Written by Peter S.L. Wong, Dominique T. Hussey and Stephen D. Burns
Among the many matters the COVID-19 outbreak has disrupted, it has become more challenging for some IP-owners to abide by the strict procedures and deadlines for protecting their intellectual property rights, including trademarks, patents, and industrial designs. International IP offices have responded. We summarize below the current positions of some of the major intellectual property offices on applicable deadlines, in response to the COVID-19 outbreak.
Some of these intellectual property offices have modified procedures and deadlines for protection of intellectual property rights, but we recommend abiding by all normal procedures and deadlines whenever possible. We also recommend confirming the position of the intellectual property offices as necessary, in view of the rapidly evolving COVID-19 situation. Finally, we caution that the government intellectual property offices may be delayed in delivering their services, even though they remain operational. We will provide timely updates on these matters.
Canadian Intellectual Property Office (CIPO): Certain Extensions
CIPO administers Canadian patents, trademarks, and industrial designs. CIPO has indicated that any deadline fixed by the Patent Act, Trademarks Act, or Industrial Design Act in respect of business before CIPO that ends within the designated period of March 16, 2020 to March 31, 2020 (inclusive) is extended until April 1, 2020. The designated period may be extended if warranted by the circumstances. Applicants, however, should not rely on this extension in respect of a deadline for filing an application to ensure novelty or non-obviousness against public disclosure of an invention or design, or to claim priority to previously filed application.
United States Patent and Trademark Office (USPTO): Certain Revivals and Reinstatements
The USPTO administers U.S. utility and design patents, and trademarks. In recognition of the COVID-19 outbreak being an "extraordinary situation," the USPTO has waived two procedural requirements.
First, the USPTO is allowing patent applicants, trademark applicants, and trademark registrants to request a waiver of the fee to revive an abandoned application, or reinstate a canceled/expired trademark registration (as the case may be), where the abandonment, cancellation or expiration resulted from a delay in reply to a USPTO communication as a result of the COVID-19 outbreak. In this regard, a patent applicant must state that a timely reply could not be filed because the applicant, an inventor, or an agent was personally affected by the COVID-19 outbreak; a trademark applicant or registrant must explain how the failure to respond was due to the COVID-19 outbreak. Further, a petition for revival or reinstatement must be filed within two months of the issue date of the notice of abandonment or cancellation, or within six months of the date of abandonment or cancellation if the applicant or registrant did not receive such a notice.
Second, the USPTO has waived the requirement of an original hand written signature for credit card payments that are not made via the USPTO's electronic filing systems. Therefore, such a payment may instead be accompanied by an "S-signature", or a graphic representation of a handwritten signature or an "S-signature", in accordance with U.S. laws. This waiver is effective from March 19, 2020 until further notice.
World Intellectual Property Organization (WIPO): No Change
WIPO administers applications filed through the Patent Cooperation Treaty (PCT), the Madrid System for the International Registration of Marks, and the Hague System for the International Registration of Industrial Designs. WIPO has not indicated any modifications to any procedures or deadlines for protection of intellectual property rights. In respect to applications filed through the PCT, WIPO has noted that certain PCT Rules may assist applicants where actions cannot be taken in the event of closure of a PCT authority or the International Bureau, or in the event of a closure of the applicant or agent's place of work, due to the COVID-19 outbreak. The application of these PCT Rules must be carefully considered on a case-by-case basis.
European Patent Organization (EPO): Certain Extensions; May Not Apply to Canada
The EPO administers patent applications filed under the European Patent Convention. The EPO has issued a notice that periods for filing of documents with office of the EPO that expire on or after March 15, 2020 are extended for all parties and their representatives to April 17, 2020. The EPO has indicated that this period may be further extended on publication of a further notice.
Further, the EPO has provided a reminder that the rules of The European Patent Convention provide a safeguard against non-observance of a time limit due to disruption in mail delivery or transmission due to an exceptional occurrence affecting the location where the party or its representative resides or has a place of business. (To paraphrase, this rule allows a document that is received late to be deemed to have been received on time, if the party effects the mailing or transmission within the fifth day after the disruption, and the party provides evidence that on any of the ten days preceding the day of the day of the time limit, it was not possible to observe the time limit due to the exceptional occurrence.) In this regard, the EPO has noted that high-risk areas affected by the spread of COVID-19 include China, South Korea, Iran, Italy, the German Landkreis Heinsberg in North Rhine-Westphalia, the French region Grand Est, the Austrian federal state of Tyrol, and Madrid. This list does not include Canada.
European Union Intellectual Property Office (EUIPO): Procedural Extensions
EUIPO administers European Union trademarks and Community designs in the European Union. EUIPO has decided that all time limits expiring between March 9, 2020 and April 30, 2020 are automatically extended to May 1, 2020. In practice, this means that the time limits are extended to Monday, May 4, 2020 because EUIPO considers Friday, May 1, 2020 to be a public holiday. The extension applies to all procedural deadlines, whether set by EUIPO or by statute, that affect all parties in proceedings before the EUIPO.
UK Intellectual Property Office (UKIPO): Case-by-case Extensions
The UKIPO administers patent, trademarks and designs in the United Kingdom. The UKIPO has not indicated any modifications to any procedures or deadlines for the protection of intellectual property rights. However, the UKIPO has stated that it is willing to consider requests for extensions of time as favourably as possible on a case-by-case basis.
German Patent and Trademark Office (DPMA): Procedural Extensions
The DPMA administers patent, utility models, trademarks, and designs in Germany. The DPMA has extended all time limits granted by the DPMA, with regard to all pending intellectual property procedures, to May 4, 2020. However, the DMPA has noted that it is not authorized to extend time limits provided for by law.
IP Australia: No Change
IP Australia administers patent, trademarks, and designs in Australia. IP Australia has not indicated any modifications to any procedures or deadlines for protection of intellectual property rights. However, IP Australia has provided a reminder that some (but not all) time periods can be extended upon request in the normal way, accompanied by a declaration setting out how the COVID-19 outbreak interfered with responding in time. Further, IP Australia has indicated that requests for waiver or refund of the fee for the extension of time will be considered on a case by case basis as per its current practice.
If you have any questions regarding the information in this article, please contact a member of the Bennett Jones Intellectual Property team. In addition, please visit our COVID-19 Resource Centre for other COVID-19-related materials.