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Preserving Your IP Rights During the Federal Government Shutdown

The current federal government shutdown that began on October 1, 2013, has introduced a wide range of impediments into governmental, as well as private sector, operations. While the media has reported extensively on consequences ranging from mortgage lending to national park closures, the current shutdown also has implications for those looking to secure their intellectual property rights.

The U.S. Copyright Office has closed due to the shutdown. By contrast, the U.S. Patent and Trademark Office (USPTO) remains open and announced it is using reserve funds to maintain normal operations for approximately four weeks beyond October 1. The U.S. Department of Commerce has published shutdown contingency plans for each of its agencies, including the USPTO. Their USPTO shutdown plan states that if after approximately four weeks, the federal government shutdown continues, most USPTO employees will be furloughed. The plan further designates a small number of positions not subject to furlough. Of particular note, Patent Examiners and Trademark Examining Attorneys are not in this exempt group, and therefore subject to furlough.

Anyone seeking protection for their intellectual property (i.e., patents, trademarks, copyrights) needs to understand how the current shutdown will affect them. For those planning to apply for (or renew) U.S. copyright registration on a creative work, it is important to realize that the U.S. Copyright Office continues to accept submissions (including electronically) in order to establish a date of receipt. This is very important for applicants seeking to preserve their submission's effective date, which can have crucial legal implications long after the government has reopened. Although filing submissions is still possible, the U.S. Copyright Office is unable to process registration transactions during the shutdown. Therefore, it is important that applicants recognize they will almost certainly experience delays in the examination of their copyright submissions, and ultimately in obtaining copyright registration. These delays will only be compounded the longer the shutdown continues, as a growing backlog of submissions will likely await the U.S. Copyright Office once it reopens.

Applicants seeking patents and trademarks are currently unaffected by the shutdown. This does not mean that they should forego necessary precautions to preserve their rights, however. In the event of a USPTO shutdown, presumably in late October, it will be similar to the current situation at the U.S. Copyright Office. Applicants will still be able to file patent and trademark applications, as well as responses for applications already in prosecution. Applicants should appreciate the legal importance of preserving their application's priority date, as well as the consequences of failing to do so.

Analogous to the current state of affairs at the U.S. Copyright Office, examination of applications at the USPTO could soon stop as well. However, even if the examination of an application is held in abeyance during a USPTO shutdown, the USPTO has not issued any guidance that statutory response periods for applicants will be tolled. Applicants often seek clarification from the USPTO before filing their responses. During a USTPO shutdown, they may have to do so "flying blind." For example, applicants seeking to conduct an examiner interview during the course of prosecution will be unable to do so once the USPTO shuts down. This means that applicants will not be able to obtain (the often valuable) information gleaned from the examiner before a timely filing of their Office Action Response, as required by statutory deadlines. Therefore, applicants contemplating an examiner interview should consider making a request as soon as possible to help advance prosecution, before the opportunity to do so disappears under a USPTO shutdown.

Regardless of the type of intellectual property an applicant seeks to obtain, they must understand how both current and pending shutdowns can impact their rights, and what actions they should be taking right now. With the proper knowledge, applicants can better navigate the rapidly changing conditions in the intellectual property landscape during these challenging times. With the proper guidance, they can better avoid unknowingly forfeiting their intellectual property rights. With the proper foresight, they can better weather the storm.

For additional information, please contact any member of MacDonald Illig's Intellectual Property Practice Group.