UPDATED May 15, 2020
The current pandemic of the coronavirus (COVID-19) has affected all industries throughout the world, including the world of intellectual property. The prosecution of intellectual property, including patents and trademarks, is deadline intensive. However, in view of the pandemic, intellectual property offices around the world are taking unprecedented steps in an effort to curb the burden on intellectual property applicants.
We at Gottlieb, Rackman & Reisman are monitoring local and foreign intellectual property offices so that we can ensure that your intellectual property is protected and that deadlines are timely met. Below is a representative list of actions taken by various intellectual property offices throughout the world in view of the COVID-19 pandemic. This list is current as of May 15, 2020, and we will update it periodically.
Should you have a question regarding a particular jurisdiction below, or one that is not listed, please contact us.
United States – The United States Patent and Trademark Office considers the COVID-19 pandemic an extraordinary event and will waive certain petition to revive or reinstatement fees (for trademark applications and registrations) and a reply with a petition under 37 CPR 1.137(a) for patent applicants in certain situations for customers impacted by the COVID-19 pandemic.
In addition, in accordance with section 12004 of the Coronavirus Aid, Relief, and Economic Security Act, on March 31, 2020 the USPTO further extended certain trademark and patent deadlines that fall between March 27, 2020 and May 31, 2020. If the deadline is met by June 1, 2020, it will be considered timely filed, provided that the delay in filing or payment is due to the COVID-19 outbreak. If a deadline fell before March 27, this extension does not apply.
To demonstrate that the delay was due to the outbreak, the applicant/registrant or other person associated with the filing (e.g., the attorney/firm of record) must show that they were personally affected by the outbreak. An illustrative list of what constitutes “personally affected” includes office closures, cash flow interruptions, inaccessibility of files/materials, travel delays, or illness.
The following time periods can be extended:
- Deadline to respond to an office action, including a notice of appeal from a final office action
- Statement of use or request for extension of time to file a statement of use
- Notice of Opposition or request for extension of time to file a notice of opposition
- Priority filing basis
- Transformation of an extension of protection to the U.S. into a U.S. application
- Affidavit of Use or excusable non use
- Renewal applications
- Reply to an office notice issued during pre-examination (e.g., Notice of Omitted Items, Notice of Incomplete Application) for a small or micro entity
- Reply to an office notice or action issued during examination or patent publication processing
- Issue Fee Deadline
- Notice of Appeal under 35 U.S.C §134
- Appeal Brief under 37 C.F.R. §41.37
- Reply brief under 37 C.F.R41.41
- Appeal forwarding fee under 37 C.F.R. §41.45
- Request for an oral hearing before the PTAB
- Response to a substitute examiners answer under 37 C.F.R. §41.50(a)(2)
- Amendment when reopening prosecution in response to, or request for rehearing of a PTAB decision designated as including a new ground of rejection under 37 C.F.R. §41.50
- Maintenance fee, for small or micro entities
- Request for rehearing of a PTAB decision under 37 C.F.R. §41.52
Argentina – The Argentinian Patent and Trademark Office has suspended all deadlines relating to transference of applications, hearings and notifications, filing of oppositions, and renewals, from March 12, 2020 until at least May 25, 2020.
Canada– All deadlines on intellectual property matters falling between March 16, 2020 and May 14, 2020 are extended to at least May 19, 2020.
China– The Intellectual Property Administration (CNIPA) in China is operational. However, the CNIPA has announced that it will waive late fees for missed patent annuity payments if the reason can be traced back to the COVID-19 pandemic. Further, if patent or trademark rights are lost in China because of the pandemic, the party who lost their rights can apply to revive their rights in writing within 2 months, provided that they explain their reasons and provide corresponding supporting materials. It is unclear what supporting materials are needed to show that the loss of rights was due to the COVID-19 pandemic, however, rights should be restored upon showing the loss of rights was due to the COVID-19 pandemic.
European Patent Office – all deadlines on or after March 15, 2020 have been extended until June 2, 2020.
EU Trademark Office (EUIPO)– All deadlines falling between March 9 and May 17, 2020 have been extended until May 18, 2020.
France – All deadlines between March 12 and one month after “the end of the state of health emergency” are postponed by either one month after the end of this period (if the period lasts one month) or two months after the end of this period (if the period is two months or longer).
India – Deadlines for acts (such as filing documents, payment of fees, and reply documents) from March 24, 2020 and through the government lockdown are extended to May 18, 2020.
Ireland – Any deadlines between March 13, 2020 to May 18, 2020 have been extended through May 19, 2020.
Italy – All administrative proceedings and prosecution pending as of February 23, 2020 have been suspended from February 23, 2020 through May 15, 2020.