Intellectual property (IP) during COVID-19: what you need to know to avoid loss of rights and unnecessary headaches

November 2020 | SPOTLIGHT | INTELLECTUAL PROPERTY

Financier Worldwide Magazine

November 2020 Issue

In response to the extraordinary social and economic impact of coronavirus (COVID-19), administrative agencies and courts which handle intellectual property (IP) matters have enacted measures to provide parties relief against the potential of lost IP rights. The response has evolved since March 2020, depending on jurisdiction and other factors, and promises to continue to do so for the foreseeable future.

This article provides an overview of certain common changes which businesses and counsel should investigate to protect IP rights during this uncertain era. While a comprehensive guide for all situations cannot be made, agencies and courts have made changes with a common theme in many instances that can serve as a guide for businesses to use while navigating the post-COVID-19 IP environment.

Deadlines at the USPTO and other agencies

Many agencies have recognised that travel, economic and other factors related to COVID-19 can present obstacles to some parties in connection with filing documents, paying fees and adhering to deadlines. Accordingly, IP agencies have in general created exceptions for delays caused by COVID-19, sometimes going as far as extending deadlines for all parties, regardless of whether they have been negatively impacted by the pandemic. As these extensions begin to expire, businesses need to be aware of the differing circumstances of various IP offices, as well as what they need to do to ensure that important deadlines are not missed, and rights lost.

For many IP offices, normal deadlines have resumed, subject to certain procedural changes and possible exceptions. While offices vary considerably with respect to which deadlines can be affected and extended, they also vary with respect to the degree of guidance provided. Some offices have provided specific circumstances where extensions are allowed, as well as the materials that must be provided. On the other hand, other offices have indicated certain extensions are available without the need to provide a reason for the delay. Even where a statement or reason is required by the office, it is usually not a difficult burden to meet.

As an example, the United States Patent and Trademark Office (USPTO) has instituted several different procedures related to deadline extensions for patent fees. At the time of writing, while most normal deadlines have resumed, the time to pay certain patent fees, such as basic filing fees and maintenance fees, for small and micro-entities was extended until 30 September, with further extensions available on request. Such fee payments will be considered timely filed so long as they are paid by 30 September and are accompanied by a statement that the delay in payment was caused by COVID-19. Beyond these fee extensions, the USPTO is also waiving the fees for reviving an abandoned application for all entities, so long as the petition to revive is accompanied by a statement that the abandonment was caused by COVID-19.

Signatures

As many jurisdictions imposed lockdowns and made it near impossible for in-person meetings to occur, another difficulty arose: obtaining signatures as required by law. Unable to meet in person, many businesses found it difficult to notarise documents, prepare signatures and obtain apostilles for foreign use. In order to help alleviate these difficulties, governments and IP offices increasingly offered remote and electronic services intended to alleviate the burden of meeting in person for certain signatures. These modifications apply generally in two circumstances: notarisation of documents and original signature requirements. While this article will outline certain general trends, questions of proper notarisation and adequate signature requirements are incredibly fact dependent, relying upon the law of the specific state where the notarisation takes place, the type of document being signed and other factors which are beyond the scope of this article.

One major modification, in the US particularly, is the permissibility of remote online notarisation. This process allows customers to notarise documents entirely online, using video conferencing software to communicate with a licensed notary and perform the necessary steps. More than 25 US states, including New York and Illinois, currently allow for remote online notarisation, many having implemented temporary authorisation in response to COVID-19. However, it is important to note that though many states now allow for remote online notarisation, there are several notable exceptions which apparently do not allow in-state notaries to perform remote notarisations. Further, many of the states that currently allow for remote online notarisations, only allow them on a temporary basis, with each state’s authorisation ending on different dates. Therefore, it is incredibly important to verify that the state in which a remote notarisation occurs still authorises such notarisation, as these regulations are constantly shifting, both within the US and in countries abroad.

Beyond notarisation, some IP offices require handwritten, original signatures on certain documents. In light of COVID-19, though, many offices have suspended the need for handwritten signatures, allowing electronic signatures instead. The USPTO, for example, no longer requires handwritten signatures for any submitted documents, and will accept e-signatures for all documents, including assignments and registration documents. These e-signatures can come in a variety of forms, each with different degrees of security and different IP offices may require different e-signatures depending upon how much security is required for a specific document. Given the variety of currently existing signature requirements, it is important to understand what requirements apply to which documents in which areas, or a business may run the risk of improper submissions which could cost time, money and, in some cases, even IP rights.

Courts

Like administrative agencies, courts have responded to COVID-19 by extending case proceedings and altering procedures to adapt to virtual settings. While many courts are now proceeding on close to pre-COVID schedules, altered procedures generally remain in place and should be considered when planning litigation or similar enforcement actions.

One adaptation to be considered is the switch from in-person hearings to virtual hearings. While some jurisdictions are holding in-person proceedings, such proceedings are still in the minority, with many courthouses closed to the public or only open for emergency hearings. Within the US, courts vary with respect to what services they use for virtual hearings. For example, some use Skype, Zoom or other videoconferencing platforms, and allow parties to choose which. Regardless, it is important to determine which services are used in the jurisdiction in which a business seeks to enforce its rights in order to prevent surprises later during litigation.

It is also important to note that procedures within US courts are constantly changing, with deadline extensions, entry requirements and other circumstances changing on a continuous basis. Even different courthouses within a single district can implement different orders and procedures. As such, keeping up to date and investigating specific courthouse procedures is vital to ensuring that all deadlines are met.

Conclusion

IP administrative agencies and courts that regularly handle IP litigation have responded to COVID-19 in several ways, including implementing virtual procedures, extending deadlines and, in some cases, excusing costs. Businesses and practitioners should assess the changes that have occurred to assist in protecting their IP, monitoring competitor IP and complying with applicable procedures.

Paul Ragusa is a partner and Nick Palmieri is an associate at Baker Botts LLP. Mr Ragusa can be contacted on +1 (212) 408 2588 or by email: paul.ragusa@bakerbotts.com. Mr Palmieri can be contacted on +1 (202) 408 2640 or by email: nick.palmieri@bakerbotts.com.

Paul Ragusa and Nick Palmieri

Baker Botts LLP