Patent and Trademark Offices Provide Some Relief from Coronavirus, But Try to Meet Deadlines If Possible

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Patent and trademark offices around the world have not been insulated from the effects of the global coronavirus pandemic. Many offices have directed their employees to transition to telework, and several have extended deadlines or offered other forms of relief. However, IP owners need to be aware that not all nations have offered relief, and some deadlines may not be waived even if the relevant governmental office is closed.

USPTO Deadlines Remain in Place, But Patent Application Revival Fees Waived

The United States Patent and Trademark Office (USPTO) has stated that all deadlines will remain in place, as it asserts it does not have the authority to waive or extend statutory deadlines. However, it has declared the global pandemic an “extraordinary situation” and will waive fees relating to petitions to revive abandoned applications where the customer asserts that the deadline was missed due to impacts from the coronavirus. The petition and fee waiver request will have to include a statement that the attorney, applicant, or inventor was personally affected by the coronavirus and therefore unable to timely reply. If you believe this situation applies to you, please contact your attorney.

In addition, the USPTO has directed that all examiner interviews, oral hearings, and in-person meetings will be conducted telephonically or by video until otherwise noted. The USPTO offices themselves are closed to the public.

Regional European Deadlines Extended, But Only Some National Offices Do the Same

The European Patent Office (EPO) has extended all deadlines due between March 15 and April 16 to April 17.

The European Union IP Office (EUIPO), which manages EU trademarks and designs, has extended all deadlines between March 9 and April 30 to May 1.

The above extensions only affect European patent applications and Community Trademarks and Designs — they do not apply to cases that are pending before a national European office. Among the major European national offices, the following offices have announced relief.

The Spanish IP Office (OEPM) has suspended all deadlines for an undetermined period of time until the state of emergency is finished.

The Italian IP Office (UBIM) has announced that any maintenance or renewal fee deadlines between February 23 and April 15 may be paid late, and it has suspended all administrative proceedings during the same time period.

The German Patent and Trade Mark Office (DPMA) states that it cannot extend deadlines set by law but that it “will take the current situation into appropriate account” in reviewing filings to re-establish lost rights.

Similarly, the United Kingdom IP Office (UKIPO) states that it will consider extension and reinstatement requests “as favourably as possible” on a case-by-case basis.

The French IP Office (INPI) has not yet offered any relief as of this writing.

Other IP Offices Provide Some Relief

The Canadian IP Office (CIPO) has extended all deadlines to March 31 and warns of “significant delays” in processing.

The Korean IP Office (KIPO) has announced that it will accommodate requests for extension or delays arising from impacts of the coronavirus. The party seeking the extension or delay will have to provide evidence of the asserted impact.

China and Hong Kong previously extended deadlines in January and February, but currently all deadlines are coming due at the regular time.

The Indian Trademark Registry has suspended all hearings in trademark matters between March 17 and April 15.

Priority Filing Deadlines Remain Unaffected

While some IP offices are providing relief, we urge patent and trademark owners seeking to file applications that claim the benefit of filing an earlier application to meet the applicable deadlines. The deadline for filing a foreign patent application claiming priority to an earlier domestic application is 12 months from the filing date of the domestic application. Similarly, foreign design and trademark applications must be filed within six months of the filing date of an earlier domestic application to claim priority. These priority deadlines are unlikely to change, as they are set by international treaties. Therefore, we strongly encourage IP owners to remain aware of these deadlines and meet them if at all possible. While some relief is provided for missed priority deadlines in limited situations, IP owners should not count on special treatment of these matters. Even the Italian IP Office, for example, states that any deadline extensions will not apply to priority filing deadlines.

The same guidance applies to deadlines relating to filing a US patent application after an inventor’s own disclosure of the invention. The one-year “grace period” remains in effect. As this is a statutory bar to receiving a patent, the USPTO and courts cannot waive any failure to file a patent application within one year after the disclosure.

Conclusion

Despite the relief being offered by these IP offices and others around the world, we strongly recommend that IP owners be ready to meet deadlines as they would normally come due. As the U.S., UK, and German offices indicate, they will try to act favorably on re-instatement or revival petitions, but even these offices must act within the statutory bounds of their authority. Furthermore, while offices may extend deadlines, electronic filing and processing is almost always available. Therefore, while relief may be available, the most prudent course of action is to meet all deadlines within the routine time period.

If you have any questions regarding your patent and trademark portfolio or rights during these challenging times, we encourage you to contact your Bradley IP counsel for further advice.