Yesterday I published an article about the catastrophic failure of the USPTO electronic information and filing systems, reportedly caused by a massive power outage that only affected the United States Patent and Trademark Office. While some have raised legitimate questions about how it is possible that such a massive failure could occur only in one single location in Alexandria, Virginia, answers have been few and far between. What is clear is that the Office has indicated that all systems are operational again, but for unidentified reasons will need to be taken offline at unspecified times and without warning in order to truly remedy the problem. Whatever the problem is that continues to linger.
Virtually all patent and trademark applications are filed electronically, and law firms overwhelmingly file all communications with the USPTO via electronic systems. When electronic systems are down it presents a major burden on the industry, which is no doubt why USPTO Director Michelle Lee decided to treat December 22-24, 2015, at federal holidays within the District of Columbia, which would mean that correspondence and filings due on those days could timely be filed the next day the USPTO is open for business. The USPTO announcement, in pertinent part, read as follows:
In light of this emergency situation, the USPTO will consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015, to be a “Federal holiday within the District of Columbia” under 35 U.S.C. § 21 and 37 C.F.R. §§ 1.6, 1.7, 1.9, 2.2(d), 2.195, and 2.196. Any action or fee due on these days will be considered as timely for the purposes of, e.g., 15 U.S.C. §§ 1051(b), 1058, 1059, 1062(b), 1063, 1064, and 1126(d), or 35 U.S.C. §§ 119, 120, 133, and 151, if the action is taken, or the fee paid, on the next succeeding business day on which the USPTO is open (37 C.F.R. §§ 1.7(a) and 2.196). A subsequent notice is anticipated to be issued as needed if the USPTO’s systems are not fully operational by Monday, December 28, 2015.
A question has surfaced about whether the Director has the authority to declare a federal holiday, some commentators saying that no such authority exists, which is probably correct. I cannot find any authority for the Director or the USPTO to declare or create a federal holiday.
I knew the Director of the USPTO has the authority to functionally provide relief equivalent to the relief provided by Director Lee, so I did not dig into that aspect of the USPTO announcement. Nevertheless, declaring a federal holiday seems like it was not technically the right thing to do, although functionally it may have been the best way to explain the decision to anxious patent practitioners quickly, particularly given how the USPTO had been rather slow to respond and not particularly forthcoming with information.
In retrospect, the proper thing for Director Lee to have done would have been to declare an emergency under the powers vested in her by 35 USC 21(a). Under §21(a) the Director of the USPTO can declare that a paper was filed on a day that it would have been filed but for a disruption in mail service or emergency. The net effect is that the filing is treated the same as under the Saturday, Sunday or Federal holiday rule.
35 U.S.C. 21(a) says:
The Director may by rule prescribe that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service or would have been deposited with the United States Postal Service but for postal service interruptions or emergencies designated by the Director.
Generally this rule has been used by the Office to extend time when there has been a natural disaster that has made filing by mail impossible. Think earthquakes or hurricanes where Post Offices in certain areas were destroyed. Generally the rule has been applied only to certain affected zip codes.
Unfortunately, it seems that Director Lee may have relied on some unspecified power under 35 U.S.C. 21(b), which says:
When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding secular or business day.
It would be wise for the Patent Office to issue a clarification on this matter, explaining that Director Lee declared an emergency under §21(a) of Title 35 and did not attempt to create a new federal holiday in honor of a catastrophic power outage.
 It is true that MPEP 511 and the 37 CFR 1.10 seems to be written with an eye toward the emergency being U.S. Postal Service related. In my opinion the statute could easily be interpreted to give the Director the authority to identify a different type of emergency, and should have been utilized in this situation if forgiveness of missed deadlines was the goal.
Join the Discussion
15 comments so far.
PseudonymousJanuary 6, 2016 12:08 pm
By comparison, the Canadian IP Office issued this item yesterday: https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04004.html. They addressed both establishing new priority dates and extending due dates.
David SteinDecember 31, 2015 02:51 pm
I’m not sure that “all systems are operational again.” I and other practitioners have noticed problems with incomplete PAIR records: some filings that occurred earlier in December do not appear in the file wrapper.
I don’t know if it’s a case where these filings were previously posted to PAIR and now do not appear there, or whether the filings were not yet posted at the time of the power outage. However, some of these filings were submitted in early December, so they definitely should appear by now.
Also, one practitioner reported having submitted a filing with a fee, and that the PAIR record includes a record of the fee payment – but not the actual filing. So there is definitely some inconsistency in these missing items.
The real question is whether the USPTO still has these filings and just needs to update the PAIR file wrappers… or whether the data is gone. The reticence of the USPTO to discuss the details of its IT issues makes both scenarios possible.
Night WriterDecember 30, 2015 01:38 pm
They really pack a lot into that “new and useful” phrase.
A Rational PersonDecember 30, 2015 09:56 am
Whoops, forgot to cite the case I was referring to (unlike Supreme Court justices or Federal Circuit judges, I am not infallible):
Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC (Fed. Cir. 2015)
A Rational PersonDecember 30, 2015 09:53 am
Anon2: Further to your point, it appears that the Federal Circuit has effectively declared that the written description and enablement requirements are redundant, because the following language from 35 USC 101:
“Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
actually covers everything in both the written description and enablement requirements. As mere scriveners, unlike the incredibly wise judges on the Federal Circuit, we patent professionals are simply not smart enough to understand the full scope of this single sentence from 35 USC 101 and erroneously continue to believe that the enablement and written description requirements of 35 USC 112 are important and necessary in determining the patentability of a claim.
Anon2December 30, 2015 09:11 am
The director could simply “declare” that “in light of the emergency situation” 35 USC 21(a) DOES apply.
This bru-ha-hah about “proper” authority and the so called “law” is silly, it is outdated thinking, we live in modern times, government requires “flexibility” to act with expediency when required, she’s the government, the freaking director of the USPTO.
Clearly “proper” authority is a non-issue, I mean, since the Director did not bother to inquire about, it nor to declare it to be one.
AnonDecember 29, 2015 05:56 pm
Now you are sounding downright silly – wanting patent reform to actually address reform of those measures within the Office and all.
What next, suggest that the examination process itself be the focus of improvements?
Sounds way too radical and something that might actually strengthen patents.
(now where did Sheldon put my “Sarcasm” sign….?)
A Rational PersonDecember 29, 2015 05:29 pm
Being serious now: I don’t see how 35 USC 21(a) applies to a situation where the USPTO’s electronic business center is down. The section of the statute specifically only mentions the US Postal Service and appears to be mainly directed to difficulties for specific applicants not to a problem at the USPTO.
I would also suggest that allowing Director Lee to get herself off the hook by trying to distort what 35 USC 21(a) says not only sets a bad precedent but will reduce the likelihood that this section will ever be cleaned up to specifically address the incredibly foreseeable type of emergency that occurred last week with the USPTO’s computer systems.
This situation should have been cleaned up as part of the so-called “patent reform” called the America Invents Act.
davisDecember 29, 2015 05:07 pm
Yeah, she could have, but for her to do so she would have had to acknowledge at the outset that this was a catastrophic event. When she did that, she and upper management would then have to consider the fact that this would impact the examining corps. This would then lead to having to consider the fact that granting the examination corps catastrophic time would be a legitimate course of action. Unfortunately, as the USPTO has shown under director Lee, this is anathema to upper management.
So what do we end up with? A literal week of nebulous excuses and a issue dodging that helped nobody. All because the idea of giving examiners nonexamining time when the entire system fails is a Sophie’s choice the directory simply can’t make.
EGDecember 29, 2015 04:28 pm
Yeah, those like David Boundy, have commented that the USPTO should haven declared an “emergency” under 35 USC 21(a), and not rely on applying the Holiday rule. The way the USPTO handled this emergency has simply created another potentially “technicality” that could snare an innocent patentee in a litigation issue that should never have even surfaced.
Still, I would suggest 35 USC 21(a) should be updated to explicitly permit the Director to declare such an emergency in those instances where their electronic systems are down don’t permit electronic filing. Electronic filing is the way the world is going. Accordingly, we need to get the powers of USPTO to handle such emergencies into the 21st Century.
Night WriterDecember 29, 2015 03:47 pm
Actually, now that I had a chance to think about it. What she should of done and maybe still can do is the following: declare an emergency, and then make any filing made during the outage go back to a date not earlier than the 22nd when the filer swears it would have been filed but for the down system. So, if you file on the 26th, you get the 23nd if you have a paper that says you could have filed on the 23rd if you could. That would fix all the problems. (Plus waive the $400 paper filing fee that we paid.)
Randall S. SvihlaDecember 29, 2015 03:23 pm
The USPTO is presumably acting under 35 USC 21(b) based on this notice for September 11, 2001:
Emergency Closure – September 11, 2001
The United States Patent and Trademark Office, as of approximately 10:30 a.m., September 11, 2001, has been closed for official business as a result of an order by the Office of Personnel Management. In the emergency situation of this day, the Patent and Trademark Office will consider September 11 a “federal holiday within the District of Columbia” under 35 U.S.C. § 21(b). Although normally the Patent and Trademark Office does not consider days on which the agency is closed for only part of the day as a federal holiday, it is making an exception for the unusual circumstances of this date. As a result of the closing of public transportation and particular circumstances in the immediate vicinity of the Office, parties are discouraged from coming to the Patent and Trademark Office in order to make filings on September 11.
Any action or fee due on September 11, 2001, will be considered as timely for the purposes of, e.g., 35 U.S.C §§ 119, 120, 133 and 151, if the action is taken, or the fee paid, on the next succeeding business day on which the Patent and Trademark Office is open. 37 C.F.R. § 1.6(a)(2) provides that correspondence deposited as Express Mail in accordance with 37 C.F.R. § 1.10 will be considered filed on the date of its deposit.
11 September 2001
Night WriterDecember 29, 2015 03:21 pm
The sad thing is that I bet Director Lee cannot even understand the subtle problems this can cause because she had no experience prosecuting patent applications before being put in charge of 8,000 people prosecuting patent applications.
Night WriterDecember 29, 2015 03:19 pm
The solution is to declare the emergency and give a filing date of everything filed during the down days a Dec. 22nd filing date. (Of course, this could cause problems too.) And waive the paper filing fee for those of us that filed by paper while the electronic filing system was down. But, actually, it looks like the emergency provisions only allow a back dating of filing dates.
patent leatherDecember 29, 2015 02:46 pm
Or the Director could have just considered the USPTO “closed” on those days, see 37 CFR 1.9(h). Apparently the USPTO legal counsel is on par with their IT department.