USPTO and Federal Courts Update in Light of Coronavirus / COVID-19

Both the U.S. Patent and Trademark Office (“USPTO”) and Federal courts have issued alerts regarding their response to the COVID-19 pandemic, and the effect of the pandemic on their operations and procedures. In this Alert, we have summarized a number of these alerts and the impact on U.S. patent practice.

USPTO Response to COVID-19

The USPTO has issued a series of alerts in response to the COVID-19 pandemic regarding the closure of USPTO facilities, in-person meetings, and relief for customers who have been affected by COVID-19.  At present, the USPTO remains fully operational.  While no updates or alerts have indicated otherwise, the USPTO has imposed some reasonable restrictions.

• Update on In-Person Meetings[i]

In a USPTO Alert e-mail distributed last Friday, March 13, the USPTO announced that in-person meetings, such as in-person examiner interviews and Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) oral hearings, scheduled to take place at USPTO offices on or after Friday, March 13, 2020 are to be conducted remotely by video or telephone.

• Closure of USPTO Facilities to the Public[ii]

In a USPTO Alert e-mail distributed Sunday, March 15, the USPTO announced the closure of USPTO facilities to the public beginning Monday, March 16 until further notice.  USPTO offices are still open for employees for the time being and USPTO operation will continue without interruption. 

• Relief for Customers Affected by COVID-19[iii]

In a USPTO Official Notice from Monday, March 16, 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.  The Official Notice makes clear that this does not grant waivers or extensions of time.  It merely waives petition fees for applicants or patent owners who were unable to timely reply to an Office Communication due to coronavirus resulting in the abandonment or termination of prosecution. 

As noted above, the USPTO has continued operation without interruption.  We have no reason to suspect that COVID-19 will interrupt services.  Many examiners work from home or remotely, and the USPTO is set up to allow others to do so.

Courts’ Response to COVID-19

The United States Courts website released a statement that “Federal courts are individually coordinating with state and local health officials to obtain local information.”[iv]  Courts around the country have been taking preventative measures in light of COVID-19 and, in some cases, have cancelled and/or postponed hearings and trials.  The Northern District of California, for example, announced that all civil trial dates scheduled before May 1, 2020 are vacated and all civil hearings will be conducted on a conference call line available to the press and public.[v]  Similarly, the Northern District of Illinois has rescheduled civil case hearings, trials, and settlement conferences previously scheduled from March 17, 2020 until April 3, 2020.[vi]  The Northern District of Illinois has also extended all deadlines, whether set by Rules of Civil Procedure or Local Rules, by 21 days from the current deadline set.[vii]

The Federal Circuit announced, in a notice posted on its website, that all cases scheduled for argument during the April 2020 sitting will now be conducted by telephonic conference and no in-person hearings will be held.[viii]  Parties in all cases will receive an updated notice in their respective cases.[ix]  We will continue to monitor the situation and will keep you informed as new information becomes available. 

For the most up-to-date information regarding the impact of the COVID-19 pandemic on patent offices and Federal courts, we invite you to check our award-winning Patent Docs weblog, which you can view here.

Donald L. Zuhn, Jr., Ph.D. is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Biotechnology & Pharmaceuticals Practice Group. Dr. Zuhn has more than a decade of experience in all aspects of patent prosecution, litigation, counseling, and licensing. He represents a variety of clients, including biotechnology and pharmaceutical companies both large and small, and universities. zuhn@mbhb.com

Margot M. Wilson, an associate with McDonnell Boehnen Hulbert & Berghoff LLP, concentrates her practice on intellectual property matters including patent prosecution, litigation, and providing patentability and infringement analyses in the mechanical and materials area. wilson@mbhb.com

© 2020 McDonnell Boehnen Hulbert & Berghoff LLP

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[i] Update on In-Person Meetings, USPTO, https://www.uspto.gov/about-us/news-updates/uspto-update-person-meetings (last visited Mar. 19, 2020).

[ii] USPTO offices closed to the public, USPTO, https://www.uspto.gov/about-us/news-updates/uspto-offices-closed-public (last visited Mar. 19, 2020).

[iii] Notice from Andrei Iancu, Director of the USPTO, for “Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak” (Mar. 16, 2020), available at  https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=.

[iv]Judiciary Preparedness for Coronavirus (COVID-19), United States Courts, https://www.uscourts.gov/news/2020/03/12/judiciary-preparedness-coronavirus-covid-19 (last visited Mar. 19, 2020).

[v]Important Notice Regarding COVID-19 and General Orders 72 and 73, United States District Court Northern District of California, https://cand.uscourts.gov/notices/information-regarding-covid-19/ (last visited Mar. 19, 2020).

[vi] Coronavirus COVID-19 Public Emergency, United States District Court Northern District of Illinois, https://www.ilnd.uscourts.gov/_assets/_documents/AMENDED%20GENERAL%20ORDER%2020-0012.pdf (last visited Mar. 19, 2020).

[vii] Id.

[viii] Updated Public Advisory Concerning the Federal Circuit’s April 2020 Sitting, United States Court of Appeals for the Federal Circuit, http://www.cafc.uscourts.gov/announcements/updated-public-advisory-concerning-federal-circuits-april-2020-sitting-march-18-2020 (last visited Mar. 19, 2020).

[ix] Id.