In light of the continuing global impact of COVID-19, we wanted to keep clients and Associates updated on changes that may affect IP rights. Since the first IP office was disrupted by the COVID-19 coronavirus earlier this year, some IP Offices have taken steps to deal with the impact of the pandemic.
Following is a summary of the deadline extensions that some IP Offices have put in place this past week.
As the first IP office to be impacted by the COVID-19 coronavirus, the China National Intellectual Property Administration (CNIPA) released an official notification explaining how users can file trade mark applications during the COVID-19 outbreak.
CNIPA also released Decree 350 which outlines how IP rightsholders and applicants can seek continued protection if deadlines are missed as a result of the pandemic. This decree covers patents, trade marks, and integrated circuit layout design.
Fees for the late payment of Chinese patent annuities have also been waived where the late payment can be shown to be a direct result of COVID-19. The Chinese IP Office has also recently carried out its first ‘remote’ hearings, where parties to the proceedings were able to log onto a court app.
The United States Patent and Trade Mark Office (USPTO) has not yet extended any deadlines, but its offices are closed to the public (read more here). The USPTO announced it will waive the petition fee to revive patent and trade mark applications and registrations that were abandoned or cancelled due to the impact of the pandemic. The notice also specified trade mark and patent time limits that are not extendable by petition.
Read more here.
The UK IPO confirmed that it will “extend time periods where national and international legislation allows” and is “willing to consider requests for extensions of time as favourably as possible on a case-by-case basis”.
Read more here.
The German Patent and Trade Mark Office confirmed that it ‘cannot extend time limits specified by law’, but reminded users that they can request for ‘re-establishment of rights’ if IP rights are lost as a result of the pandemic.
Read more here.
The Italian Patent and Trademark Office will now only accept electronic or postal deposit of documents due to the closure of its offices. The Office suspended the time limit for Office proceedings, except for two procedures, until April 3 and relaxed the time limit for submitting patent translations and payment of fees due between March 9 and April 3. The Office also extended deadlines for certain applications, including for trade marks (read more here).
The European Patent Office (EPO)’s announcements included an extended deadline and relaxed rule on submission of documents for those in the ‘high-risk areas’ (six countries as of March 13: China, South Korea, Iran, Italy and the German Landkreis Heinsberg in Nordrhein Westfalen, and the French region Grand Est). The EPO is extending deadlines where an applicant has to complete an act before the EPO, for example filing a response to an examination report or filing documents in support of an application. Any such deadlines falling on or after 15 March 2020 are being automatically extended to 17 April 2020. The EPO is monitoring the situation and may extend this period further.
The European Union Intellectual Property Office (EUIPO), which handles trade mark matters, announced that it is extending all time limits expiring between 9 March 2020 and 30 April 2020, to 1 May 2020. The EUIPO has also asked its staff to work from home.
Read more here.
At the time of posting this update, the national IP offices of France, Netherlands, Switzerland, Japan, South Korea and Australia had not announced any deadline extensions.
Although deadline extensions may be allowed in some jurisdictions (and further extensions may be announced in the coming weeks as the situation further develops), we remind owners of IP rights that they should still aim to respond swiftly to requests for instructions by their attorney to ensure efficient processing of matters.
At MBIP we have received excellent continuity of service from our Associates, despite the lockdowns in China, Italy and France, with most of our Associates in affected areas working from home. Likewise, we will continue to serve our clients and do not anticipate any disruption to our usual processing times, as our attorneys and support staff are well-equipped to work remotely as necessary.
We are continuing to monitor the Coronavirus situation as it relates to IP matters, and our business is operating as usual. If you have a specific deadline that you feel you are unlikely to be able to meet due to disruptions caused to your industry by the pandemic, please contact us for advice as soon as possible either by directly contacting your attorney or emailing email@example.com.
We appreciate your ongoing support as we all try to navigate this situation locally and globally, and hope that our valued clients and Associates remain in good health and good spirits during this challenging time.