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Patent Office Relief Comes as IP Attorneys Shuffle Priorities

April 2, 2020, 10:01 AM

The Patent and Trademark Office’s deadline and fee extensions could open up more options for intellectual property attorneys and clients fast reshuffling their priorities after the new coronavirus outbreak.

Remote work, business slowdowns and the patent office’s public closure have posed new challenges for patent and trademark applicants. Companies with multiple applications are lining up which ones to proceed with and which to put on the back burner. Small businesses are weighing putting off filings amid economic uncertainty.

The patent office’s March 31 decision—including extending deadlines for replies to the USPTO in patent examination, notices of appeal, requests for oral hearing and maintenance fees— provides relief and flexibility for companies and innovators dealing with a new reality, attorneys say.

“At a time like this, when you have to choose between food and paying a patent fee, the fees are falling by the wayside,” said Bridget Smith, a Lowenstein & Weatherwax LLP patent attorney.

Parties impacted by the coronavirus that are facing filing and fee deadlines falling between March 27 and April 30 now get an extra 30 days to meet them. That includes due dates during the patent and trademark application process, and those in PTO tribunal proceedings.

Shifting deadlines can help attorneys clarify filing and fee payment strategies.

“A client with an application directed to a core or critical feature of their number one selling product, something that allows them to bring in a new version and sell more units, they’ll continue with those applications,” Jonathan Link, a Morris, Manning & Martin LLP patent attorney, said.

Others may decide to ditch the application process entirely now that new deadlines are clearer. Some “are looking hard at whether they need that protection,” Link said.

Small Business Conundrum

Ditching applications may not be a luxury some small companies can afford. Intellectual property is critical to many of their business strategies, and often a key to a core product, Link said.

The patent office acknowledged that its actions were targeted at small businesses. “Ultimately, our goal is to ensure not only that inventors and entrepreneurs can weather the storm, but that they can also hit the ground running once it passes,” patent office director Andrei Iancu said in a March 31 statement.

Companies will have to explain that they’ve been impacted by the pandemic in order to take advantage of the extensions and other relief measures. And the patent office’s definition of impact is “pretty broad,” Steven Shape, a managing partner at Dennemeyer & Associates, said.

Parties “basically have to make the allegation and take advantage,” he said.

But the delays offer attorneys more leeway in how they advise clients, Shape said. “If the client needs it, if they’re having to make difficult decisions because of the environment, we’ll go ahead and suggest they use that opportunity,” he said.

Attorneys benefit, too. Practitioners’ "offices are shut down, and often they have interrupted access to files,” Smith said.

The patent office’s examination relief is comprehensive, Smith said.

“Almost every possible paper that might come up in examination or re-exam is covered by this notice,” Smith said.

The patent office’s relief also includes proceedings in the disputes at the agency’s tribunals—the Patent Trial and Appeal Board and the Trademark Trial and Appeal Board. For example, parties in disputes can delay filing requests for rehearing of PTAB decisions.

The patent office in March announced that it was holding all in-person meetings remotely, including hearings in PTAB trials.

“Parties are struggling with what to do with PTAB depositions. I think the board is handling that on a more case-by-case basis, and will be reasonable and move things out as much as they can,” Scott McKeown, chair of Ropes & Gray LLP’s Patent Trial and Appeal Board group, said.

· For additional legal resources, visit Bloomberg Law In Focus: Coronavirus (Bloomberg Law Subscription)

To contact the reporter on this story: Ian Lopez in Washington at ilopez@bloomberglaw.com

To contact the editors responsible for this story: Roger Yu at ryu@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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