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Impact of COVID-19 on patent deadlines

Tuesday, March 24, 2020 @ 11:28 AM | By Jayde Wood and Jennifer Marles


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Jayde Wood
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Jennifer Marles
With courthouse closures and law firms quick to implement remote working policies, the COVID-19 pandemic is having an impact beyond the realm of public health. As the virus continues to spread, intellectual property offices are adopting measures to accommodate missed deadlines relating to COVID-19. We caution that the information below is a snapshot only — the situation is extremely fluid and we expect that additional extensions of time or special considerations for the hardship that the current situation has caused are likely to be introduced in the days and weeks ahead.

Canada, extended deadlines

On March 17, the Canadian Intellectual Property Office (CIPO) announced that in response to the COVID-19 pandemic, deadlines falling between March 16 and March 31 are extended to April 1. Such deadlines include deadlines for responding to Examiner’s Reports, renewal deadlines and any other deadline that is fixed under the Patent Act. If the circumstances surrounding COVID-19 continue, the CIPO may extend that period resulting in further extensions of time.

Care should be taken in relying on the extension. For example, for new Patent Cooperation Treaty (PCT filings) where the CIPO is the receiving office, the regulations under the PCT should be consulted. There can also be potentially unintended consequences of relying on any extension of the deadline for a new convention filing, as while notionally the deadline to file the application in Canada and claim priority may be extended, there may be no clear extension of any limitation period, for example the one-year period for public disclosure by an inventor. Thus, for new convention filings and PCT filings (where the CIPO is the Receiving Office), the appropriateness of relying on the extension should be carefully and specifically considered, and this should only be done as a last resort.

The CIPO also says that it remains open and in operation, although it warns that clients should expect significant delays in all CIPO services.

U.S., waived revival fees

On March 16, the U.S. Patent and Trademark Office (USPTO) said that it considers the effects of the COVID-19 outbreak to be an “extraordinary situation.” To provide relief to patent applicants and patentees who missed deadlines for responding to communications from the USPTO due to the effects of the COVID-19 outbreak, the USPTO has decided to exercise its authority to waive revival petition fees. However, the requirement that the entire period of the delay between the date the deadline was missed and the date the petition was filed must be unintentional continues to apply, so the necessary action should be taken as soon as it is possible to do so.

The fee waiver does not apply to missed statutory filing deadlines. Additionally, the USPTO cautions that it is not extending deadlines during the COVID-19 pandemic.

Europe, pushed back deadlines

The European Patent Office (EPO) advised that it will push back all deadlines expiring on or after March 15 to April 17. If the disruption continues after April 17, the EPO may provide further extensions and remedies.

China, suspended deadlines

The Chinese National Intellectual Property Administration (CNIPA) views COVID-19 as force majeure in Article 6 of the Implementation Rules of Patent Law. The CNIPA’s Notice No. 350 says that if a party misses a deadline due to COVID-19 related obstacles, the party can request restoration of their rights within two months after the day when the COVID-19 related obstacles are resolved. Such a request must be filed within two years from the deadline.

In an explanation for Notice No. 350, the CNIPA lists some COVID-19 related obstacles that include infection or self-isolation. Additionally, the CNIPA cautions that not all deadlines are suspended. For example, loss of rights relating to novelty grace period and priority period cannot be restored. 

More temporary IP deadline changes

We are in an unprecedented territory — the spread of COVID-19 has prompted many IP offices, in addition to the above-mentioned four, to be flexible and pragmatic to protect patent rights. For example:

  • the Brazilian Patent and Trademark Office has decided to suspend deadlines falling between March 16 and April 14;
  • the Intellectual Property Office of the Philippines will extend deadlines falling between March 15 and April 14 to April 15;
  • the German Patent and Trademark Office will extend time limits granted by the office to May 4.
  •  … and the list goes on.

While most IP offices continue their electronic services and can receive submissions and new applications electronically so that deadlines should continue to be met wherever possible, in the unfortunate event that a patent owner is not able to take a necessary step in time, the available extensions of time and procedural remedies in the country concerned should be carefully considered. Most offices are trying to offer relief against the serious loss of rights that could be caused due to the inability to meet deadlines in the patent process.

Jayde Wood is an associate at Oyen Wiggs Green & Mutala LLP and her practice focuses on the strategic creation and development of IP assets. Born and raised in Beijing, she is fluent in written and spoken Mandarin Chinese and has assisted clients with securing IP protection in China. Reach her at jwood@patentable.comJennifer Marles is a partner with Oyen Wiggs where she helps her clients build the value of their companies by securing patent protection for inventions in the biotechnology, chemical and medical device fields. Reach her at jmarles@patentable.com.

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