COVID-19 and Intellectual Property

March 25, 2020

Note: This article was updated on April 2, 2020 to reflect additional Intellectual Property Office Notifications

Despite the COVID-19 closures and cancellations, some governmental intellectual property offices have not extended deadlines, so parties should remain mindful that protections for individuals and businesses should not be overlooked. Many patent and trademark offices around the world are providing relief for businesses that may have difficulty tending to their intellectual property filings due to other pressing COVID-19-related concerns; some have not. Lewis Rice remains in close contact with the United States Patent and Trademark Office (“USPTO”) and worldwide foreign associates to ensure that your deadlines are not missed, and that your intellectual property will be secure when normalcy returns. We have not found any governmental intellectual property office that has changed the first-to-file rule for purposes of original patent protection, so parties should not delay filing new patents.

United States Deadlines

The USPTO has eliminated all in-person meetings—all appeals and interviews will now be conducted by video or telephone—and has closed the USPTO to the public. The USPTO also offered some initial relief for deadlines by waiving fees for patent applications which were abandoned or trademarks that were abandoned, cancelled, or expired due to an inability communicate with the USPTO due to COVID-19. 

This relief, though helpful in these specific circumstances, was very narrow in scope, because the vast majority of deadlines for patents and trademarks are set by law and cannot be modified, extended, or waived by the USPTO on its own. With the passage of the Coronavirus Aid, Relief, and Economic Security Act (the “CARES Act”) on March 27, 2020, Congress and the President have given the Director of the USPTO the authority to modify patent and trademark deadlines during the current health emergency. 

The Director has now exercised that authority and has issued notices regarding the changes to deadlines permitted at this time. Between now and April 30, 2020, a significant number of patent and trademark deadlines and payment dates will be extended 30 days from their original date, if the eventual filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. Details on the Director’s notices can be seen here

International Deadlines

Elsewhere, critical deadlines have been extended in a number of places, but these changes vary by country and governmental entity. In Europe, the European Union Intellectual Property Office has extended to May 4, 2020 the deadlines for all time limits between the present and April 30 for trademarks, while the European Patent Office has extended deadlines to April 17, 2020, though certain ongoing proceedings will continue to be held by videoconference. The African Regional IP Office is closed until April 20, 2020, with most IP deadlines between March 18 and April 30, 2020 extended to May 31, 2020. By contrast, the World Intellectual Property Organization, responsible for Patent Cooperation Treaty (“PCT”) applications, has stated that it will continue to process applications without changes to deadlines.

The effect of COVID-19 on foreign IP offices varies considerably worldwide, often as a reflection of each country’s response to the outbreak and/or how severely it has been affected to date. The following are relevant snippets of press releases from some of the larger offices around the world:

  • The Benelux Office of Intellectual Property (serving Belgium, the Netherlands, and Luxembourg) has suspended deadlines for cases so long as emergency restrictions are in place for its member countries, and will grant extensions of at least a month after restrictions are lifted to address any deadlines during this period;
  • Brazil’s National Institute of Industrial Property has closed, with all deadlines extended to April 14, 2020;
  • Canada’s IP Office, which originally extended all deadlines to April 1, 2020, has now extended again to May 1, 2020;
  • China’s National IP Administration has stated it will forego late fees for missed annuity payments for issued patents, where the delay is due to COVID-19, and will also extend deadlines for trademark applicants or registrants;
  • France’s IP Offices has suspended all deadlines until at least a month “after the end of the state of health emergency”;
  • Germany’s Patent and Trademark Office position is similar to that of the USPTO —it will consider COVID-19 issues with regard to deadlines to reestablish rights in patent and trademark cases, but cannot extend deadlines specified by law, though it will extend deadlines for pending IP procedures until at least May 4, 2020;
  • India’s Patent and Trademark Offices has closed until April 15, 2020, extending all deadlines until at least that date;
  • The Intellectual Property Corporation of Malaysia, which originally suspended deadlines until April 1, 2020, has now extended most deadlines to at least April 15, 2020, with certain patent deadlines extended to April 30, 2020;
  • Mexico’s IP Office has suspended and extended all deadlines until at least April 20, 2020;
  • Russia’s IP Office has suspended deadlines until at least April 4, 2020
  • South Africa’s IP Office has extended all deadlines to May 4, 2020;
  • South Korea’s IP Office will grant extensions for failure to make payments or for a failure to timely submit documents, provided that applicants submit a request for an extension, along with an explanatory statement and evidence, and has extended most deadlines to April 30, 2020;
  • Turkey’s deadlines have been suspended until at least April 4, 2020; and
  • United Kingdom’s IP Office initially stated that it will extend deadlines, grant extensions, and reinstate IP rights lost during the outbreak on a case-by-case basis, and has since added that it will extend deadlines to the extent allowed under national and international law.

Smaller offices have, in many cases, suspended operations or deadlines indefinitely (Andorra, Dominican Republic, Ethiopia, Pakistan; Peru, Portugal, Romania, Syria), while others have suspended operations to a specific date, which could change (Djibouti, Jordan, Saudi Arabia, Sudan—April 1; Argentina—April 3; Palestine (Gaza)—April 5; Libya, Palestine (West Bank), Tunisia—April 6; Egypt—April 8; Iraq—April 11; Lebanon, Kuwait—April 12; Malaysia—April 14; Philippines—April 15; Ireland—April 19, 2020). These decisions have often been made with little to no warning, and as such, the decision to resume operations (and deadlines) may also come with little warning, requiring quick action by all parties involved.

Summary

To be concise, this is only a sampling of announcements made in the past few days, and even then, only a summary of the current status of each office. The worldwide situation is incredibly dynamic, with offices often issuing releases, only to modify those same releases within hours. These issues are compounded by the fact that there are nearly 400 separate foreign, regional, and international IP offices across nearly 200 countries, each subject to numerous treaties, laws, and regulations.

Individuals and entities are encouraged not to rely on these extended deadlines unless absolutely necessary. In some countries, there is no guarantee that the outbreak will provide protections against missed deadlines. In most others, deferred deadlines will result in a large number of deadlines all coming due on the same date, creating logistical difficulties for filing, both for IP practitioners as well as the receiving offices. Missing a deadline, even one extended due to pandemic, can result in a permanent loss of IP rights. To avoid any lapse of rights, we will continue to instruct our foreign associates electronically according to the original deadlines so that they are prepared to file responses when it becomes possible.

If you have questions regarding IP, domestically or internationally, please contact one of the authors of this alert or another member of Lewis Rice’s Intellectual Property Group.

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