limit in question), the delay in meeting the time limit is excused. This provision applies to international applications pending in the international phase, but not to the priority period.
The Federal Circuit also provided additional information earlier today regarding its response to the COVID-19 pandemic, declaring that it would be restricting public access to the National Courts Building complex as of noon today "[b]ased on declared public health emergencies impacting Washington, D.C. and the National Capital Region and ongoing efforts to mitigate community transmission and the impact of COVID-19." The Federal Circuit's order can be found here, and its advisory can be found here. In its advisory, the Federal Circuit notes that on scheduled argument and hearing days, only (a) arguing counsel and parties with a scheduled in-person hearing and (b) credentialed members of the press will be permitted in the National Courts Building, and that no other members of the public will be permitted to attend argument. The advisory also notes that individuals who have been diagnosed with the COVID-19 virus, who have had known contact with a person with the COVID-19 virus, who have been asked to self-quarantine, or who are experiencing flu-like symptoms (e.g., fever, shortness of breath, or cough) may not enter the courthouse.
Finally, the U.S. Supreme Court announced today that it "is postponing the oral arguments currently scheduled for the March session (March 23-25 and March 30-April 1)," and "will examine the options for rescheduling those cases in due course in light of the developing circumstances." The Court plans to hold its regularly scheduled Conference on March 20, although some Justices may be participating in the Conference by phone, and issue its regularly scheduled Order List on March 23. The Court indicated that "filing deadlines are not extended under Rule 30.1." Although the Supreme Court Building will continue to be open for official business, the Building will remain closed to the public until further notice.
The Court also noted that its postponement of argument sessions in light of public health concerns is not unprecedented, and that the Court postponed scheduled arguments for October 1918 in response to the Spanish flu epidemic, and shortened its argument calendars in August 1793 and August 1798 in response to yellow fever outbreaks.
Patent Docs will continue to monitor and report on patent-related developments related to the COVID-19 pandemic.
