Written By Peter Wong, Dominique T. Hussey, Stephen D. Burns, and Tayler Meagher
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 May 15, 2020 (inclusive) is extended until May 19, 2020. The designated period may be extended if warranted by the circumstances. The extended deadlines include a deadline to respond to an examination report. With respect to trademarks, the extended deadlines also include deadlines in opposition, expungement and objection proceedings.
With respect to patent and design applications, Applicants 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. Further, CIPO's position is that the extension has no effect on the deadline to file a divisional application, or the deadline to appeal a decision of the Commissioner of Patents to refuse to grant a patent to the Federal Court.
United States Patent and Trademark Office (USPTO): Certain Extensions, Revivals, and Reinstatements
The USPTO administers U.S. utility and design patents, and trademarks.
Pursuant to the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the USPTO has extended the time to file certain specified documents or pay certain specified fees with respect to patents and trademarks, to June 1, 2020, subject to the following conditions. First, the initial due date must fall on or between March 27, 2020, and May 31, 2020. Second, the filing must be accompanied by a statement that the delay in filing or payment was due to a person associated with the filing or fee being personally affected by the COVID-19 outbreak, such that the outbreak materially interfered with timely filing or payment. According to the USPTO, circumstances that qualify as materially interfering with timely filing or payment include, without limitation, office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances. With respect to patents, relief is limited to small and micro entities for some deadlines. Further, deadlines for patent application filing fees, patent priority filings, and national stage entry of a PCT international application are not eligible for extension.
In recognition of the COVID-19 outbreak being an "extraordinary situation," the USPTO has also 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): Rules-Based Excuse for Delay
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, but has noted rules that may assist applicants. The application of these rules must be carefully considered on a case-by-case basis, and still require the relevant action to be taken within certain time limits.
With 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, or due to the COVID-19 outbreak. Regarding the latter, the International Bureau (as a receiving Office) has issued an interpretative statement that it considers the COVID-19 pandemic to be a natural calamity or other like reason that provides an excuse for delay in meeting a time limit. Accordingly, the International Bureau (as a receiving Office) will treat favorably any request for excusing delay that cites COVID-19 related issues, without requiring evidence that COVID-19 affected the locality in which the interested party resides. The relevant action must nonetheless be taken as soon as reasonably possible. The International Bureau (as a receiving Office) is also delaying the issuance of notifications that an international application is considered withdrawn until May 31, 2020. The International Bureau has encouraged other PCT Offices to adopt these practices, and waive the charging of late payment fees.
With respect to applications filed through the Madrid System and Hague System, WIPO notes that certain Rules may excuse a user who has missed a time limit for a communication addressed to WIPO if the user sends that communication within five days after regaining access to mail or delivery services, or to electronic communication. WIPO must receive the communication no later than six months from the date of the original deadline. Users must ordinarily provide adequate evidence of the reason why WIPO should excuse this failure. WIPO, however, has indicated that it will treat favorably any request for excusing delay that cites COVID-19 related issues, without requiring submission of evidence in respect thereof. WIPO also notes that if a deadline falls on a day on which an IP Office of a Contracting Party is not open to the public, then the time limit would expire on the first subsequent day on which that IP Office reopened. Finally, with respect to applications filed through the Madrid System, WIPO notes that holders or applicants who have failed to meet deadlines for remedying certain specified irregularities under the Rules may request WIPO to continue processing within two months of the original deadline.
European Patent Organization (EPO): Certain Extensions
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 May 4, 2020. The EPO notes that this extension of time also applies to periods for paying fees, including renewal fees. 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 recognized that there is a global risk of acquiring COVID-19 due to the pandemic spread, and is no longer classifying specific countries and regions as international risk areas.
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. Further, EUIPO has decided that all time limits expiring between May 1, 2020, and May 17, 2020, are automatically extended to May 18, 2020. 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): Certain Extensions
The UKIPO administers patent, trademarks and designs in the United Kingdom. The UKIPO has declared March 24, 2020, and subsequent days until further notice, to be interrupted days. Accordingly, deadlines for patents, trademarks, and designs, and applications for those rights, which fall on an interrupted day will be extended until the UKIPO notifies the end of the interrupted days period. The UKIPO has indicated that it will review the situation on May 7, 2020, and will provide a minimum of two weeks' notice before ending the interrupted days period. Further, 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 ExtensionsThe 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: Certain Extensions under Streamlined Process
IP Australia administers patent, trademarks, and designs in Australia. From April 22, 2020 until at least May 31, 2020, IP Australia is providing a streamlined process for requesting an extension of time of up to 3 months, without cost, for some types of deadlines, if the deadline cannot be met due to disruptions from the COVID-19 pandemic. These deadlines do not include payment of renewal fees, but a six-month grace period, with late fees, may still be available for those deadlines. In addition, an ordinary request for extension of time for a period longer than 3 months may still be available under the applicable legislation. IP Australia has also indicated that it will consider requests for refunds and waivers of fees on a case-by-case basis.
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.