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19th May 2020
Internationally, IP institutions have shifted their operations to adjust to the ‘new norm’ created by the COVID-19 pandemic. Many IP offices are still physically closed to the public but have staff working remotely.
Applicants and their representatives might also be working remotely from unlikely work environments, consequently, delays in receiving response or even disruptions to postal mail may occur.
In view of these difficulties, IP offices around the world have been extending deadlines to accommodate interested individuals and so as not to stall the IP system.
We are outlining below the approach adopted by some of the main IP offices we communicate with and any foreseeable implications these changes may have on our clients. It is, however always advisable to check directly with the relevant IP Office for the most recent updates as the situation develops. WIPO has a full regularly updated COVID policy tracker which you can check for further information, here.
· World IP Organisation (WIPO)
WIPO will not be sending or receiving communications by postal mail until further notice due to the suspension of postal service in Switzerland. Instead, the International Bureau of WIPO will be delivering electronic versions of various certificates and documents. Hard copies of these documents will then be sent by WIPO at a later stage.
The following remedies are available in each international registration system:
Hague System – users who do not submit communication addressed to the International Bureau according to prescribed limits due to restrictions of electronic communication, mail or delivery service are allowed five days after services are resumed within which they may send their communication. In such circumstances, users must provide satisfactory evidence of the reason why the International Bureau should excuse this failure.
Madrid System – The same remedies applicable to the Hague system apply to the Madrid system with regards to communication addressed to WIPO.
PCT System - Delays in meeting PCT time limits for the submission of documents and/or the payment of fees can be excused. The International Bureau of WIPO will be favourable towards PCT Rule 82quater request made citing COVID-19 related issues and not require evidence showing that the virus affected the locality in which the interested party resides.
· European Intellectual Property Office (EUIPO)
EUIPO have allowed an extension period for all time limits falling between 7 March 2020 and 17 May 2020 until 18 May 2020 which applied to all procedural deadlines, whether they have been set by the EUIPO or the Regulations. This extension period was the final one and has come to an end on 18 May 2020. Further guidelines from EUIPO will follow.
· European Patent Office (EPO)
The EPO has allowed a further extension of deadlines falling on or after 15 March 2020 to a new deadline of 2 June 2020. This extension generally incorporates filing deadlines, procedural deadlines, response deadlines and renewal fee deadlines. It does not, however, include the time limit for filing divisional applications and the final date for filing written submissions for oral proceedings.
Until further notice, all oral proceedings in opposition scheduled until 2 June 2020 which have not either already been confirmed to take place by video conference have been postponed.
· Irish IP Office (IPOI)
The IPOI provided that the 13 March 2020 until 2 June 2020 are ‘excluded days’ and any deadlines which fall within this range are extended to the next day after the exclusion. Hearings and oral proceedings have been cancelled or postponed.
IPOI staff have been working remotely maintaining online services which include e-filing of applications, electronic fee payments and email enquiries during normal working hours. IPOI staff remain unreachable for telephone enquiries, however enquiries should be sent by email and directed to the following email address until further notice: firstname.lastname@example.org.
· UK IP Office (UKIPO)
The UKIPO has provided an extension for its 'period of interruption' until at least 28 May 2020 and deadlines falling on or after this date can be easily extended. On 28 May 2020, this interrupted period shall be revised. This is a general extension and is applicable to patents, trade marks, designs and supplementary protection. Moreover, the UKIPO provide that wherever possible it is still advisable to continue to adhere to existing deadlines.
Hearings will operate by via telephone, Skype or other virtual methods. No further physical hearings will be booked or take place until 1 June 2020.
· United States Patent Trademark Office (USPTO)
The USPTO has allowed extensions to file patent and trademark-related documents and payment of certain fees due between 27 March 2020 and 31 May 2020 will be extended to 1 June 2020. Oral Hearings at the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) hearings scheduled on or after 13 March 2020 are to continue virtually.
· China National Intellectual Property Administration (CNIPA)
A party who loses its rights as the result of a delay in relation to any time limit caused by the pandemic can request a restoration of rights. This includes any late payments as a result of the pandemic. A request letter for restoration of rights shall be submitted to explain the grounds of doing so.
Patent and trademark applications related to prevention and control of the COVID-19 pandemic, are allowed prioritized examination. Hearings or oral proceedings continue virtually.
· The Indian Office of the Controller-General of Patents, Designs and Trademarks
Deadlines for applicants and owners of IP rights for filing documents/replies, payment of fees, and completion of any action in respect of any IP application filed in India falling due between the lockdown period, i.e. 25 March till 17 May, 2020, shall be 1 June, 2020.
All hearings scheduled up to 3 May 2020 are postponed with fresh hearing dates to be notified thereafter.
There is no doubt that COVID-19 has impacted our lives greatly, not excluding the IP field. However, Ansons in Belfast and Maclachlan & Donaldson in Dublin can help you protect your IP rights by coordinating with the different IP Offices during these turbulent times.
Please reach out to us should you have questions on the above information, or if you require any information regarding other IP Offices.
Trainee Trade Mark Attorney at MacLachlan & Donaldson