This alert is part of Wolf Greenfield's COVID-19 Resource Center. To access the full resource center, click here.
On May 29, 2020, we issued an IP Alert on the announcement by the USPTO to extend certain deadlines to July 1st due to COVID-19.
- The applicability of any extension or other remedy to a specific deadline should always be confirmed with local counsel – because of the variety of statutory and regulatory schemes that implement administration of intellectual property law across the globe, the applicability of a given extension or remedy may be more nuanced than is readily apparent. Wolf Greenfield has a stable of trusted counsel around the world at our disposal for this purpose.
- Extensions and other remedies should in general only be taken as a last resort – the safest best practice is to adhere to deadlines as originally fixed. Even where a given extension or remedy appears to unambiguously apply to a particular deadline, other strategic considerations may counsel against reliance on a new and untested procedure that could adversely affect intellectual property rights if not pursued properly.
- Because of the widespread impact of the COVID-19 outbreak on basic services like shipping and postal delivery, electronic submissions should be made wherever possible in place of paper mail.
- IP Australia and the Intellectual Property Office of New Zealand (“IPONZ”) have not provided for any special category of extensions for patent and trademark deadlines. Normal procedures available in these jurisdictions can be used for extension of a missed deadline, and while requests for extension will be evaluated on a case-by-case basis, IP Australia has now streamlined this process, and IPONZ has stated that it will look favorably on these requests).
- Requests for extensions of up to three months for missed deadlines in Australian patent, trademark and design applications should be provided in writing, and IP Australia has provided standard wording for the required Declaration. Fees for extensions that are due to the disruptive effects of the COVID-19 pandemic will be waived (while payment may be required up front, IP Australia is working on system upgrades that will waive this requirement). This system has been extended until June 30, 2020.
- Extensions of time in New Zealand patent and trademark applications should be applied for in the normal manner, but IPNOZ has also indicated that it will respond to requests submitted directly through their online contact form. In addition, IPONZ has indicated that it may not respond to these requests prior to the expiration of the deadline, but states that “any deadline will be treated as having been conditionally met and the IPONZ delay in processing will be taken into account if further action is required.”
- It also appears that IPONZ is now extending certain deadlines sua sponte (i.e., of its own accord, in the absence of a request by the applicant), but is doing so on an ad hoc basis, with no discernible pattern.
- As is the case for all such COVID-19 related extensions and remedies, it is important to note that not all time periods can be extended. For example, in Australian patent applications, extensions are not available for annuity payments. In addition, care should be taken in seeking extensions of deadlines set by bodies other than IP Australia (such as requests for Patent Term Extension (“PTE”) and direct (i.e., non-convention) applications).
- Because of the discretionary nature of this restoration procedure, it would be particularly prudent to meet all current and future deadlines for Australian and New Zealand applications.
- Brazil’s National Institute of Industrial Property (“INPI”) has suspended due dates falling due between March 16, 2020 and May 31, 2020 for all IP matters, automatically delaying these deadlines to June 1, 2020. Brazilian associates are recommending the filing of a special petition with any late-filed submission, clarifying that the benefit of this extension is being sought.
- There is a realistic possibility of a logjam of filings on June 1, 2020 that could result in submission problems. For this reason, it is again particularly prudent to meet all current and future deadlines for all Brazilian applications, utilizing these extensions only when there is no means to meet the regular deadline.
- The Brazilian Health Regulatory Agency (“ANVISA”), which must approve the grant of Brazilian patent applications in the pharmaceutical field, has issued its own resolution suspending for 120 days all deadlines as of March 23, 2020. This suspension applies to requirements and appeals related to IP matters at ANVISA.
- The Canadian Intellectual Property Office (“CIPO”) has automatically extended certain patent, trademark and industrial design deadlines falling due between March 16, 2020 and July 3, 2020 and Monday, July 6, 2020.
- This extension applies only to periods of time fixed under Canada’s Patent Act, Trademarks Act, and Industrial Design Act, and as a result, not all deadlines are extended.
- For example, while Office Action Response deadlines and deadlines in proceedings before the Trademarks Opposition Board are extended, extensions do not apply to deadlines set by other government departments (e.g., deadlines relevant to Certificates of Supplementary Protection, which are administered by Canada’s Minister of Health and not CIPO), or pursuant to international treaties (e.g., the PCT and the Madrid Protocol)
- Similar to its regional counterparts in Australia and New Zealand, China’s National Intellectual Property Administration (“CNIPA”) has not extended any deadlines due to the COVID-19 outbreak, patent and trademark applications that become abandoned as a result of a deadline missed for reasons related to the outbreak can be restored without payment.
- Applicants seeking restoration must submit a Request for Restoration and supporting materials explaining the nexus between the missed deadline and the COVID-19 outbreak. Requests should be filed within two months from the date that the cause of the missed deadline is remedied, and no later than two years after expiration of the deadline.
- Again, because of the discretionary nature of this restoration procedure, it would be particularly prudent to meet all current and future deadlines for Chinese applications.
- The European Patent Office (“EPO”) previously announced that certain deadlines expiring on or after March 15, 2020 were automatically extended until June 2, 2020, but this deadline was not further extended. Applicants should now be prepared to meet all original deadlines set for European patent applications.
While the deadline for paying renewal fees has not been extended beyond June 2, 2020, the EPO has waived the 50% renewal fee surcharge for late paid renewal fees due from March 15, 2020 until August 31, 2020.
The European Union Intellectual Property Office (“EUIPO”) previously issued a similar extension for EU trademark and design applications, whereby deadlines expiring between March 9, 2020 and May 18, 2020 were automatically extended until May 19, 2020, but this deadline was not further extended, and the office is now operating as usual. That said, EUIPO has indicated that COVID-19-related difficulties may constitute an exceptional reason for granting extensions of time, may be looked upon favorably.
- Intellectual Property India (“IPI”) has only recently reopened after the easing of a nationwide lockdown that was in place through May 31, 2020. While IPI did not implement any official measures to extend deadlines, Indian practitioners expect that deadlines missed during the closure will be either automatically extended, or extendible via petition and payment of fees. Applicants should now be prepared to meet all original deadlines set for Indian patent, trademark and design applications.
- Nonetheless, because of partial quarantine measures still in effect, Indian counsel may be operating at reduced capacity, impacting their ability to provide substantive advice and meeting filing deadlines.
- Applicants should accordingly provide ample advance notice to local counsel to allow time for preparation of submissions so that they may be filed as soon as IPI re-opens, or sooner if permitted.
- The workforce of the Israel Patent Office (“ILPO”) has been cut in half per a decision by the Ministry of Justice, but continues to operate as normal.
- Applicants should also note that Sundays are working days in Israel, and thus deadlines falling due on Sundays are not automatically extended until Monday as in many other patent offices.
- The ILPO has indicated that if a patent, trademark and design deadline is missed as a result of circumstances relating to the COVID-19 outbreak, applicants can submit a request for extension including an explanation of the circumstances surrounding the missed deadline and the details of the events related to COVID-19. Requests will be reviewed to determine if there is a causal relationship between the situation and the failure to meet the deadline, but the ILPO has indicated that these requests will be considered favorably in light of the circumstances. Requests can be filed either proactively or retroactively.
- The ILPO has also announced that no files will be closed (i.e., terminating an application) for failure to meet a deadline to answer correspondence until May 1, 2020. To date, this deadline does not appear to have been extended.
- As is the case for all such COVID-19 related extensions and remedies, it is important to note that not all time periods can be extended. For example, deadlines for submission of trademark or patent oppositions, payment of renewal fees, requests for PTE, requests for reinstatement of a design application and requests to reconsider a design rejection cannot be extended. In addition, fee payments are still due, and cannot presently be extended.
- Again, because of the discretionary nature of this restoration procedure, it would be particularly prudent to meet all current and future deadlines for Israeli applications.
- The Japanese Patent Office (“JPO”) has not issued any extensions of deadlines at present, but is providing relief measures for certain patent, utility model, design, and trademark deadlines missed due to the COVID-19 outbreak.
- Applicants seeking to remedy a missed deadline must file a request for an extension of time that explains the circumstances that prevented the applicant from taking the required action. Requests will be granted on a discretionary basis, but the JPO has not yet issued guidelines suggesting what circumstances might be recognized as sufficient to secure an extension. In addition, the JPO tends to be strict in assessing discretionary request for extensions of time, which suggests there is some risk in pursuing this pathway.
- While there does not appear to be a specific deadline for carrying out the required action after missing deadlines related to applications, trials, and appeals pending at the JPO, actions subject to statutory time limits should generally be filed within two months of the time it becomes possible for the applicant to do so for overseas residents (14 days for Japanese residents). Moreover, most deadlines cannot be extended past six months after their lapse. Unlike most other jurisdictions, these extensions appear to apply to applications filed with priority claims, including PCT applications.
- Overall, because the scheme for extension of deadlines appears to be complex, with different requirements applying to different deadlines, extreme caution in using these procedures is advised.
- As is the case for all such COVID-19 related extensions and remedies, it is important to note that not all time periods can be extended.
- Again, because of the discretionary nature of this restoration procedure, it would be particularly prudent to meet all current and future deadlines for Japanese applications.
- The Mexican Institute of Industrial Property (“IMPI”) is closed by public decree from March 24, 2020 through May 30, 2020, and is presently set to reopen on June 1, 2020. All deadlines falling due in this time are automatically extended until June 1, 2020, and no requests or fees are required. This closure impacts all patent, trademark and litigation procedures before IMPI.
- All deadlines falling due before Russia’s Federal Service for Intellectual Property (“Rospatent”) between March 30 and May 11, 2020 were extended by virtue of a President’s Decree that these are non-business days, but this decree has not been further extended. Thus, original deadlines should now be observed for Russian patent, trademark and design applications.
- While the Intellectual Property Office of Singapore ("IPOS") was previously closed due to the COVID-19 outbreak, it is now open and operating as normal.
- The (South) Korean Intellectual Property Office (“KIPO”) previously granted ex oficio extensions for certain deadlines falling between March 31, 2020 and May 31, 2020, automatically extending these deadlines to June 1, 2020, but has not issued any additional extensions.
- This extension only applies to deadlines for Office Action responses, trademark opposition briefs, and responding to notices for correction required by KIPO. Other deadlines explicitly prescribed under South Korea’s Patent, Utility Model, Trademark and Design protection Acts were not eligible for this extension.
- The situation in Taiwan is similar to that in China – while the Taiwanese Intellectual Property Office (“TIPO”) is operating as usual and no automatic extensions of time apply to missed deadlines, patent and trademark applicants who fail to comply with a statutory deadline due to the COVID-19 outbreak may file a request for reinstatement coupled with documents of proof.
- Requests should explain the reason for the missed deadline and the relationship to the COVID-19 outbreak, and will be addressed on a case-by-case basis. Requests should be filed within 30 days from the date that the cause of the missed deadline is remedied, and no later than one year after expiration of the deadline.
- Again, because of the discretionary nature of this restoration procedure, it would be particularly prudent to meet all current and future deadlines for Taiwanese applications.
Other countries may be added to this list. Check back for additional updates.
Wolf Greenfield is fully operational, and we are here to help you continue to meet original deadlines. However, please contact us should you believe you need the accommodations available through the various entities mentioned above due to the COVID-19 outbreak so we can assess whether or not you qualify and help you take the appropriate actions.
Wolf Greenfield will keep you apprised of any additional changes that may impact you.