Patent and Trademark Strategies to Consider During the COVID-19 Outbreak

During this COVID-19 pandemic, many businesses of all sizes, but especially small businesses, are being pushed to their limits. Even routine tasks, such as paying the rent, are difficult as regular operations are interrupted. Although the government has taken steps to alleviate the pressure on business owners in many areas, when it comes to patents and trademarks, there is a mix of regulatory relief and “business as usual.”

The recently passed Coronavirus Aid, Relief and Economic Security (CARES) Act put in place extensions for certain deadlines, waivers for specific requirements, and closed the U.S. Patent and Trademark Office’s (USPTO) main office to the public. Otherwise, business owners looking to file a patent or trademark must follow most of the same procedures as normal.

Until business is back to normal everywhere, though, there are strategies to consider in these lean times.

1. Check around the world.

The current pandemic is, by definition, a global one, and it is affecting patent and trademark offices around the world. Countries are in varying states of lockdown, including their patent and trademark offices. Some offices are completely closed and deferring all filings and deadlines, others are open, and some, such as the U.S., are a mix regarding how deadlines fall and to what they relate.

This creates an issue, considering that in most scenarios, a business will want to file a patent or trademark internationally before public disclosure (beginning a marketing campaign, revealing a product in a presentation, etc.). In the U.S., the timing for filing is within a year of the disclosure, so there is some flexibility at home.

Nevertheless, this is a confusing time. If business owners want to have global protection for their intellectual property (IP), they should be consulting with their counsel. With different rules that are constantly changing around the world, these professionals will be in the best position to coordinate with foreign associates.

2. Help is available, but don’t make assumptions.

Filing an application for a patent or trademark and the fees and costs related to maintaining this intellectual property can be expensive for a small business. That problem is only compounded if the current pandemic has disrupted a company’s cash flow or operations.

The CARES Act provides relief by extending due dates for a number of patent and trademark deadlines after an application is filed, as well as certain trial and appeal board action items. See the full list of actions eligible for extensions here for patents and here for trademarks. The extensions are for 30 days from the original dates between March 27 and April 30.

Depending on how the COVID-19 crisis develops, these extensions could apply to future due dates, but anyone with pending due dates beyond April 30 should prepare themselves to meet those deadlines. In general, owners cannot assume all due dates for all actions are extended, though some missed deadlines may be recused if a late fee is paid. Notably, initial filing deadlines for patent applications are not extended, but using a provisional patent application in the U.S. can help defer fees and costs. For trademarks, there is also a grace period if a deadline is missed, though that doesn’t apply to all situations.

3. Treat IP like real estate.

For businesses feeling financial pain, another option may be to sell off some IP, rather than pay maintenance fees to keep it, especially if a particular piece of IP is not being used.

For a comparison, think of real estate. If you have a big portfolio and you’re facing a cost crunch, you may want to find a buyer or rent the property instead of taking a major tax hit. When dealing with a patent, an owner may own the invention but never has actually done anything with it. The current environment may be a good time to sell the patent to a business partner or someone who may have been licensing it. Trademarks, however, are not typically sold on their own. By their nature, they are source identifiers of a good or service, so they would be sold as part of a product or service line.

Conversely, if an owner has the means, this may be an opportune time to purchase a piece of IP at a better cost. That route only speaks to the multitude of options and strategies available regarding IP at this time. No matter a business’ current status, though, it is wise during this challenging time to consult with counsel before taking any action regarding patents and trademarks.

For more information on this and other Intellectual Property matters, please reach out to partner David G. Oberdick at [email protected].

This material is for informational purposes only.  It is not and should not be solely relied on as legal advice in dealing with any specific situation.
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