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COVID-19: Patent and Trademark Office Updates as of June 8, 2020

June 8, 2020

Miller Canfield is actively tracking the current status of operations of numerous Patent and Trademark Offices (PTOs) around the world in the light of the novel coronavirus (COVID-19) pandemic. Below is a chart that shows the status of various countries' PTOs. This is current as of the date shown above and we will regularly update the "Current Status" as we receive new information. You can access this chart and other helpful and substantive updates at our COVID-19 Resource Center. Please contact the authors or your Miller Canfield attorney for assistance. 

COUNTRY

CURRENT STATUS

Afghanistan

The Afghanistan Patent and Trademark Office (APTO) has reopened as of June 1, 2020. All deadlines that fell due during the suspended time period were extended to June 1, 2020.

Algeria

The Intellectual Property Office of Algeria (INPAI) has announced limited working hours from 8:30 am to 12:30 pm (local time). A one month grace period will be granted once the INPAI has returned to normal business hours.

Andorra

The Patent and Trademark Offices of Andorra has reopened. All deadlines are running regularly again.

Argentina

The Argentinian Patent and Trademark Office suspended all activity until the state of emergency has been lifted. All new filings with priority due dates falling within this term can be completed once the office reopens. All due dates falling within this period will also be extended to the first working day.

Australia

The Australian Patent and Trade Marks Office (IP Australia) issued a notification recognizing that the COVID-19 outbreak is an unprecedented situation that may impact the ability of applicants and their representatives to process applications.

Where an applicant cannot act within time due to the COVID-19 outbreak, an extension of time may be available. A streamlined process for extension of time requests is available from April 22, 2020 until at least June 30, 2020. An extension of time of up to 3 months is available and is free of charge. This arrangement applies to most patents, trademarks and designs extension of time requests but does not apply to extensions of time for payment of renewal or continuation fees. Requests only require a one sentence declaration that a customer is unable to meet a deadline due to disruptions from the COVID-19 pandemic. Requests for waiver or refund of the fee for the extension of time will be considered on a case by case basis.

Applicants should note that some time periods cannot be extended.

Austria

The Austrian Patent Office (APO) suspended all time limits that were still open on March 16, 2020 before the APO (e.g. time limits for comments on notices or time limits for the submission of a counter-statement in bilateral proceedings) until April 30, 2020. The time has begun to run again as of May 1, 2020. The APO may also set a new deadline of May 1, 2020 where appropriate.

Time limits for appeals which had not yet expired by March 22, 2020 were suspended until April 30, 2020 in accordance with the Federal Act on Accompanying Measures for COVID-19 in the Judiciary. The time for appeals has begun to run again as of May 1, 2020.

All other deadlines arising directly from the law (e.g. opposition and appeal deadlines) cannot be extended and the due dates for annual renewal fees remain unchanged.

More particularly as to Trademarks, the APO has stated they have been forced to change their procedures. Therefore, there may be delays in trademark services (such as a PreCheck Trademark Report).

Bahamas

The Industrial Property Office of the Bahamas has made no announcements regarding COVID-19 at this time. The country confirmed its first case of COVID-19 on March 24, 2020 so the situation may change.

Brazil

The Brazilian Patent and Trademark Office (BPTO) has reopened. All deadlines have begun to run again as of May 31, 2020.

BOIP (Benelux Trademarks Office) Belgium, Netherlands, and Luxembourg

As long as there are emergency restrictions in the countries of Benelux, no case will lapse because the term expired from March 16, 2020 until June 24, 2020. All deadlines currently running that expire on or after June 25, 2020 remain unchanged. All deadlines set from May 25, 2020 and onwards will run as usual, even if the deadline is set to run before June 25, 2020. Any deadline set after June 24, 2020 will not have any extensions. For cases where the deadline for filing an opposition against a trademark application expired or expires between March 16, 2020 and June 24, 2020, an opposition may be filed until June 25, 2020.

Canada

The Canadian Intellectual Property Office (CIPO) announced that all deadlines on IP matters falling between March 16, 2020 and June 12, 2020 will be extended.

The result of designating these days is that if a time period is fixed under the Patent Act, Trademarks Act and Industrial Design Act then all such time limits ending on any of these designated days will now be extended until June 15, 2020.

Chile

The National Institute of Industrial Property (INAPI) announced the following in view of the COVID-19 pandemic:

1. Extension of deadlines in administrative procedures by resolution: in the case of contentious procedures, it may be extended by the number of days the impediment lasts.
2. Power of Attorney: considering that in many cases it will not be possible to obtain the original documents, deadlines will be made with the aim of giving the party a longer period to respond with the signed electronic document. If the user has the original document, he/she may electronically attach a letter stating as such. A note will be made in the file and no delay will be sited as long as he/she then submits the original document within 15 days.
3. Test hearings: if a prior appointment had been made, a new date and time will be given. Furthermore, at least an extension of 15 days will be considered in the first stage.
4. Hearing of exhibition of evidence in kind: in the case of trademark procedures, the office will consider ministers of faith as qualified notaries.
5. Final payments: the presentation of final payment documents for patents, models and designs (including decades and five years) that are scanned and attached to an online brief will be accepted within a period of not more than 15 days past the due date.
6. Payment of taxes for appeal: pdf proof of payment made in a bank institution in conjunction with a letter of appeal will be accepted.
7. INAPI operation: face-to-face opening hours will start at 10:00 am and end at 1:00 pm (local time). In-person meetings will be exclusive to users who have essential consultations and procedures that cannot be carried out by other means and who have requested a time reservation through the institutional telephone platform.

China

China’s National Intellectual Property Administration (CNIPA) will waive late fees for missed patent annuity payments if the reason can be traced back to the COVID-19 epidemic.

CNIPA recommends that trademark applications, as well as 23 other proceedings (including change recordals, renewals, assignments, etc.) be filed online. E-payment options have been made available for public access. As an alternative, submissions in writing can be sent through the mail.

Djibouti

The Trademark Office in Djibouti has resumed all operations as of June 1, 2020. Any deadlines that fell due during the suspension were extended to June 1, 2020.

Egypt

The Trademark Office in Egypt has reopened with a full staff and full working hours as of May 10, 2020. The Patent Office will resume all operations at full capacity on June 9, 2020. 

Eurasian Patent Office

Due to the presidential decree in the Russian Federation, the Eurasian Patent Office (EAPO) was only partially operational from March 29, 2020 to May 11, 2020. All deadlines that fell within this period were automatically extended to May 12, 2020. For documents relating to a Eurasian application or a Eurasian patent, any document sent in facsimile form, by email or through an FTP server within the established time limit will be considered submitted on time as long as the original is received no later than one month after the date when the ban on physical access is revoked.

European Patent Office

EPO staff are working remotely and continuing to examine applications.  The EPO had extended until June 2, 2020, all routine official action deadlines which fell on or between March 15, 2020 and June 2, 2020. This deadline extension was only for routine official actions and does not apply to some circumstances such as the filing of a divisional application. For all cases falling outside of the above mentioned time period the EPO is drawing attention to the legal remedies applicable in case of non-observance of time limits. These remedies are available for users located in areas directly affected by disruptions due to the COVID-19 outbreak and apply to parties and representatives in proceedings under the EPC and the PCT.

With respect to time limits expiring before March 15, 2020, the EPO will facilitate the use of legal remedies for users located in areas directly affected by disruptions due to the COVID-19 outbreak. The extensions and remedies apply to parties and representatives in proceedings under the EPC and the PCT.

The EPO has decided to postpone until further notice all oral proceedings in examination and opposition proceedings scheduled until September 14, 2020, unless they have already been confirmed to take place by videoconferencing. During this time, the EPO will explore options for further facilitating, where applicable, the use of videoconferencing in oral proceedings.

The Boards of Appeal has resumed holding oral proceedings, to a limited extent, at their premises in Haar as of May 18, 2020. Concerned parties will be contacted accordingly with a communication. All parties will be requested to confirm that they expect to be able to attend in person and that they do not anticipate being affected by travel restrictions. To facilitate the arrangement of oral proceedings, parties and their representatives will be asked to inform the registry as soon as possible whether they plan to attend.

European Union

EUIPO staff are working remotely and continuing to examine applications. All terms between March 9, 2020 and May 17, 2020 were extended to May 18, 2020. The extension covered all procedural deadlines, irrespective of whether they had been set by the Office or were stipulated directly in the regulations, and the effect was automatic. As of May 18, 2020, those extensions came to an end. The EUIPO acknowledges that it is possible for some users to still face difficulties due to the COVID-19 outbreak. To provide them with further guidance on the usual means of dealing with the time limits provided for in the applicable Regulations (EUTMR, EUTMDR, EUTMIR, CDR, CDIR), the following clarifications have been issued in the link below.

EUIPO COVID-19 Guidance and Clarifications

France

The National Institute of Industrial Property (INPI) is extending all deadlines that fall between March 12, 2020 and June 23, 2020 until July 23, 2020 if the initial deadline had at least one month remaining. All deadlines that fall between March 12, 2020 and June 23, 2020 are extended to August 23, 2020 if the initial deadline had at least two months remaining. These extensions do not apply to any deadlines resulting from international agreements or European texts.

Furthermore, in the event of non-compliance with a deadline, there are procedures for restoration appeals or forfeiture statements with the INPI. The ongoing health crisis will be taken into account when considering these remedies.

The INPI will remain open 7 days a week, 24 hours a day during this period of crisis.  INPI's review and issuance of industrial property titles will continue.

Greece

The Greek Patent and Trademark Office’s remain open for e-filing services. Deadlines such as those for EP validations, payment of patent annuities, filing of SPC’s with or without pediatric extensions, designs and utility models, and priority claims remain unchanged and are not extendible.

Power of attorney forms should be forwarded to the office initially by email while the originals may follow by courier. Change recordals and patent licenses are not affected at this time. There are no available provisions for re-establishment of rights.

Trademark e-filings and e-renewals may continue without disruption. There may be delays for exceptional cases with discrepancies between the entries in the Greek Register and the TMVIEW tool. All legal deadlines concerning the procedure for granting or registering industrial property titles applicable before the Hellenic Industrial Property Organization, have been suspended as of March 11, 2020 until June 12, 2020. The suspension excludes any statutory deadlines for the payment of all kind of fees, whether annual or procedural, before the Office. All hearings scheduled for the Administrative Trademarks Committee have been postponed until further notice. Civil actions for Trademark and other IP infringements can still be filed but all hearings will be suspended until further notice.

Germany

With regard to all pending IP procedures, time limits granted by the German Patent and Trade Mark Office are extended and no decision will be made because of the expiration of any time limit until May 4, 2020. Separate notices concerning the extensions of time limits will not be issued. In addition, the time limits to be set by the German Patent and Trade Mark Office will be as generous as the situation requires.

The German Patent and Trade Mark Office is not authorized to extend time limits provided for by law. In this respect, reference is made to the option of re-establishment of rights (see also Notice of the German Patent and Trade Mark Office of March 3, 2020).

In accordance with the federal provisions and the applicable general ordinances for Berlin, Thuringia and Bavaria to contain the spread of the coronavirus disease (COVID-19), the following policies apply in connection with hearings and oral proceedings concerning all IP procedures at the German Patent and Trade Mark Office until June 30, 2020.

•           Summons to appear in hearings or oral proceedings will no longer be issued, whether the proceedings are unilateral or multilateral.

•           Hearings and oral proceedings that have been scheduled will not take place until at least June 30, 2020 and are cancelled ex officio. Cancellation ex officio will be notified in writing.

Hong Kong

The Patent and Trademark office in Hong Kong has resumed normal operations. All patent, trademark, and registered design filing deadlines that fell between March 23, 2020 and April 24, 2020 were extended to April 27, 2020.

India

The Intellectual Property Office (IPO) has reopened as of May 18, 2020. Officials and staff are working and communicating remotely with customers through e-mail and other means. All physical locations are partially opened with reduced staff.

All hearings with the Patent Office through video conferences have been canceled. Dates for rescheduled hearings will be communicated shortly.

All due dates that fell between March 15, 2020 and May 17, 2020 have been extended to June 1, 2020. All due dates falling between May 18, 2020 and May 31, 2020 remain unchanged.

Indonesia

The Directorate of Intellectual Property (DGIP) has announced that where deadlines can be met by online filings (i.e. new patent and trademark applications, responses to trademark office actions and some patent office actions, trademark oppositions and rebuttals, patent annuities and requests for substantive examination for patent applications that were filed online), the deadlines remain unchanged. For other patent deadlines, the DGIP has postponed deadlines until further notice.

Iran

The Iranian Offices have temporarily decreased working hours and are closing at 1 p.m. (local time). For now, all actions can be undertaken without disruption.

Iraq

The Trademark Office in Iraq resumed partial operations on April 27, 2020. The office is now open with limited working hours and a reduced staff. All trademark transactions are available except for trademark searches and filing new trademark applications. Patent transactions are not available except for cases with deadlines. 

The Trademark Office in the Kurdish Region of Iraq has resumed normal operations. Any deadlines that fell between March 18, 2020 and May 19, 2020 were automatically extended to May 20, 2020.

Israel

All deadlines remain in effect. No deadlines will be automatically extended. A request for an extension can be filed and the Corona epidemic will qualify as a sufficient reason for any delay so long as the proper documents detailing the Corona related events have been submitted. To give applicants more time to submit their requests for extensions, the ILPO will not close any files due to a failure to respond until May 1, 2020, or until further notice, whichever is later.

Circumstances relating to the Corona epidemic can likely be considered a "reasonable cause" and/or "circumstances over which the applicant and his representative had no control and which could not be prevented" as per Section 164 of The Patents Law, 5727-1967, And Section 100 of The Designs Law, 5777-2017. Also, said events can likely be considered to warrant deadline extensions in trademark and design matters as per Section 82 of The Trademarks Regulations 1940 and Section 54 of The Designs Regulations, 1925.

Due dates for pending proceedings before the court of authority are postponed until May 1, 2020.

There are deadlines set in the legislation which cannot be extended including those enumerated in articles 18(b)(3) regarding submitting documents by third party, 30, 56, 57, 61, 64e(e)(2), 64f, 64m, 64o(a), 73(c) and 170(c) (submitting opposition, payment of renewal fees, submitting requests for Patent Term Extension) in the Patents Law 5727-1967, the deadline for submitting a trademark opposition according to article 24 of the Trade Marks Ordinance (New Version), 5732-1972, the deadline for submitting a renewal fee and for submitting a request to reinstate a trademark according to article 33 of the ordinance, requests to reinstate a design, to pay design renewal fees and requests to reconsider a design rejection, according to articles 40, 41, 43 and 30 of the Designs Law, 5777-2017. All applicants and legal representatives, please note these fixed deadlines.

Italy

The Italian Patent and Trademark office had suspended all deadlines between February 23, 2020 and May 15, 2020.

All intellectual property rights that expired between January 31, 2020 and July 31, 2020 will remain valid for 90 days following the declaration of cessation of the state of emergency (this does not apply to international trademark applications).

The suspension did not apply to terms relating to appeals before the Board of Appeals or the Appeals Commission.

The suspension did not apply to international patent applications, European patent applications, international trademark applications, and international trademark renewal applications.

Japan

The Japan Patent Office (JPO) has announced if you are not able to carry out proceedings directed towards applications or trials/appeals pending at the JPO within the designated time limits due to COVID-19, you can attach a document to your response explaining the circumstances that prevented you from filing the document in a timely fashion. By doing so, the proceeding will be considered to be valid even after the designated time limits expired if it is found to be necessary.

If you are unable to carry out certain proceedings due to COVID-19 within the procedural periods specified by law or governmental and ministerial ordinances, you may only carry out the proceeding within the designated relief period.

When conducting the proceeding, you must attach a document explaining the circumstances that prevented you from filing the document in a timely fashion due to COVID-19. When the JPO recognizes the necessity, the procedures will be considered to be valid.

A list of procedures that must be carried out within 14 days or 2 months from the time it becomes possible can be found in the link below:

JPO COVID-19 Procedures

For priority claims, you must file the claim within 2 months of the expiration date to receive a proper priority claim.

For all Patent Cooperation Treaty (PCT) applications, the JPO insists you carry out your proceedings as soon as possible. Documents can be filed no later than 6 months after the prescribed deadline has lapsed. 

Jordan

The Patent Office in Jordan has resumed all operations as of May 23, 2020. Any deadlines that fell between March 18, 2020 and May 22, 2020 were automatically extended to May 23, 2020. The Trademark Office has resumed partial operations with limited working hours and a reduced staff as of April 27, 2020. It is now possible to prosecute cases online though with some delay.

Kuwait

The Patent and Trademark Office in Kuwait issued a statement announcing that it has resumed all operations as of May 31, 2020. Any deadlines that fell due between March 12, 2020 and May 31, 2020 were automatically extended to May 31, 2020.

Lebanon

The Lebanese Patent and Trademark office has resumed operations with a limited staff. They are giving priority to handling applications with deadlines, renewals and annuities.

Libya

The Patent and Trademark Office in Libya has resumed partial operations as of May 31, 2020. All deadlines are running regularly again.

Malaysia

The Malaysian Patent Office (MyIPO) reopened on May 18, 2020. All trademark renewals that expired between December 27, 2019 and May 31, 2020 have been extended to June 1, 2020. All appeals and oppositions that fell during this period will be rescheduled. All patent renewal fees that fell due between March 18, 2020 and May 31, 2020 have been extended to June 1, 2020. All manual filings with priority deadlines due within the affected period were extended to May 18, 2020.

Mexico

The Mexican Institute of Industrial Property (IMPI) and Mexican Copyright Office (INDAUTOR) is closed until June 15, 2020.

The Mexican Federal courts have announced a suspension of activities from March 18, 2020 through June 15, 2020. All deadlines falling within that period have been suspended. New applications can still be pre-filed online along with a digital signature. Online motions related to cases that have already been prosecuted may also be digitally signed.

Morocco

The Patent and Trademark Office in Morocco announced that as of March 28, 2020 all deadlines have been suspended until further notice.

New Zealand

All Intellectual Property Offices of New Zealand (IPONZ) services are currently operating as usual. If circumstances related to COVID-19 have affected you or are affecting your ability to respond by a deadline, you may send a request to the IPONZ for an extension of time to meet that deadline. The IPONZ will assess extension of time requests on a case-by-case basis.

Pakistan

The Intellectual Property Organization of Pakistan (IPO) has resumed normal operations. All cases where the deadline for a document filing had expired during the lockdown period from March 24, 2020 to May 3, 2020, will be dealt in accordance with Section 10 of General Clauses Act, 1897.

Palestine

(Gaza)The Patent and Trademark Office in Gaza has resumed normal operations as of May 10, 2020. All deadlines are running regularly again.

(West Bank) The Patent and Trademark Office in the West Bank has resumed normal operations as of May 26, 2020. All deadlines are running regularly again.

Peru

The Peruvian government has declared a period of National Emergency until June 30, 2020. The National Institute for the Defense of Competition and Protection of Intellectual Property (INDECOPI) has closed their office until further notice. Legal and administrative terms are suspended.

Philippines

All operations were suspended from March 16, 2020 to May 15, 2020. All deadlines that fell between March 16, 2020 and March 31, 2020 have been extended to June 30, 2020. All deadlines that fell between April 1, 2020 and April 30, 2020 have been extended to June 30, 2020. All deadlines that fall between May 1, 2020 and June 30, 2020 will be extended to July 30, 2020. Letters, queries, or any other written communications may be filed as of May 16, 2020.

Poland

On March 31, 2020, the Polish government announced an anti-crisis shield. Time limits for filing objections for trademark applications and submitting translations for patent applications that run from March 8, 2020 to June 30, 2020 will be extended to July 1, 2020. All time limits relating to judicial proceedings, as well those provided for in administrative law, are suspended until further notice.

Portugal

While patent and trademark operations continue, all procedural time limits were suspended from March 12, 2020 until April 16, 2020. All time periods have now begun to run again as normal.

Qatar

As of April 13, 2020 the Intellectual Property Directorate in Qatar is still operating but in a limited scope. All official deadlines due as of March 13, 2020 have been extended. The submission of any documents required to complete new filings, oppositions or responses to office actions can be filed after the COVID-19 pandemic is over without penalty. The extension for the submission of past due documents does not apply to annuities, examination or grant fees for patent or trademark renewals. Other services such as recordals of assignments, changes of names or addresses and requests for certified copies of registration certificates/excerpts of trademarks are temporarily suspended until further notice.

The following services are still being provided by the Directorate:

1.      Deposits of copyright applications and related rights.

2.      Issuances of deposit certificates.

3.      Obtaining a certified duplicate copy of deposit certificates.

4.      Obtaining certificates to “whom it may concern”.

Patents

1.      Filing new patent applications.

2.      Amendments, corrections or additions of patent applications.

3.      Publications of patent grants.

4.      Issuances of patent grant certificates.

5.      Technical searches prior to filing patent applications.

6.      Payments of examination fees.

7.      Requests for the prior examination of PCT applications.

8.      Obtaining extracts and information from patents.

9.      Applications for contractual licenses of patent use and obtaining certificates to use.

10.   Assignment recordals of patents and obtaining assignment certificates of patents.

11.   Appeals to rejections of a patent.

12.   Oppositions to a patent application.

13.   Payment of annuity fees.

Trademarks

1.      Filing new trademark applications.

2.      Publications of trademark applications.

3.      Registrations of trademark applications.

4.      Oppositions to trademark applications.

5.      Requests for hearing sessions for opposition cases.

6.      Appeals against the registrar’s rejection decisions of trademarks.

7.      Searches for trademarks.

8.      Renewals of trademark registrations.

9.      Amendments of trademark applications and their related publications.

Romania

A national state of emergency was announced by Romania on March 16, 2020 and ran until May 14, 2020. All time limits which had run during the state of emergency had been suspended. The mentioned time limits started to run or continued respectively after the lifting of the state of emergency on May 14, 2020.

Russia

By presidential decree, the days of April 2, 2020 to May 11, 2020 were officially declared non-working days. All deadlines that fell within this time period were automatically extended to May 12, 2020.

Saudi Arabia

The Saudi Authority for Intellectual Property, or SAIP, announced that it is operating online. Applicants cannot submit original documents until further notice. Official deadlines for the submission of documents were extended until May 3, 2020. The E-copies of notarized and legalized documents can only be submitted within a new deadline to be announced by the SAIP at a later stage.

Singapore

The Intellectual Property Office of Singapore (IPOS) has reopened. All deadlines that fell between April 7, 2020 and June 4, 2020 were extended to June 5, 2020.

Spain

The Spanish Patent & Trademark Office (SPTO) has reopened and all deadlines are running regularly again.

South Africa

The Companies and Intellectual Property Commission (CIPC) began the process of a phased in re-opening as of May 4, 2020, and was expected to resume normal business operations as of May 6, 2020. It is important to note that matters submitted to the CIPC during the lock down period of March 26, 2020 to April 30, 2020 cannot be regarded as being filed. Therefore, business rescue matters e-mailed to the CIPC must be resubmitted as of May 4, 2020 and the effective filling date will be regarded as the date the complete application was sent.

South Korea

The Korean Intellectual Property Office (KIPO) has announced extensions for designated periods due to the effects of the COVID-19. If the deadline, for a proceeding enumerated in the appendix, ended on a date between April 30, 2020 and May 30, 2020 the deadline was ex-officio extended until May 31, 2020.

If the deadline for submitting a response to a preliminary rejection fell between April 30, 2020 and May 30, 2020 the deadline was automatically extended until May 31, 2020.

The deadline extensions mentioned above did not apply to a deadline for responding to a final rejection (i.e., filing a request for re-examination or an appeal) against a patent application, a deadline for responding to a preliminary rejection against an international trademark application, or a deadline to file an opposition in a trademark matter.

The KIPO also asks customers to use its online services and phone interviews and avoid making physical visits to examiners and/or administrative judges to prevent a possible spread of the coronavirus.

Sudan

The Trademark Office in Sudan suspended all operations from March 18, 2020 to June 21, 2020, but will still be accepting new application filings. All deadlines related to procedures currently pending before the Offices will be suspended until June 21, 2020.

Sweden

The Swedish Patent and Registration Office (SPRO) stated that their patent, trademark and design experts will continue to work as usual with all applications submitted to SPRO. Work relating to consultancy and search services will also continue.

Syria

The Patent and Trademark Office in Syria announced it has suspended operations until further notice. Any deadlines are automatically extended to the first working day that the office reopens.

Taiwan

There are no automatic extensions for patent or trademark applicants who fail to comply with a statutory deadline. However, applicants may file a request for reinstatement for failure to comply due to COVID-19. Decisions regarding requests for reinstatement due to COVID-19 will be determined leniently.

Thailand

The Thailand Department of Intellectual Property is implementing a grace period. The grace period will apply to all IP-related prosecution process deadlines for anyone who is directly affected by COVID-19. The grace period includes deadlines related to applications, oppositions, registrations, office actions or any payment. It is recommended for an applicant to try to meet their formal deadline. Due to the multiple uncertainties, including document criteria and deadlines on top of the examiner’s/registrar’s own discretion, there are considerable risks involve in relying on the grace period. Furthermore, if the request should fail, it may subsequently cause the related IP matter to lapse.

Tunisia

The Patent and Trademark Office in Tunisia (INNORPI) has reopened. All deadlines are running regularly again.

Turkey

The Turkish Patent and Trademark Office is operational and is accepting only online filings at this time. All deadlines that fell between March 13, 2020 and June 14, 2020 will be calculated from June 15, 2020 based on the days which had been remaining on the deadline at the time of the suspension.

UAE

The UAE Patent and Trademark Office is still operating at full capacity. No extensions for any deadlines have been announced as of yet. Original documents can be submitted electronically or sent by courier. The UAE did announce a range of discounts on existing fees for services provided by their Patent and Trademark Office. The discounts are intended to help companies that have been economically impacted by the COVID-19 pandemic.

United Kingdom

The UK Intellectual Property Office is currently operating as normal. However, it has said that it will extend deadlines where national and international legislation allows. All days from March 24, 2020 to June 22, 2020 have been declared to be interrupted days. All deadlines falling within this period will be extended until the UKIPO notifies the end of the interrupted days period. It has also said that where a deadline has been missed, resulting in a loss of rights, they may be able to restore or reinstate the right depending on the circumstances.

No further physical hearings will be booked or take place until June 22, 2020 (this date will be kept under review).

United States of America

In accordance with section 12004 of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the United States Patent and Trademark Office (USPTO) is extending the time to file certain documents or fees which otherwise would have been due on or after March 27, 2020.

For Patent-Related Deadlines

The due date for any of the proceedings listed below that were due between, and inclusive of, both March 27, 2020 and May 31, 2020, will be considered timely if filed on or before June 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak as defined in subsection (1)(b) which states the following: “A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.”

For small and micro entities, filings that would have been deemed timely filed, if filed by June 1, 2020 pursuant to the CARES Act Notice dated April 28, 2020, will now be deemed timely filed if filed by July 1, 2020.

For large entities, after May 31, 2020, relief will be available to those who need it on a case-by-case basis. Such requests can be submitted through a petition for an extension of time or a petition to revive. 

The USPTO has released a form for making a statement of delay due to the COVID-19 outbreak. The form is in response to requests from applicants for guidance on how best to make a statement and will assist the office in processing these requests. You can access the Statement of Delay due to COVID-19 Outbreak form on the patent forms page of the USPTO website.

The following patent-related proceedings are included:

i) reply to an Office notice issued during pre-examination processing by a small or micro entity;

ii) reply to an Office notice or action issued during examination or patent publication processing;

iii) issue fee;

iv) notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;

v) appeal brief under 37 C.F.R. § 41.37;

vi) reply brief under 37 C.F.R. § 41.41;

vii) appeal forwarding fee under 37 C.F.R. § 41.45;

viii) request for an oral hearing before the Patent Trial and Appeal Board (PTAB) under 37 C.F.R. § 41.47;

ix) response to a substitute examiner's answer under 37 C.F.R. § 41.50(a)(2);

x) 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(b);

xi) maintenance fee filed by a small or micro entity; or

xii) request for rehearing of a PTAB decision under 37 C.F.R. § 41.52

With regards to proceedings before the Patent Trial and Appeal Board (PTAB), a request to the USPTO affirming that a filing due between, and inclusive of both, March 27, 2020 and April 30, 2020 was or may be delayed due to the COVID-19 outbreak as defined above in subsection (1)(b), the PTAB shall provide a 30-day extension of time for a patent owner preliminary response in a trial proceeding under 37 C.F.R. §§ 42.107 or 42.207, or any related responsive filings. Note that this relief applies through April 30, 2020, and relief sought after that date should be requested as described in subsection 1.3, below.

In the event that the USPTO extends a deadline for a patent owners preliminary response or any related responsive filings under subsection (2)(a)(iii), the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).

For all other situations, a request for an extension of time where the COVID-19 outbreak has prevented or interfered with a filing before the Board can be made by contacting the PTAB at 571-272-9797 or by email at Trials@uspto.gov (for AIA trials), PTAB_Appeals_Suggestions@uspto.gov (for PTAB appeals) or InterferenceTrialSection@uspto.gov (for interferences).

Petitions to Revive

 

The USPTO continues to provide relief in the form of a waiver of the petition fee for the revival of applications (and reexamination proceedings), but limits the eligible applications and reexamination proceedings to those that became abandoned (or terminated or limited) on or before June 30, 2020 as a result of the COVID-19 outbreak.

The USPTO considers the effects of the COVID-19 outbreak to be an "extraordinary situation" within the meaning of 37 C.F.R. § 1.183 for affected patent applicants and patentees.

For patent applicants or patent owners who, because of the COVID-19 outbreak, were unable to timely submit a filing or payment in reply to an Office communication having a due date of May 31, 2020 or earlier (when taking into account all available extensions of time under 37 C.F.R. § 1.136(a)), such that the application became abandoned or the reexamination prosecution became terminated or limited, the USPTO will waive the petition fee in 37 C.F.R. § 1.17(m) when the patent applicant or patent owner files the reply with a petition under 37 C.F.R. § 1.137(a) and a statement that the delay in filing or payment was due to the COVID-19 outbreak as defined in subsection (1)(b) above. See 35 U.S.C. § 41(a)(7). The inclusion of the statement that the delay in filing or payment was due to the COVID-19 outbreak will be treated as a request for sua sponte waiver of the petition fee under 37 C.F.R. § 1.17(m).

The USPTO advises any patent applicant or patent owner who seeks to file a petition to revive under 37 C.F.R. § 1.137(a) with a request to waive the petition fee under 37 C.F.R. § 1.17(m) due to the effects of the COVID-19 outbreak, to promptly file the petition under 37 C.F.R. § 1.137(a) (including the required statement) accompanied by the required reply (but not the petition fee under 37 C.F.R. § 1.17(m)). A petition to revive under 37 C.F.R. § 1.137(a) due to the effects of the COVID-19 outbreak may be submitted via the USPTO patent electronic filing systems (EFS-Web or Patent Center) using document code PET.RELIEF or by mail directed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

The USPTO is open for the filing of patent documents and fees. Specifically, patent documents and fees may be submitted to the USPTO via: (1) the USPTO's electronic filing system (EFS-Web) (MPEP § 502.05); (2) the United States Postal Service (USPS) by Priority Mail Express® under 37 C.F.R. § 1.10 (MPEP § 513) or with a certificate of mailing under 37 C.F.R. § 1.8 (MPEP § 512); (3) by hand-delivery to the Customer Service Window (MPEP § 501); and (4) facsimile transmission (MPEP § 502.01). AIA trial documents may be submitted to the USPTO via the PTAB E2E electronic filing system under 37 C.F.R. § 42.6, and interference documents may be submitted to the USPTO Interference Web Portal under 37 C.F.R. § 41.106(d)(2). As the USPTO remains open for the filing of documents and fees, the waiver set forth in this notice is available only if the delay was due to the COVID-19 outbreak as defined above. The USPTO will continue to evaluate the evolving situation around COVID-19 and the impact on the USPTO's operations and stakeholders.

For Trademark-Related Deadlines

The due date for any of the proceedings listed below that were due between, and inclusive of, both March 27, 2020 and May 31, 2020, will be considered timely if filed on or before June 1, 2020 for large entities, and on or before July 1, 2020 for small and micro entities, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak as defined in subsection (1)(b) which states the following: “A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.”

The following Trademark-related proceedings are included:

i) response to an Office action, including a notice of appeal from a final refusal, under 15 U.S.C. §1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);

ii) statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a);

iii) notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a);

iv) priority filing basis under 15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i);

v) priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);

vi) transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);

vii) affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);

viii) renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or

ix) affidavit of use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b).

For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time, as appropriate, can be made.

Petitions

The USPTO continues to provide relief in the form of a waiver of the petition fee to revive abandoned applications or reinstate canceled/expired registrations, but limits the eligible abandoned applications and canceled/expired registrations to those that became abandoned (or canceled/expired) on or before June 30, 2020 as a result of the COVID-19 outbreak. This section also harmonizes the statement that must be provided to take advantage of the petition fee waiver with the statement that must be provided to take advantage of the above CARES Act relief, i.e., the statement as defined in subsection I.1.b above.

The USPTO considers the effects of the COVID-19 outbreak to be an "extraordinary situation" within the meaning of 37 C.F.R. § 2.146 for affected trademark applicants and trademark owners.

For trademark applicants and trademark owners who, because of the COVID-19 outbreak, were unable to timely submit a filing or payment in reply to an Office communication having a due date of May 31, 2020, or earlier, such that the application became abandoned or the registration was canceled/expired, the USPTO will waive the petition fee (set by regulation, rather than statute) to revive the abandoned application or reinstate the canceled/expired registration. For abandoned applications, the applicants should use the Trademark Electronic Application System (TEAS) "Petition to Revive Abandoned Application" form. For canceled/expired registrations, trademark owners should use the TEAS "Petition to the Director" form. In all cases, the petition must include a statement that the delay in filing or payment was due to the COVID-19 outbreak, as defined in subsection (1)(b) above. The inclusion of the statement that the delay in filing or payment was due to the COVID-19 outbreak will be treated as a request for a waiver of the petition fee under 37 C.F.R. § 2.6(a)(15). The petition must be filed not later than two months after the issue date of the notice of abandonment or cancellation. 37 C.F.R. §§ 2.66(a)(1), 2.146(d)(1). If the applicant or registrant did not receive a notice of abandonment or cancellation, the petition must be filed not later than six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is canceled/expired. 37 C.F.R. §§ 2.66(a)(2), 2.146(d)(2).

The USPTO is open for the filing of trademark and TTAB documents and fees. As the USPTO remains open for the filing of trademark documents and fees, the waiver set forth in this notice is available only if the delay was due to the COVID-19 outbreak as defined above. The USPTO will continue to evaluate the evolving situation around COVID-19 and the impact on the USPTO's operations and stakeholders.

For Copyright Related Deadlines

The Acting Register of Copyrights is exercising her authority under section 710 to adjust the applicable timing provisions in specific cases where compliance would have been possible but for the national emergency due to COVID-19. Under this authority, the Copyright Office has announced adjustments relating to certain registration claims, notices of termination, and section 115 notices of intention and statements of account.

These emergency modifications originally were set to expire sixty days after the Presidential declaration. On May 1, 2020, the Acting Register determined that the disruptions to the copyright system caused by the ongoing national emergency remain in effect and that the modifications therefore should be extended for up to an additional sixty days. Accordingly, the timing adjustments described above will be in effect through July 10, 2020, unless the Acting Register issues an announcement stating that the period of disruption has ended before that time, or alternatively, that a further extension is necessary. The Office is continuing to monitor the effect of the national emergency on these and other components of the copyright system and will consider further adjustments as circumstances warrant.

Venezuela

The Autonomous Intellectual Property Service (SAPI) has suspended any in person contact related to the process of the registration of intellectual property indefinitely as of March 16, 2020. All deadlines have been suspended until June 13, 2020. All inquiries are to be done electronically or by phone.

WIPO

The World Intellectual Property Organization (WIPO) is continuing operations under the Patent Cooperation Treaty (PCT), the Madrid System for the International Registration of Marks, the Hague System for the International Registration of Industrial Designs, the Lisbon System for the International Registration of Geographical Indications as well as administering other intellectual property (IP) and related systems. WIPO’s Arbitration and Mediation Center (AMC) is also continuing its work in processing domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) and other alternative dispute resolution cases.

For IP offices and member states, netting payments, as well as monthly and annual distribution payments, are proceeding as scheduled.

All WIPO offices are physically closed for non-essential staff and all events and meetings organized or co-organized by WIPO in Geneva or elsewhere up until the end of May will be postponed, and should that not be possible, canceled. Insofar as the WIPO General Assembly is concerned, consultations are ongoing between the Secretariat, the Chair of the WIPO General Assembly and the Coordinators of the WIPO Regional Groups.