April 2, 2020
As the world is in the midst of the COVID-19 pandemic, intellectual property owners have expressed concern over the submission of documents to intellectual property offices and the effects the pandemic may have on pending applications and administrative proceedings around the world. In response to these concerns, various intellectual property offices in different jurisdictions are responding to the concerns of intellectual property owners by providing guidance in the form of public notices, suspension of certain deadlines and in-person meetings and hearings, and/or waiver of certain fees under the current environment. The effects of the COVID-19 outbreak are still developing, and it is advised that intellectual property owners and their counsel remain diligent in monitoring updates from the applicable intellectual property offices for further updates and notices.
United States of America
On March 13, 2020, the United States Patent and Trademark Office (“USPTO”) announced that all examiner and examining attorney interviews, oral hearings before both the Patent Trial and Appeal Board and the Trademark Trial and Appeal Board, and other similar in-person meetings with parties and stakeholders scheduled to take place at the USPTO on or after that date will be conducted remotely by telephone or video conferencing. The USPTO will send instructions to parties on how to participate via remote means in advance of the above in-person meetings. Following this announcement, the USPTO closed its offices to the public, beginning on March 16, 2020.
Additionally, on March 16, 2020, the USTPO deemed the effects of the coronavirus outbreak to constitute an “extraordinary situation,” as defined in 37 CFR § 1.183 and 37 CFR § 2.146 and as a result will be waiving petition fees in certain situations. For trademark applications and registrations that were abandoned or cancelled/expired due to failure to timely respond to USPTO communications as a result of the effects of the coronavirus outbreak, the USPTO will waive the applicable petition fees (i.e. those set by regulation, rather than statute) to revive abandoned applications and reinstate cancelled or expired registrations.
Furthermore, any petition included with the petition fee must also include a copy of the Official Notice and a statement explaining that the delay in filing was because the of the effects of the coronavirus. In addition, the request to waive the petition should be requested promptly, since a petition under 37 CFR § 1.137(a) must be filed no later than two months following the issuance of a notice of abandonment or a notification that prosecution has terminated.
Importantly, on March 31, 2020, the USPTO announced extensions for the time allowed to file certain patent and trademark-related documents, including for the payment of certain required fees, under its temporary authority from the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), signed into law on March 27, 2020. The CARES Act empowers the USPTO Director to extend deadlines to account for current circumstances during the COVID-19 pandemic. The announcement itself extends various deadlines that fall between March 27, 2020 and April 30, 2020 by 30 days. For those seeking extensions for deadlines during that period, the intellectual property owner must include a statement that the missed deadline was due to the pandemic for situations where the filer or their attorney of family was personally affected by COVID-19, including due to delays in meeting deadlines due to office closures, cash-flow issues, inaccessibility of files, and falling ill, among other circumstances. The extensions will cover most deadlines that arise in prosecution, as well as some situations that may arise during Patent and Trial Appeal Board proceedings, including a patent owner’s preliminary response to a petition challenging a patent or requests for rehearing.
On March 16, 2020, the Director of the European Intellectual Property Office (“EUIPO”) adopted Decision No EX-20-3 extending all time limits expiring between March 9, 2020 and April 30, 2020 that affect all parties with matters pending before the EUIPO until May 1, 2020. In practice the extension will be in effect until May 4, 2020, as May 1, 2020 is a public holiday. The time limits refer to all procedural deadlines, including any proceeding before the EUIPO, such as its Board of Appeals. The following statutory time limits are also covered by the exception, which include payment of the application fee, right of priority, exhibition priority, opposition period, payment of the opposition fee, request for renewal, filing of an appeal and the statement of grounds (as well as the appeal fee), conversion, and deferment of publication of design.
Notably, the extension does not apply to proceedings before other authorities, such as those in national European offices.Additionally, the expression in the Decision “proceedings before the Office” only relates to trademark and design matters and does not cover other matters. The time extension is automatic, and parties are not required to file a request for an extension of time for the extension to take effect.
The UK Intellectual Property Office (“UKIPO”) has closed access to its buildings but has stated that the majority of their staff is equipped to work from home. Notably, on March 24, 2020, the UKIPO declared that March 24, 2020 and the following subsequent days to be “interrupted days” until further notice. The declaration of “interrupted days” means that any deadline that falls on an interrupted day will be extended to the next non-interrupted day. This will apply to any deadlines for patents, supplementary protection certificates, trademarks, design, and applications pertaining to any of these intellectual property rights. Importantly, this notice applies to all time periods in the applicable UK Acts and Rules, but it does not apply to the time periods set by the various international intellectual property treaties, such as the Patent Cooperation Treaty or the Madrid Protocol. The UKIPO will be reviewing and evaluating the evolving COVID-19 situation again on April 17, 2020 and will either extend the period of interruption or end the period of interruption after an additional two week period.
At the present time, the UKIPO is not able to process paper forms, faxes, and paper correspondence. However, the UKIPO has created an email address called email@example.com, which can be used for services that are not available online.
Further, all sites are currently closed and no in-person hearings will be able to take place until at least June 1, 2020, which also includes the ability to book hearings, and this date will be subject to continuing review by the UKIPO. However, hearings may be conducted via telephone, Skype, or other virtual methods. Parties will be contacted if their current hearing arrangements need to be changed.
The Canadian Intellectual Property Office (“CIPO”) has instructed clients that while the office remains open, clients should expect significant delays in all services. In addition, all deadlines falling between March 16, 2020 and April 30, 2020 will be extended until May 1, 2020. Additionally, for any deadlines relating to proceedings before the Trademarks Opposition Board that fall after May 1, 2020, CIPO will consider the COVID-19 pandemic a sufficient circumstance under which an intellectual property owner may obtain an extension of time under sections 47(1) and 47(2) of the Trademarks Act upon request. Furthermore, CIPO may also in its discretion extend deadlines under section 47(1). It is important to highlight that CIPO noted that if current circumstances surrounding the COVID-19 prevail, the Office may decide to extend applicable deadlines further.
Moreover, multiple regional CIPO are not receiving correspondence until further notice, including those in Toronto, Vancouver, Edmonton, and Montreal.
On March 23, 2020, the Mexican Patent and Trademark Office (“IMPI”) had instructed users that while the office remains open to the public for filing applications and briefs, all deadlines falling between March 24, 2020 and April 19, 2020 would be suspended. However, on March 26, 2020, the trademark office declared that all activities were being suspended from March 27, 2020 to April 19, 2020.
Further, while new online applications can still be pre-filed, these applications will have to be digitally signed on April 20, 2020, when an application number will be assigned by the IMPI. Additionally, the IMPI indicated that the office may call upon limited staff in order to address issues that are (i) necessary to mitigate the consequences of the COVID-19 pandemic or (ii) those related to the release of a preliminary injunction ordered by the IMPI during an infringement proceeding.
The COVID-19 pandemic has pushed intellectual property owners into unchartered territory and presented unprecedented challenges for the intellectual property community. As such, because the COVID-19 pandemic is an evolving situation, further notices and directives will likely be forthcoming from the USPTO and other intellectual property offices worldwide. The guidance provided thus far is intended to mitigate any detrimental effects of the pandemic and to ensure intellectual property owners remain as unaffected as possible. It is important for both intellectual property owners and their counsel to continually monitor any such developments and to remain informed of changes to deadlines for filings and proceedings before any administrative body.