The United States Patent and Trademark Office (USPTO) considers the effects of the COVID-19 outbreak to be an "extraordinary situation" for affected patent and trademark applicants, patentees, reexamination parties and trademark owners. The USPTO has closed their office to the public.
USPTO-Related Correspondence - Petitions to Revive
The Coronavirus Aid, Relief, and Economic Security Act (CARES Act) was signed into law on March 27, 2020. The Director of the USPTO was given temporary authorization during the pandemic to toll, waive, adjust or modify any timing deadlines under the trademark and patent laws, from March 27, 2020, and for 60 days thereafter. The Director may act if the Director determines that the emergency "related to such period-(1) materially affects the functioning of the Patent and Trademark Office, (2) prejudices the rights of applicants, registrants, patent owners, or others appearing before the Office; or (3) prevents applicants, registrants, patent owners, or others appearing before the Office from filing a document or fee with the Office." If the Director makes such a determination, a public notice shall be issued. On March 31, 2020, Director Iancu extended certain deadlines in patent and trademark matters and a summary is provided here
The USPTO is unable to modify any statutory deadlines prior to March 27, 2020, however, for any patent and trademark applicants, patentees, reexamination parties and trademark owners who were unable to timely reply to an Office communication due to the effects of the COVID-19 outbreak, which resulted in the application being held abandoned or the reexamination prosecution terminated or limited, the USPTO will waive the petition fees.
Interviews, oral hearings and in-person meetings
Until further notice, examiner and examining attorney interviews, Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) oral hearings, and other similar in-person meetings with parties and stakeholders scheduled to take place at USPTO offices will be conducted remotely by video or telephone.
The Library of Congress is closed to the public. Refusal letters are going to be sent by email to the email address provided in the application rather than through the U.S. Mail. No physical deliveries are being accepted at this time. If physical deposits are required, the Copyright Office is accepting electronic deposits of the same work with a sworn declaration that the electronic deposit is identical to the physical deposit. Special handling requests will be examined within five business days. No extensions are being granted of any deadlines.
On March 31, 2020, Acting Register Maria Strong issued a public notice changing the timing requirements for the statutory damages remedy under Section 412 of the Copyright Act. Typically, an applicant must file within 3 months of the first publication date. For applicants that can submit electronic applications but are unable to submit a required physical deposit, the applicant must swear, under penalty of perjury, that the COVID-19 pandemic is the reason why the physical deposit cannot be submitted. Reasons may include being subject to a stay at home order or being unable to retrieve the physical materials since the location where they are held is closed. But the notice only applies to situations in which the 3-month window remained open as of March 13, 2020. Moreover, if the application can be made electronically (no physical deposit is required), the 3-month window still applies.
The notice also provides that if an applicant cannot submit an electronic or physical application during the "disruption," once the Acting Director announces that the disruption is over, an applicant can submit a sworn statement that the application could not be made because the applicant had no internet access, for instance.
Practically speaking, very few applications require a physical deposit. Most items can be photographed or scanned and submitted. Accordingly, this applies only if access to the physical items is impossible. For instance, if the items were first published online, then this public notice is not relevant.
The IP offices in Australia and New Zealand are currently open for business, but in Australia, no in-person meetings will take place for now, and in New Zealand, the Office is operating remotely. According to IP Australia, "[w]here an applicant cannot carry out an action within the time limits due to the COVID-19 outbreak, an extension of time may be available." Requests will be considered on a case by case basis and must be accompanied by a declaration stating how the pandemic has interfered with the obligation to respond, but not all time periods can be extended. New Zealand has also adopted an extension request procedure. Please contact us to check if an extension of time is possible for your application in Australia or New Zealand.
The Canadian Intellectual Property Office (CIPO) remains open but has warned of significant delays in all services. The Office designated the COVID-19 outbreak as an unforeseen disruption beginning on March 16, 2020, ending (for now) on April 30, 2020. Patent and trademark deadlines in that time period are automatically extended to May 1, 2020. For deadlines falling after May 1, 2020, the Registrar will consider the disruption caused by COVID-19 to be sufficient circumstance to obtain an extension of time upon request. The Registrar may also extend deadlines on its own initiative in the interests of justice.
The National Intellectual Property Administration of People's Republic of China has resumed operations as of February 3, 2020, with reduced staff. They anticipate increasing the personnel on an ongoing basis. All filing and payment matters can be handled electronically. Hearings seemed to be delayed for now or moved to written proceedings (no policy announcement). Importantly, formal documents for court proceedings must still be notarized by a local notary public and sent to the Chinese embassy/consulate in the home country of the applicant for legalization. However, the embassy/consulate may be operating with a reduced schedule or may be closed.
All oral proceedings in examinations and oppositions scheduled through April 17, 2020, have been postponed until further notice unless they were already confirmed to take place by means of videoconferencing.
The EPO also announced that its search, examining and opposition divisions will continue with their other activities, as well as holding oral proceedings, which have been confirmed to take place by means of videoconferencing.
There may be extensions or remedies for time limits especially for users located in areas directly affected by disruptions due to COVID-19. The extensions and remedies apply to parties and representatives in proceedings under the European Patent Convention and the Patent Cooperation Treaty. Other changes are likely from the EPO.
The EUIPO, which is responsible for administering trademark and design rights throughout the EU, announced
that all time limits expiring up until April 30, 2020, would be extended until Monday, May 4, 2020.
All EUIPO staff is currently working remotely. The EUIPO has communicated that, to the extent possible, business will proceed as usual, stating that: "Trademark and design applications will continue to be received, examined and published, and the Office will continue to send communications and set deadlines."
The DMPA will continue to provide its services using the electronic means available to it but users should expect delays. Electronic filing can be used to file applications and take any actions related to their prosecution.
Users should expect delays in issuing certificates and priority documents. One should request such certificates and documents as early as possible. The dates of publication of the IP gazettes may be different from the originally scheduled dates.
The DMPA is not authorized to extend time limits provided for by law. However, time limits granted by the DMPA are automatically extended, and no decision will be made because of the expiration of any time limit, until May 4, 2020. Additionally, the time limits to be set by the DMPA will be as generous as the situation requires.
The HKIPD is operating remotely. It will offer the following limited services:
- online search
- e-filing and submission of documents by mail
- publication of the Hong Kong Intellectual Property Journal
- limited Public Service Counter hours (from 1:00 pm to 5:45 hours)
The HKIPD will contact parties regarding the next steps for hearings, which were supposed to occur in the last few weeks. Any documents or other deadlines that are due before March 27, 2020, have automatically been extended to April 6, 2020.
On March 23, 2020, the CGPDTM announced that it will be closed from March 25, 2020, through April 15, 2020. In particular, it stated: "In view the above, the due dates of timelines/periods prescribed under different IP acts and rules administered by the CGPDTM with respect to completion of various acts/activities, filing of any reply/document, payment of fees, etc. regarding any IP applications filed with the offices under the administrative control of the CGPDTM shall be the date on which the offices will re-open."
On March 24, 2020, the KIPO announced that applicants who failed to meet statutory deadlines for submitting documents or paying fees as a result of the COVID-19 pandemic would be permitted to submit a request for relief or payment along with an explanation and evidence.
The UKIPO buildings are closed but UKIPO remains open. Any deadlines form March 14, 2020, onward for designs, trademarks, patents and supplementary protection certificates and applications for those rights are extended until the UKIPO declares that the extension period has ended. Two weeks-notice will be provided.
WIPO initiated remote working arrangements for most of its staff, with only essential staff still working on WIPO premises. The International Bureau (IB) and the IB as a receiving Office remain open for the purposes of filing and processing Patent Cooperation Treaty (PCT) applications.
WIPO has also postponed all events and meetings organized or co-organized by WIPO during the months of March and April.
So far, according to WIPO, they have been able to continue to process applications filed through the PCT, the Madrid System for the International Registration of Marks, the Hague System for the International Registration of Industrial Designs, as well as administer other IP and related systems including the WIPO Arbitration and Mediation Center.
Many IP offices around the world have not changed their operations (yet).