Patenting During the Pandemic

COVID-19 Update

Date: April 20, 2020

The U.S. Patent and Trademark Office (USPTO) has modified certain patent deadlines and procedures to accommodate patent applicants and owners during the COVID-19 pandemic. Patent applicants should know, however, that the changes do not diminish the importance of filing new patent applications as quickly as possible, nor do they change the basic legal standards and requirements for applications and patents. Patent protection is often essential for bringing needed technology to the market, and the pandemic is not expected to have a significant impact on the rate at which new patent applications are filed. In fact, the pandemic has increased the need for and interest in innovations across a wide range of important technologies, particularly in the fields of health care, life sciences and e-commerce. The USPTO expects to remain fully operational during the crisis and is accepting and processing new applications.

Pandemic-Related Changes

The USPTO has made a number of changes in response to the COVID-19 pandemic:

  • On March 16, the USPTO waived its requirement for petition fees to revive patent applications that were unintentionally abandoned because of the COVID-19 outbreak. A petition for revival must nevertheless be filed within two months of the notice of abandonment, and it must include a statement that the abandonment resulted from the effects of the outbreak.
  • On March 31, the USPTO announced that it would extend by 30 days certain initial due dates falling between March 27 and April 30, provided that delays in responding were “due to the COVID-19 outbreak.” The USPTO will extend due dates for maintenance fees, but only for small and micro entities. To take advantage of the extension, an applicant must submit a statement that the delay resulted from the effects of the outbreak.
  • The USPTO and U.S. Copyright Office have provided applicants for and owners of patents, trademark registrations and copyright registrations with other relief. Foreign patent and intellectual property offices have provided similar relief. A current list of changes is being maintained by the World Trademark Review.

Notably, the USPTO’s announcements do not alter the ordinary deadlines for filing applications to perfect claims to priority, to avoid bar dates or to establish effective filing date(s) for the purpose of defeating competing patent applications or public disclosures. Thus, they have neither lessened the importance of filing new patent applications as quickly as possible, nor have they altered the strict legal standards and formal requirements for new applications.

Undiminished Need for Innovation and Patent Protection

The pandemic is not expected to have a major impact on the number of new patent filings. History shows that recent recessions have had only marginal impacts on patenting activity. After the dotcom crash in 2001, the number of new applications continued to increase, but at a somewhat slower rate than immediately prior to the crash (3.1% in 2002 and 2.7% in 2003, down from 9.8% in 2001). The subprime mortgage crisis had a limited depressive effect. The number of new applications in 2008 remained almost the same as in 2007, showing just a .07% increase over the prior year, but decreased in 2009 by half a percent. Yet in 2010, there was a 7.75% increase in new applications, with a then-record 520,000 new applications filed, and continued strong increases through 2013. [Source: U.S. Patent Statistics Chart Calendar Years 1963-2018.]

The COVID-19 pandemic may also create more opportunities for innovation and patenting than did the dotcom collapse or subprime mortgage crisis. The pandemic is likely to cause increased filings in a variety of sectors, especially health care, life sciences and e-commerce. New technology is rapidly being developed and deployed to deal with the current pandemic, to help prevent the next one, and to respond to changes in consumer behavior and business practices due to travel restrictions and social distancing. Scientists and engineers are coming up with ideas to meet these needs and improvements in a wide range of other technologies are likely as well, simply because current circumstances are providing innovators with more time to invent. Some ideas will be novel, nonobvious and useful but will need considerable testing and development, which often requires help from investors and business partners. Patents create opportunities for exclusive rights and licensing, which incentivize investors and business partners to participate.

The current pandemic creates immediate needs for technology to prevent and immunize against infection, diagnose infections and treat patients with COVID-19. The pandemic is also increasing demand for improvements in technology that businesses and individuals are using to work remotely, provide for safer commerce and social activities, and to help others cope with isolation. New technology and improvements are needed in the areas of:

  • Diagnostics
  • Treatment methods
  • Vaccine screening and testing
  • Vaccines and medications
  • Disease modeling
  • Personal protective equipment (masks, gloves, etc.)
  • Pathogen detection
  • Disinfection and sanitization
  • Distancing technology
  • 3D printing
  • Drone technology
  • Equipment management
  • Filtration systems
  • Food preparation
  • Package delivery
  • Telecommunications
  • Teleconferencing
  • Holography
  • Transportation
  • Wireless technologies
Recommendations

Innovations spurred by the COVID-19 pandemic will advance public health, improve health care delivery, save lives, and improve industrial, medical and consumer technology in general. Patent protection can help ensure that these technological improvements can be developed and refined to have their greatest impact. Patent applicants should act without delay to file applications for their inventions. They should also bear in mind that any publication, public use, sale, or other public disclosure or commercial exploitation of the invention prior to filing an application may jeopardize or result in the potential loss of U.S. or foreign patent rights. Also, under U.S. law, a failure to file within one year after the first date of any of these activities would bar patentability of the invention. The legal standards and formalities for patent applications are complex and it is prudent to consult with a registered patent attorney to decide whether patent protection makes sense, as well as to prepare and file an appropriately detailed patent application. Patent attorneys can also advise on trade secret protection, the preparation and use of nondisclosure agreements when seeking investment and business partnerships, and the negotiation of formal agreements for the manufacture and sale of associated technologies.

FOR MORE INFORMATION

For more information, please contact:

Clifton E. McCann
202.263.4159
Clifton.McCann@ThompsonHine.com

David R. Jaglowski
614.469.3208
David.Jaglowski@ThompsonHine.com

Additional Resources

We have assembled a firmwide multidisciplinary task force to address clients’ business and legal concerns and needs related to the COVID-19 pandemic. Please see our COVID-19 Task Force page for additional information and resources.

This advisory bulletin may be reproduced, in whole or in part, with the prior permission of Thompson Hine LLP and acknowledgment of its source and copyright. This publication is intended to inform clients about legal matters of current interest. It is not intended as legal advice. Readers should not act upon the information contained in it without professional counsel. This document may be considered attorney advertising in some jurisdictions.

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