OHIO: An Introduction to Intellectual Property

Intellectual Property Law Through a Pandemic: A Year in Review

Author: Kathryn Chambers

Fay Sharpe LLP

Intellectual property law was not immune to the effects of the coronavirus pandemic. The United States Patent and Trademark Office (USPTO) moved quickly to adapt to the changing landscape of patent and trademark prosecution. Clients’ demands shifted, and the law firms serving those clients flexibly transformed to accommodate. Through the pandemic and the landscape it created, Fay Sharpe LLP remained focused on our mission of providing comprehensive intellectual property legal service solutions for our clients.

The pandemic forced millions of people to change and adjust the way they live and conduct business. In the words of the USPTO and the European Patent Office (EPO), “The coronavirus outbreak has changed our daily lives almost beyond recognition.” This announcement along with the following changes at the USPTO can be found on the USPTO’s website. The USPTO’s solicitous approach to changing certain policies and procedures provided innovators with the opportunity to retain and maintain their intellectual property rights. Specifically, the USPTO closed its offices and allowed roughly all of their 13,000 employees to work remotely. Because the USPTO has about 94% of the total positions eligible for remote work already working remotely, working from home has not slowed production at the USPTO, with the Office meeting all of its 2020 targets. Even though patent filings fell from about 667,000 to about 653,000, the USPTO’s earned revenue increased by about $200 million.

Not only did the USPTO accommodate their staff, but they also accommodated the public with certain policy and procedure changes. For example, in mid-March, the USPTO posted various official announcements that the effects of COVID are an “extraordinary situation” within the meaning of 37 CFR §1.183 and 37 CFR §2.146 for affected patent and trademark applicants, patentees, reexamination parties and trademark owners. Because of this designation, the Office waived petition fees in certain situations and waived original handwritten signature requirements for certain correspondences for customers affected by COVID. Under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the USPTO allowed extensions of time to file certain patent and trademark documents.

By late April, the USPTO extended the time to file certain patent and trademark related documents and to pay certain required fees. Even further, the USPTO launched a web-based platform to facilitate an intellectual property marketplace (Patents 4 Partnerships https://developer.uspto.gov/ipmarketplace/) that “provide[s] the public with a user-friendly, searchable repository of patents and published patent applications related to the COVID-19 pandemic that are indicated as available for licensing.”

Currently, there are almost a thousand assets listed in the marketplace that include a wide variety of technologies, such as genome editing, disposable wipes, and RNA extraction methods. With the request and in response to stakeholders, the USPTO extended the time period for petitioning for certain rights of priority or benefit in patent applications and waived the associated fees. This was done with the authority under §12004(a) of the CARES Act and 37 CFR §1.183. Furthermore, the USPTO extended relief to small and micro entities by waiving certain fees.

As for trademarks, the USPTO announced a Prioritized Examination Program for certain trademark and service mark applications. Applications related to COVID-19 were advanced and immediately assigned for examination. The USPTO also declared that trademark owners may request to be temporarily excused from using their trademarks if COVID has directly impacted the owner or their business.

In the fall of 2020, the USPTO launched a “collaborative deferred-fee provisional patent application pilot program for inventions that combat COVID-19.” Finally, the USPTO recently announced a fast-track appeals pilot program that will allow the Patent Trial and Appeal Board (PTAB) to “accept petitions for expedited resolution of ex-parte appeals” for inventions related to COVID. This program bears optimism as the PTAB launched a similar, fast-track appeals pilot program for all inventions in 2020 (read about it here: https://faysharpe.com/stuck-in-prosecution/).

Despite the USPTO adjusting dynamically to the change in circumstances, the pandemic is having a different impact on its customers as evidenced by utility patent application filings decreasing from about 667,000 in 2019 to 653,000 in 2020. Even more telling is the increase in the rate of abandonment. Normally, small and large entities have an abandonment rate of about 12.5% and 7.5% respectively. However, according to the article, “USPTO Abandonment Rate Nearly Tripling Since COVID” by the BlueIron Blog, the rate of abandonment about tripled for small entities and doubled for large entities over the course of the pandemic. In a previous and similar article, the BlueIron Blog discusses various reasons why companies and inventors choose to abandon their applications, but one likely reason is the cost of prosecution. The article notes that with the national average patent prosecution costing around $8k-$12k, it is reasonable that companies and inventors chose to cut short-term expenses as a result of slowing and sometimes even halting business. Consequently, the article warns that for patent prosecution attorneys, the workload may slow dramatically, and it may even take years for the quantity of work to return to pre-pandemic amounts.

However, like others, Fay Sharpe is more confident. We share the BlueIron Blog’s optimistic observation that because patents were valuable before the pandemic, their value will only increase once the pandemic ends. The blog notes, “With companies abandoning their IP, this means that those that keep their IP alive will have [an] even better competitive advantage when the inevitable recovery happens.”

Like many other law firms, Fay Sharpe was quick to act on continuing to serve our clients. For example, meeting virtually has become commonplace. With in-person marketing and network events ceased and major annual meetings moved online, attorneys have been able to focus even more of their personal attention on their current clients. Additionally, IP firms and their clients are well versed in a variety of areas of technology, so the transition to conducting business virtually was near seamless.

While Fay Sharpe is a firm that usually connects with our clients and partners in a traditional way, we have developed and implemented modern and intuitive solutions to connect with our clients while practicing the recommended health and safety guidelines. This year, Fay Sharpe has accommodated its employees by allowing them to work from home. We have learned much in the past year and endured many challenges. While we have seen we are able to mobilize and work remotely to serve our clients, we also recognize that the practice of law is based on collaboration, apprenticeship, and accountability. Despite this, our employees have been diligent and understanding when communicating with clients. Our employees also have had more opportunities to write articles for publication on behalf of the firm and to attend learning webinars. Additionally, Fay Sharpe has implemented a new social media initiative to enhance our presence in the digital world. These are just a few examples of the many ways Fay Sharpe and other firms are adapting to a post-pandemic business environment.

Since Fay Sharpe opened its doors in 1884, the world and the innovations that shape it have changed immensely. Fay Sharpe’s objectives, however, have not changed. We have always remained dedicated to providing a comprehensive and full range of intellectual property legal services tailored to meet each client’s needs and provide efficacious solutions.