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Patent Proceedings During the COVID-19 Outbreak

The COVID-19 outbreak has affected patent applications and lawsuits, but not as extensively as other areas of law and both have continued apace. The United States Patent and Trademark Office has made a few concessions for applicants and has closed its Arlington, Virginia office to the public. Similarly, United States District Courts have postponed trials and in-person hearings. Yet a remarkable number of proceedings have continued.


E-Filing with the Patent Office Online

For years now, the U.S. Patent Office has utilized an online filing system for patent applications and the back-and-forth communication that occurs during patent prosecution. The current system is called EFS-Web and it allows registered or unregistered eFilers to file patent applications and even respond to office actions. The Patent Office has encouraged the electronic filing of patents by charging an additional “non-electronic filing fee” for paper filed applications. So, working remotely is nothing new for the Patent Office or patent practitioners, and even with the COVID-19 outbreak, patents have continued to be filed.

Changes Due to COVID-19

The Patent Office, however, has made some accommodations in light of the outbreak. The Patent Office, for the first time in recent memory, has closed all of its offices to the public. Now all communications must occur by mail, phone, email, or online. They have also extended several deadlines by up to 30-days if the deadline originally fell between March 27 and April 30, 2020, and if the filer confirms that the delay is necessary as a result of the COVID-19 outbreak because of office closures, cash flow interruptions, inaccessibility of files, personal or family illness, or similar circumstances.

In addition, the Patent Office is waiving its few remaining requirements for original signatures – which were required for certain correspondence with the Office of Enrollment and Discipline and payments by credit card. The Patent Office has also waived specific filing fees, such as the fee for a Petition to Revive if the application went abandoned because of a failure to respond occurred as a result of the COVID-19 outbreak.

And finally, the Patent Office has directed all interviews, hearings, or meetings be conducted by video or telephone. This information and more can be found in the USPTO COVID-19 update. With these modifications, the Patent Office is essentially open for business as usual.

Court Proceedings

Similarly, federal courts remain open for business in patent cases, with some modifications. For example, as of writing this blog, nine new patent cases were filed yesterday according to a reputable docket watch service. This is no surprise given that federal court filings have been done electronically for years using the CM/ECF system that is universal among federal courts. Pleadings have continued to be filed – motions to dismiss, motions to compel, etc. – and courts have continued to issue orders on a myriad of motions.

Of course, federal courts have had to cancel or postpone in-person hearings and jury trials. This has led to a remarkable order from the Eastern District of Texas to move all jury trials that were scheduled between March 16 and May 1, 2020 to a later date as determined by the presiding judges. Despite jury trials being postponed, however, federal courts have found ways to conduct hearings using video or telephone conference services.

For example, the Western District of Texas, and Judge Albright in particular, has established a procedure to handle claim construction – i.e., Markman hearings – by telephone and a procedure for parties to submit responses to proposed claim constructions provided by the Court via PowerPoint slides in advance of such hearings. These historical and new ways of handling patent cases in federal court have allowed new cases to continue to be filed and existing cases to make their way through the litigation process.

For the time being, these pre-existing and new electronic practices will minimize the effect of the COVID-19 outbreak on patent prosecution at the Patent Office and on patent litigation in federal court.

If you have a potential patent dispute and would like to discuss your options with an intellectual property lawyer, please do not hesitate to contact us at (903) 207-5526.