We live in interesting times. No corner of professional or personal life seems untouched in at least some way by the latest coronavirus (named SARS-CoV-2) and the disease it causes (named “coronavirus disease 2019” abbreviated COVID-19). Governments all around the world are either demanding or suggesting that people quarantine themselves or engage in social distancing. The intellectual property world is no different. The United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the World Intellectual Property Organization (WIPO), the European Union Intellectual Property Office (EUIPO), IP Australia, the German Patent and Trade Mark Office (DPMA), and the UK Intellectual Property Office (UKIPO) are just some of the Offices that have in recent days issued COVID-19 guidance to inform stakeholders of how they will handle workflow and meetings during this global health emergency.
On March 13, the USPTO announced that patent examiner and trademark 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 the USPTO will be conducted remotely by video or telephone until further notice. Parties scheduled to have interviews, meetings or hearings will receive further instructions on how to participate by video or telephone in advance of the interview, hearing, or meeting.
Then on March 15, the USPTO announced that all USPTO offices would close to the public beginning Monday, March 16, and remain closed until further notice. The USPTO announced this move was made out of an abundance of caution and did not cite any particular case or specific event that led to the closure decision. USPTO offices will, however, remain open for employees, contractors, and those with access badges. The USPTO also announced that operations will continue without interruption.
In the March 15 announcement, the USPTO also specifically stated that patent and trademark application deadlines and other deadlines will not be extended.
Then on March 16, the USPTO announced that it considers the effects of coronavirus to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. Therefore, the USPTO is waiving petition fees in certain situations for customers impacted by the coronavirus. For example, the official notice explains the petition fee to revive an application will be waived if the failure to file a reply was due to the effects of the coronavirus outbreak. Once again, however, the USPTO specifically stated that the notice does not grant waivers or extensions of dates or requirements set by statute.
On March 19, the USPTO announced that it considers the effects of COVID-19 to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and is waiving the requirements of 37 CFR 1.4(e)(1) and (2) for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card. The requirements of 37 CFR 1.4(e)(1) and (2) are the only USPTO requirements for original handwritten, ink signatures, and the USPTO has no other requirements for original handwritten, ink signatures.
Those with official business with the USPTO should reach out to their points of contact with any questions or can contact the USPTO through this CONTACT link.
On March 18, the EPO announced that it has decided to postpone all scheduled oral proceedings in examination and opposition proceedings until March 27, 2020 unless they have already been confirmed to take place by means of videoconferencing. During this time the EPO will be exploring options for further facilitating the use of videoconferencing in oral proceedings.
The EPO will be sending parties separate notifications about this postponement as soon as possible. To guarantee that all parties are informed in due time, the EPO may use additional means of communication, such as email. The EPO invites parties to check the respective files online via the European Patent Register, where the notice of postponement will be available shortly after its dispatch.
The EPO also announced that 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.
With respect to remedies in case of missing deadlines, the EPO’s website explains that time limits expiring on or after March 15 are extended until April 17, 2020. If the disruption should continue after April 17, the EPO may publish another notice informing users about further extensions and remedies in respect of time limits.
In view of the rapidly evolving COVID-19 situation, all parties to proceedings before the EPO should check the above EPO webpage on a regular basis, which will provide ongoing updates as necessary.
As of March 16, 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.
The EUIPO, which is responsible for administering trademark and design rights throughout the EU, announced on March 16 that all time limits expiring between March 9 and April 30 would be extended. This extension effectively extends time limits until Monday, May 4 because Friday, May 1 is a public holiday.
The EUIPO has also activated the Office’s business continuity protocol, which means effective March 16 all EUIPO staff will work from home. To the extent possible under the circumstances, the EUIPO says business will proceed as per usual, although the EUIPO headquarters will remain closed until further notice. “Trade mark and design applications will continue to be received, examined and published, and the Office will continue to send communications and set deadlines,” the latest update reads.
The EUIPO had previously postponed all meeting and events involving a “high number of external stakeholders” through the end of April.
IP Australia, the government agency in Australia that administers intellectual property rights and legislation, has a brief notice on its website dated March 13, which merely states that it is monitoring the COVID-19 outbreak and consistent with its business continuity protocol will take appropriate actions as necessary to protect the safety of staff while still providing services to customers. Those seeking more information are directed to the Australian Department of Health website.
The Canadian Intellectual Property Office (CIPO) remains open as of March 17, but the Office is notifying stakeholders that they should expect significant delays in all services. Furthermore, the Commissioner for Patents, the Registrar of Trademarks and the Minister have designated the COVID-19 outbreak as an unforeseen disruption beginning on March 16 and ending on March 31. The importance of this is that time periods falling within these designated dates are extended. CIPO notes that they may decide to extend the period of time designated as an unforeseen disruption and encourages stakeholders to use online solutions that are available 24/7 to file and correspond with the Office.
On March 10, the German Patent and Trade Mark Office (DPMA) extended time limits set by the German Patent and Trademark Office, but as with the USPTO explained that it could not extend time limits specified by the law. Nevertheless, any person who did not observe a time limit imposed by law without any fault can subsequently follow provisions concerning the re-establishment of rights and be placed in the same position as if they had observed the time limit.
On March 16, the German Patent Office announced that Information centers and research rooms will remain closed until further notice, and there will be no on-site consultations and no Initial Inventor Consultations. Still further, the Arbitration Board extended all open pleading deadlines until May 15, 2020 without the need for filing an extension of deadline request.
The UKIPO does not have much information available relative to their specific handling of the coronavirus outbreak. The UKIPO merely says that they will consider requests for extensions of time as favorably as possible and will take whatever measures they can to support the rights of applicants and attorneys affected by the COVID-19 outbreak.
According to the Hogan Lovells IP & Media Technology team, the Italian government recently adopted a number of extraordinary measures to contain the spread of COVID-19.
In light of the spread and impact of COVID-19 around the world, the Italian Patent and Trademark Office issued a Decree providing for a stay of all official deadlines falling between March 9 and April 3, 2020. The stay concerns all deadlines involving any activity with the Italian Patent and Trademark Office, with exception of mandatory deadlines in opposition proceedings (i.e. the deadline to bring opposition, to file the Power of Attorney to commence the action and the relevant supporting arguments), as well as the mandatory deadlines to bring action before the Office Board of Appeal.
Many of the officers of the Italian Patent and Trademark Office are also working remotely to ensure the functionality of the system. “Given that the majority of activities may be carried out online, we do not expect significant impact on IP matters,” said Hogan Lovells.
Indian Patent Office (IPO)
On March 19, 2020, the Indian Patent office (IPO) released an update on its lockdown and rescheduling measures, announcing that all in person hearings relating to Patents and Designs scheduled on or before April 15, 2020 should be changed to Video Conferencing (VC) hearings. If the applicant is unable to agree to a video conferencing hearing, the Controller is instructed to adjourn the hearing until after April 15, 2020. Hearings scheduled for after April 15, 2020 will remain unaffected by this Public Notice.
Furthermore, on March 16, the IPO announced that all hearings relating to trademarks matters scheduled from March 17 to April 15 have been adjourned and these cases will be rescheduled. Hearings scheduled after April 15, 2020 remain unaffected by this Public Notice.
Design application hearings from March 18 to April 3 have also been rescheduled to dates between April 16 and 28. See here. Other design application hearings scheduled for March 27 have been rescheduled to April 22. See here.
UPDATE 1 at 5:08pm ET to include mention that the USPTO is waiving handwritten signatures.
UPDATE 2 at 1:36pm ET on March 22 to add Indian Patent Office.