COVID-19 Patent Office Status
COVID-19 Patent
Office / IP Office Status
Last
updated: August
23, 2020 (Please refresh your browser
to ensure you are viewing the latest version of this page)
Disclaimer: this list is provided for general information
and does not constitute legal or patent agency advice.
Patent
applicants and other IP owners / applicants should consult with their IP
counsel to advise them regarding any deadlines and available extensions.
Canadian Intellectual
Property Office:
· Highlights:
o Almost all Canadian patent, trademark and industrial design deadlines falling between March 16, 2020 and August 28, 2020 are extended to August 31, 2020.
o CIPO is not expected to grant any further extension beyond August 31, 2020.
o PCT international phase deadlines are beyond CIPO’s control and are not automatically extended.
o See FAQs below for other deadlines that are not extended.
CIPO webpage, “COVID-19 and CIPO Operations”
· Consolidates CIPO COVID-19-related information in a single page.
CIPO Practice Notice July 7, 2020:
· New accelerated examination procedure for COVID-19-related inventions, but only for small entities, and only for the first 50 applicants.
· Web page provides further details.
CIPO Updates through 2020 Aug. 19:
· Almost all patent, industrial design and trademark deadlines falling between March 16, 2020 and August 28, 2020 are automatically extended to August 31, 2020.
o Aug. 19 Update: Despite CIPO’s previous admonition that the “designated days” would end on Aug. 24, 2020, they were further extended as a result of CIPO shutting down its electronic filing system and facsimile filing system from August 21-23, 2020 for scheduled maintenance.
o No further extensions are expected beyond Aug. 31.
o See CIPO Patents FAQ below for patent deadlines that are not extended.
· CIPO has released a webinar on YouTube titled, “End of Designated Days”. Any similarity to the title of an apocalyptic Arnold Schwarzenegger movie is probably not coincidence, given the circumstances.
· April 24 Update: CIPO has resumed its previously suspended document services. Applicants are cautioned to expect significant delays.
· CIPO headquarters in Gatineau remains open and in operation.
· Regional offices in Toronto, Vancouver, Edmonton and Montreal are closed and will not be receiving CIPO correspondence until further notice (this does not affect Carbon Patent Group’s ability to file electronically).
· Significant delays expected in all services.
· For trademark deadlines falling after the Designated Days end, the Registrar will consider the disruption caused by COVID-19 a sufficient circumstance to obtain an extension of time under sections 47(1) and 47(2) of the Act upon request.
CIPO Patents FAQ, updated August 19:
· Some highlights:
o Questions 4 and 10 note that the following deadlines are not extended:
o Patent Application Publication 18 months after the priority date;
o The deadlines for additions to the specification and drawings in Section 28.01 of the Patent Act cannot be extended more than 6 months after the earliest date on which the Commissioner receives any document or information under subsection 28(1) of the Patent Act;
o The periods for appeal defined in subsections 18(2), 48.5(2) of the Act;
o The limitation set out in subsections 36(2) and 36(2.1) of the Act requiring a divisional application to be filed before issuance of the original application;
o PCT international phase filing, priority and other deadlines are beyond CIPO’s control or discretion to extend.
CIPO Industrial Designs FAQ, updated August 19:
· CIPO’s Frequently Asked Questions and their Answers, for industrial designs.
CIPO Trademarks FAQ, updated August 19:
· CIPO’s Frequently Asked Questions and their Answers, for trademarks.
CIPO Trademarks Opposition Board FAQ, updated August 19:
· CIPO’s Frequently Asked Questions and their Answers, for proceedings before the Trademarks Opposition Board.
UNITED STATES PATENT
AND TRADEMARK OFFICE
· Highlights:
· Two-month deadline to restore priority rights in late-filed applications extended to the later of the usual two months after the 12-month convention priority deadline, or July 31, 2020 (see June 12 notice below)
· Most patent and trademark deadlines falling between March 27, 2020 and May 31, 2020 were extended to June 1, 2020, provided the filing is accompanied by a statement that the delay was due to COVID-19. (See April 28 Update below)
· Petition fees to revive patent and TM applications abandoned through June 30, 2020 due to the pandemic are waived; deadline to file petition is July 31, 2020 (see June 29, May 27 and April 28 Updates below).
· Additionally, for small and micro entities only:
· filings that would have been deemed timely if filed by the extended deadline of June 1, 2020 will now be deemed timely filed if filed by July 1, 2020.
o Time to pay filing, issue and maintenance fees extended from July 1 to September 30, 2020.
o See May 27 and June 29 Updates below.
· Large entities may apply for further relief on a case by case basis.
New USPTO webpage, “USPTO notices regarding COVID-19”:
· Consolidates USPTO COVID-19-related information in a single page.
· Further relief for small and micro entities: deadline to pay certain patent-related fees including filing, issue and maintenance fees, that are nominally due on or after March 27, 2020, has been further extended to September 30, 2020, provided the payment is accompanied by a statement that the delay in payment was due to COVID-19.
· Also establishes July 31, 2020 petition deadline to qualify for fee waiver to revive applications abandoned due to COVID-19
· See Official Notice for details.
USPTO Updates June 15 and June 30:
· New prioritized examination for certain trademarks and service marks related to COVID-19, see official notice and new webpage released June 30 for further details.
· Relief to restore unintentionally late priority claims: non-provisional and international applications with convention priority filing deadlines between March 27 and July 30, 2020 can be filed by the later of July 31, 2020 or two months after the 12-month convention priority deadline, if the petition to restore the right of priority is accompanied by a statement that the failure to timely file the application was due to the COVID-19 outbreak.
· Petition fees waived.
· See official notice for further details.
· USPTO has launched the USPTO COVID-19 Response Resource Center, a central hub for information about the USPTO’s efforts and other helpful information in relation to the COVID-10 outbreak.
· USPTO to allow electronic filing of patent term extension applications that meet certain criteria, via EFS-Web or Patent Center.
USPTO Update May 27 - Patents:
· For small and micro entities only: filings that would have been deemed timely if filed by the extended deadline of June 1, 2020 will now be deemed timely filed if filed by July 1, 2020.
· For large entities, after May 31, 2020, relief will be available to those who need it on a case-by-case basis. Such requests can be submitted through a petition for an extension of time or a petition to revive.
· The waiver of fees for petitions to revive has been extended to applications abandoned through June 30, 2020 (previously May 31, 2020).
· The Official Notice provides further details.
USPTO Update May 27 - Trademarks:
· USPTO will direct relief to those who need it on a case-by-case basis.
· Provides specific guidance for petitions to revive and petitions to the director, for abandonments due to failure to respond, failure to file statement of use, etc.
· The waiver of fees for petitions to revive has been extended to applications abandoned/expired/cancelled through June 30, 2020 (previously May 31, 2020).
· See Official Notice for details.
USPTO Update 2020 May 18: Additional Information for New COVID-19 Prioritized Examination Pilot Program
· The USPTO has launched a new webpage providing additional information and resources regarding the new COVID-19 Prioritized Examination Pilot Program announced May 8.
USPTO Update 2020 May 8: New COVID-19 Prioritized Examination Pilot Program
· Prioritized examination fees waived for small and micro entities, if the claims cover a product or process that is subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19.
· See Federal Register notice for more details.
USPTO Update 2020 May 6: Plant Patents
· Due to the COVID-19 outbreak, the USPTO will temporarily permit the filing of plant patent applications and follow-on documents via the USPTO patent electronic filing systems (EFS-Web or Patent Center) until further notice.
· See the official notice for more details.
USPTO Update 2020 April 28: Extensions of Deadlines
· Most patent and trademark deadlines falling between March 27, 2020 and May 31, 2020 are extended to June 1, 2020, provided the filing is accompanied by a statement that the delay was due to COVID-19.
· Petition fees to revive patent and trademark applications abandoned on before May 31, 2020 due to COVID-19 are waived.
· For details see the new Patents Waiver and Trademarks Waiver dated April 28, 2020, which supersede the previous Waivers of March 31st.
Frequently Asked Questions:
· Patents FAQs, updated May 4 to reflect new April 28, 2020 Waivers.
· Trademarks FAQs, updated May 4 to reflect new April 28, 2020 Waivers.
· This March 31st Update, and its accompanying Patents Waiver and Trademarks Waiver, have been superseded by the April 28, 2020 Update and Waivers, above.
· (The initial March 31st Waivers applied only to deadlines between March 27 and April 30th, whereas the April 28, 2020 Waivers have been extended to cover deadlines between March 27 and May 31, 2020.)
· Original signature requirement waived for credit card fee payments and correspondence with Office of Enrollment & Discipline.
· Now superseded by April 28 Update above.
· (Petition fees waived for petitions to revive patent and trademark applications that fell abandoned due to coronavirus delays.)
·
Patent
and trademark deadlines not extended (this is now out of date, see
2020 April 28 Update above).
· USPTO closed to the public as of March 16, 2020.
· USPTO remains open to its staff and in operation.
WORLD INTELLECTUAL
PROPERTY ORGANIZATION / PCT INTERNATIONAL BUREAU
PCT
Newsletter, 2020 August 13:
· Summarizes the July 3 update below
· Also confirms the RO/IB will continue to waive late fees under PCT Rule 16bis.2 until further notice.
· Also discusses Excuse of Delay in Meeting Time Limits Due to Unavailability of Electronic Means of Communication (PCT Rule 82quater.2)
· The International Bureau as Receiving Office will resume issuing notifications declaring international applications as considered withdrawn for having failed to pay the appropriate fees within the prescribed time limit (Form PCT/RO/117), as of July 1, 2020.
· The International Bureau as Receiving Office will continue to defer the issuance of notifications declaring international applications as considered withdrawn for having failed to pay the appropriate fees within the prescribed time limit (Form PCT/RO/117), until June 30, 2020.
· The International Bureau encourages other Receiving Offices to do likewise.
PCT Newsletter, 2020 April 17:
· Summarizes the various updates below.
· The International Bureau considers the COVID-19 pandemic to constitute a force majeure under PCT Rule 82quater.1
· “The International Bureau of WIPO, including in its role as receiving Office, will treat favorably any PCT Rule 82quater request made citing COVID-19 related issues and not require evidence to be provided that the virus affected the locality in which the interested party resides. The International Bureau of WIPO urges PCT Offices and Authorities to do likewise.”
· IB as RO is delaying the issuance of form PCT/RO/117, Notification That International Application Considered to be Withdrawn, for at least a month, unless the relevant deadline has already passed more than two months ago, and is urging all other Receiving Offices to do the same, because Rule 82quater.1 may not provide any remedy against such Notification (e.g. for failure to pay fees).
· WIPO is suspending the sending of any PCT documents in paper form until further notice. All official communications will be sent by e-mail. Applicants are urged to communicate electronically with the International Bureau.
· PCT International Bureau (IB) and IB as PCT Receiving Office remain open for filing and processing PCT applications
· Most staff working remotely but essential staff remain on premises
· Practical Advice included in recent March 20 newsletter, including automatic extensions of PCT deadlines (including national phase entry and Paris Convention) if a Receiving Office (RO), International Searching Authority (ISA), International Preliminary Examining Authority (IPEA) or the International Bureau (IB) closes and is not accepting application filings or correspondence – PCT Rule 80.5(i), PCT Article 8, Paris Convention Article 4(C)(3)
· Trademarks (Madrid): Notice dated March 19, 2020 summarizes the usual available remedies for missed time limits
· Designs (Hague): Notice dated March 19, 2020 summarizes the usual available remedies for missed time limits
EUROPEAN PATENT OFFICE
EPO Updates through 2020 August 21:
· All deadlines falling on or after March 15, 2020 (including PCT national/regional entry in the EPO) through June 1, 2020 were automatically extended to June 2, 2020.
· As of June 1, 2020, renewal fees due on or after March 15, 2020 can be deferred to as late as August 31, 2020 without incurring the usual additional late-fee. See:
o the Decision of the Administrative Council of 28 May 2020, and
o the Notice from the EPO.
· Official Notice indicates that relief under Rule 134(5) may be available for documents filed late due to mail service disruptions
· All oral proceedings before the examining and opposition divisions:
o All oral proceedings before the Opposition Division scheduled through December 31, 2020 (previously Sept. 14, 2020) are postponed unless already confirmed for videoconference.
o All oral proceedings before the Examination Divisions will continue by videoconference. (Previously, all oral proceedings in examination scheduled through June 2, 2020 had been postponed unless already confirmed for videoconference.)
· Boards of Appeal have resumed in-person oral hearings, but new procedures now apply under a Re-assessment of measures dated July 29, 2020:
o Parties will no longer be contacted to confirm they can attend in person before a hearing is scheduled, instead the hearings will be scheduled and parties will have to request a change of date under Article 15(2) if they are unable to attend.
o Some hearings already scheduled to be heard in Haar may be moved to the Isar building in Munich, and some scheduled hearing times may be changed (staggered), but parties will not be sent any notice of a change in hearing venue or start time. Instead, parties are advised to consult the online calendar approximately three days before their scheduled hearing date to confirm venue and start time.
o Some new hearings may also be scheduled in Munich.
o A maximum of two persons per party may attend.
o A self-declaration form must be completed for any person to enter the buildings.
o Face masks are required on the way to the proceeding room and Boards may also require them in the proceeding room.
· All EPO-organized events through Dec. 31, 2020 are expected to be held online only.
· European Qualifying Examination (pre-exam and main exam papers) are cancelled.
· External partners requested to abstain from visiting the EPO if they have recently visited a high-risk area.
· A Notice explains how the fee increase scheduled for April 1, 2020 will apply.
EUROPEAN UNION
INTELLECTUAL PROPERTY OFFICE
· Highlights:
o All EUIPO trademark and community design deadlines falling between March 9, 2020 and May 17, 2020 have been automatically extended to May 18, 2020, but it appears that no further automatic extensions will be granted.
EUIPO Update 2020 May 22: “End of Extension Period: Practical Information for Users”
EUIPO Update 2020 May 15: “Guidance Note on Time Limits after End of Extension Period”
· As of May 18, 2020, the previous automatic deadline extensions “come to an end”.
· Guidance is provided regarding potentially available remedies, including: extension of time limits under Article 68 EUTMDR and Article 57 CDIR; suspension of proceedings under Article 71 EUTMDR; continuation of proceedings under Article 105 EUTMDR; and restitutio in integrum under Article 104 EUTMDR and Article 67 CDIR.
· All EUIPO trademark and community design deadlines falling between May 1, 2020 and May 17, 2020 have been extended to May 18, 2020, by a decision of the Executive Director. This is in addition to the previous extension granted on March 19th for deadlines between March 9 and April 30, 2020.
· The EUIPO has published this handy “Information and guidance note on further extension of deadlines”.
Video Updates from the Executive Director:
· EUIPO Video Update 2020 May 15
· EUIPO Video Update 2020 April 30.
· EUIPO Video Update 2020 April 17.
· EUIPO Video Update 2020 April 3.
· All EUIPO trademark and community design deadlines falling between March 9, 2020 and April 30, 2020 have been extended to Friday May 1, 2020 (a public holiday), thus effectively to May 4, 2020, by a decision of the Executive Director.
OTHER COUNTRIES /
JURISDICTIONS: Please see other
compilations from third parties unaffiliated with the Carbon Patent Group:
· American Intellectual Property Law Association (AIPLA): Coronavirus Updates & Resources
· Euromoney / Managing IP – IP Stars: IP Offices react to COVID-19 – live updates
· World Intellectual Property Organization (WIPO): COVID-19 IP Policy Tracker
· World Trademark Review: Live updates: IP offices implement measures in wake of coronavirus crisis
Carbon Patent Group
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Street West, P.O. Box 173, Bradford, Ontario, L3Z 2A8, Canada
Telephone:
416-628-8308