Category Archives:Patent Law
USPTO Further Extends Certain Patent and Trademark-Related Timing Deadlines under the CARES Act to June 1, 2020
On April 28, 2020, United States Patent and Trademark Office USPTO director Andrei Iancu circulated a communication further extending USPTO deadlines to file certain trademark and patent-related documents or fees pursuant to Section 12004 of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).
Deadline Extensions
The USPTO has further extended all deadlines which fall between March 27, 2020, and April 30,2020 until June 1, 2020 for any[1]:
Trademark
- response to an Office action, including a notice of appeal from a final refusal, under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
- statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a)
- notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and§ 2.102(a);
- priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i)
- transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);
- affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. §2.160(a)
- renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
- affidavit of use or excusable nonuse under 15 U.S.C. § l 141k(a) and 37 C.F.R. § 7.36(b);
Patent
- reply to an Office notice issued during pre-examination processing by a small or micro entity;
- reply to an Office notice or action issued during examination or patent publication processing;
- issue fee;
- notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
- appeal brief under 37 C.F.R. § 41.37;
- reply brief under 37 C.F.R. § 41.41;
- appeal forwarding fee under 37 C.F.R. § 41.45;
- request for an oral hearing before the Patent Trial and Appeal Board (PTAB or Board) under 37 C.F.R. § 41.47;
- response to a substitute examiner’s answer under 37 C.F.R. § 41.50(a)(2);
- amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b);
- maintenance fee, filed by a small or micro entity;
- request for rehearing of a PT AB decision under 3 7 C.F.R. § 41.52;
- request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c) or 41.127(d); or
- petition to the Chief Judge under 37 C.F.R. § 41.3.
It is important to note that the extended waiver of deadlines requires a statement from the practitioners, petitioners, applicants, trademark and patent owners, or other persons associated with the delayed filings and/or fees that they were personally affected by the COVID-19 outbreak. A non-exhaustive list of examples of reasons for COVID-19-related excusable delays includes office closures; cash flow interruptions; inaccessibility to files; travel delays; personal or family illness; or other similar circumstances materially interfering with timely filing or payment of fees. As to the form, the USPTO does not require such statements to be verified or to be provided in affidavit or declaration form.
Waiver of Fees for Petitions to Revive
Trademarks
The Notice further provides that applicants or a registrants whose trademark applications have become abandoned or whose registrations were canceled/expired due to a COVID-19 related- inability to timely submit a filing or payment in reply to an Office communication having a due date of May 31, 2020 or earlier can elect for the USPTO to waive the petition fee to revive the abandoned application or reinstate the canceled/expired registration.
Patents
Similarly, if due to the COVID-19 outbreak applicants and owners that were unable to timely submit a filing or payment in reply to an Office Communication having a due date of May 31, 2020 or earlier, causing their application to be abandoned or causing the termination of reexamination prosecutions, the UPSTO may waive the petition fee for filing a petition for the revival of such abandoned patent applications when the applicants or owners file a petition to revive and a provide a statement that the delay was due to the COVID-19 outbreak.
For any intellectual property-related questions including USPTO deadline extensions under the CARES Act, feel free to reach out to us via phone or email.
For the April 28, 2020 Notice of Waiver of Trademark-Related Timing Deadlines Under the CARES Act, click here.
For the April 28, 2020 Notice of Extended Waiver of Patent-Related Timing Deadlines under the Act and Other Relief Available to Patent Applicants and Patentees, click here.
For the USPTO’s answers to COVID-19-extension-related frequently asked questions:
[1] Certain restrictions may apply to the deadline extensions listed. To view copies of the notices, please click on the links provided in this blog entry.
Supreme Court agrees to hear case that may put limits on where Patent cases can be filed
Recently, the Supreme Court agreed to hear a case which may place restrictions on where patent litigation lawsuits may be filed.[1] The Supreme Court granted a petition for certiorari filed by TC Heartland LLC (“Petitioner”).[2] The petition resulted from a lawsuit in which the Petitioner was sued for patent infringement by a subsidiary of food company Kraft (“Respondent”).[3] The lawsuit was filed by Respondent in Delaware federal court.[4] The Petitioner argued that the lawsuit should have been brought in Indiana, but this argument was rejected by the United States Court of Appeals for the Federal Circuit on appeal.[5]
The petition asks the Supreme Court to determine the proper interpretation of the patent venue statue, 28 U.S.C. § 1400(b).[6] The Petitioner asserts that “[t]he answer to this question is a matter of concern to every domestic corporate manufacturer, distributor, retailer, service provider, or end user that is potentially subject to suit for alleged patent infringement.”[7] Specifically, the Petitioner argues that the current rules allow for a Plaintiff patent owner to engage in “forum shopping” and choose the most favorable jurisdiction to file a lawsuit.[8] The Petitioner notes that in 2015 more than 43% of patent infringement cases were brought in one district court, namely the Eastern District of Texas, which is commonly perceived to be a favorable forum for patent owners.[9] The solution to this problem proposed by the Petitioner is for the Supreme Court to set forth an interpretation of the patent venue statue which focuses more on allowing jurisdiction in the venue in which a defendant corporation was incorporated.[10]
The Respondent made several arguments in opposition to the petition, namely that the issue should be resolved by Congress and that the instant case is not a good case to resolve this issue because the Respondent is not a patent troll and does develop and practice the patented technology.[11] Further, the Respondent highlighted the fact that it did not file the lawsuit in the Eastern District of Texas.[12]
A ruling by the Supreme Court could have a significant impact on where patent infringement lawsuits can be filed. A ruling may also determine whether there will still be an outcry for Congress to impose patent reform legislation. Our firm will be monitoring the status of this case and its potential impact. Please contact our office if you have any questions regarding the information in this article.
Daniel Devine, Esq.
Santucci Priore, P.L.
Partner
[1] See, TC Heartland LLC v. Kraft Food Brands Group LLC, No. 16-341, 2016 WL 4944616 (Dec. 14, 2016); http://www.scotusblog.com/case-files/cases/tc-heartland-llc-v-kraft-foods-group-brands-llc/.
[2] Id.
[3] See, In re TC Heartland LLC, 821 F.3d 1338, 1340-1341 (Fed. Cir. 2016).
[4] Id. at 1341.
[5] Id. at 1345.
[6] See, http://www.scotusblog.com/wp-content/uploads/2016/09/16-341-cert-petition.pdf
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] See, http://www.scotusblog.com/wp-content/uploads/2016/11/16-341-Brief-in-Opposition.pdf
[12] Id.
The debate over “Patent Trolls” revisited
The debate regarding what to do about “Patent Trolls” has lately been gaining steam and has been brought to the public attention in various ways. The term “Patent Trolls” usually refers to a person or company that attempts to enforce patent rights against accused infringers, despite the fact that the person or company being labeled a “Patent Troll” does not practice the invention by manufacturing products or supplying services. Thus, many “Patent Trolls” are considered non-practicing entities.
Many complaints regarding “Patent Trolls” focus in on the practice of “Patent Trolls” filing lawsuits in an attempt to pressure a settlement and/or a licensing deal because the accused infringer has to face the prospect of incurring significant legal fees to defend the lawsuit, even though the basis for the lawsuit may be weak or even lacking merit. Such lawsuits are often filed in the Eastern District of Texas, which is known for its expertise in patent suits. This can cause additional expenses, such as contesting the venue of the lawsuit and/or travel time. Further, if the “Patent Troll” is a non-practicing entity, then it will be difficult in most cases for an accused infringer to file a counter-claim for patent infringement against the “Patent Troll,” because the “Patent Troll” does not practice the invention.
It appears that the debate regarding “Patent Trolls” has even made its way to the movie screen and will be addressed in an upcoming Independent film.[1] In addition, some states, such as Florida, have proposed legislation to address “Patent Trolls.” In Florida, the Patent Troll Prevention Act has been passed. This legislation is codified in Florida Statutes §§ 501.991-997. We have previously addressed the issue of this legislation in a prior blog article as well as Patent Trolls and the Innovation Act of 2015.
Regardless of what side of this issue you fall, the debate regarding “Patent Trolls” does not appear to be going away in the near future.
Please contact our office if you have any questions regarding the information in this article.
Daniel Devine, Esq.
Santucci Priore, P.L.
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