The CARES Act and the USPTO: assessing the potential impact of the act’s provisions

  • CARES Act to be considered in the House of Representatives, expected to pass today
  • Enhances temporary authority of USPTO director during the covid-19 emergency
  • Provisions welcomed by legal experts, office urged to communicate more proactively

On Wednesday the United States Senate passed H.R.748, the Coronavirus Aid, Relief and Economic Security (CARES) Act, which contains $339.855 billion in emergency supplemental appropriations to aid US citizens during the coronavirus crisis. The act, which has now moved to the House of Representatives for consideration, also contains a number of provisions related to the power of the USPTO director.

The bipartisan legislation, passed unanimously by the Senate, is expected to be passed by the House of Representatives later today and aims to provide urgent relief for small businesses and their employees, as well as protect jobs and stabilise the economy, during the covid-19 pandemic. The emergency supplemental appropriations portion of the legislation includes $117 billion for hospitals and veterans’ healthcare, $11 billion for vaccines, therapeutics, diagnostics and other preparedness needs, and $45 billion for the Federal Emergency Management Agency disaster relief fund. It also includes a number of temporary changes to the authority of the USPTO director.   

Among the powers given to the director during the emergency period is the ability to toll, waive, adjust or modify any deadline established by Title 35 of the US Code, the Trademark Act, and Section 18 of the Leahy-Smith America Invents Act, if the director determines that the emergency related to such period materially affects the functioning of the office, prejudices the rights of applicants and registrants, or prevents applicants and registrants from filing a document or fee with the office.

If such a situation arises, the office will publish a public notice no later than 20 days after the action – and if such change is in in effect for a consecutive or cumulative period exceeding 120 days, the director must supply a statement to Congress describing the action and rationale for it. As to the duration of the temporary powers, these span the portion of the emergency declared by the president pursuant to the National Emergencies Act of 13 March 2020.

Considering the legislation, Eric Perrott, a trademark and copyright attorney at Gerben Law Firm, tells WTR: “From the trademark perspective this is important because, while the director can waive fees and so forth, he does not otherwise have the authority of moving any statutory deadlines, such as the five to six-year renewal deadlines, office action deadlines and petition to revive deadlines. So this legislation gives director Iancu the flexibility to deal with this crisis. On the other hand, it does inject uncertainty into the system as well for brand owners who might be monitoring certain filings for abandonment, or trying to clear their own marks and unable to use the normally prescribed deadlines to help with timing. However, I believe the USPTO needs every tool at its disposal to help brand owners and new applicants cope with the fallout from coronavirus.”

Erik M Pelton of Erik M Pelton & Associates concurs that the legislation contains important trademark provisions: “While operations of the USPTO continue electronically, many businesses are still figuring out how to operate at this time, and many have been ordered to stay home. As a result, even for those with some remote operations, managing deadlines, obtaining documents and signatures, and other needs might be very challenging at this time. Therefore, I believe the USPTO should provide alternatives for deadlines that need to be extended; if legislate authority is required, then I applaud placing such authority in the CARES Act.”

However, Pelton adds that there are other ways the office can assist its users at this difficult time: “In the past the USPTO found creative ways to assist those affected by Hurricanes Katrina and Sandy without legislative changes. I believe similar tools should be made available to all applicants and registrants in this extraordinary time, while additional tools should be explored as well. In the interim, I encourage the USPTO to communicate more proactively with users.”

As noted, the act is expected to be considered, and passed, in the House of Representatives later today. A number of industry figures are urging just that, with Steve Lamar, president and CEO of the American Apparel & Footwear Association, concluding: “This is an unprecedented health crisis that has quickly become an unprecedented economic crisis. We are playing our part by having closed many of our facilities and, in some cases, converting production in the US and abroad over to the manufacture and distribution of face masks, gowns, and other personal protective equipment. But in the short term, the revenue stream for many of our members and their supply chains has dried up. This legislation will inject liquidity into the system, allowing companies to sustain operations and keep employees on the payroll so they start up quickly once health authorities give us the all clear. Thanks to the Senate for taking swift action. We urge that this measure be quickly approved in the House and signed into law by President Trump.”

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