Measures implemented by Intellectual Property Offices around the world in response to the COVID-19 pandemic
Last Update: 30 March 2020
23 March 2020
As the COVID-19 pandemic continues, Intellectual Property Offices around the world have implemented various measures to accommodate for inevitable disruptions caused by the outbreak. The pandemic is a rapidly changing situation, and this article will be subject to change as Intellectual Property offices continue to make announcements. The information may not be complete for all offices. We will update on a rolling basis.
The Benelux Union – Benelux Office for Intellectual Property (BOIP)
From 16 March 2020 until a date where the BOIP determine that staff can work reasonably again ("BAU date"), BOIP will not withdraw any requests or procedures because a deadline has not been met. This also applies to opposition proceedings. An additional period of one month will be given for all requests and procedures for which current deadlines have expired between 16 March 2020 and the BAU date, or for which deadlines are less than one month on BAU date. This month will be counted from the BAU date.
As a result, the register may not reflect the accurate status of certain trademarks during this period. BOIP will not be able to communicate a new time limit for all individual requests and proceedings during this time.
Canada – the Canadian Intellectual Property Office (CIPO)
The CIPO have announced that any deadlines set by the Trademarks Act, Trademarks Regulations or the Registrar in a proceeding before the Trademarks Opposition Board falling between 16 March and 31 March 2020 will now fall on 1 April 2020. For deadlines falling after 1 April 2020, the Registrar will consider the disruption caused by COVID-19 a sufficient circumstance to obtain an extension of time. The Registrar may also use its discretion under section 47(1) of the Trademarks Act to extend deadlines on its own initiative if it is in the interests of justice to do so. This extension period may be further extended.
China – China National Intellectual Property Administration (CNIPA)
The CNIPA was closed from 24 January until 2 February 2020 and reopened on 3 February. Deadlines falling during the closure were automatically extended to 3 February.
An application can be made to extend certain IP deadlines where ability to comply is affected by a COVID-19 related "obstacle". For example, applications for trade mark renewal can be extended to two months from the date of the elimination of the obstacle. Recognised obstacles include hospitalization, quarantine and periods when work has been suspended in a certain geographical area. The relevant provisions can be found in the CNIPA Notice on the Effect of the Epidemic on Deadlines Relating to Patents, Trademarks and Integrated Circuit Layout Designs (No. 350) and associated official guidance.
Europe – European Patent Office (EPO)
In view of the disruptions to public life caused by the COVID-19 outbreak, the EPO has taken measures to safeguard users’ rights. Time limits expiring on or after 15 March 2020 will be extended until 17 April 2020.
For time limits expiring before 15 March 2020, the EPO has facilitated the use of legal remedies for users located in areas directly affected by disruptions due to the COVID-19 outbreak. If the disruption should continue after 17 April 2020, the EPO may publish another notice informing users about further extensions and remedies in respect of time limits.
European Union – the European Union Intellectual Property Office (EUIPO)
A decision made by the EUIPO on 16 March 2020 extends until 1 May 2020 (in practice 4 May, since 1 May is a public holiday, followed by a weekend) 'all time limits expiring between 9 March and 30 April 2020 inclusive that affect all parties in proceedings before the Office'. The reference to 'all time limits' is literal, and encompasses all procedural deadlines, including opposition deadlines and deadlines to appeal to the Boards of Appeal. Further clarity on scope of the decision was provided by a follow up communication on 19 March 2020.
France – French Patent and Trademark Office (INPI)
On 26 March 2020, an Order was published in France outlining the rules around extension of missed deadlines as a result of the current health emergency. The Order covers deadlines falling between the dates of 12 March 2020 to 24 June 2020 (the "Covered Period"). All deadlines established by the French Intellectual Property Code (including formality, opposition proceedings, and payment required for the acquisition or maintenance of a right) will be postponed. The postponement will not apply to deadlines resulting from international agreements or European tests, such as the priority deadlines for an international extension.
Non-completion of certain proceedings can produce legal effects such as sanction, prescription or forfeiture of a right. As a result of the Order, when such proceedings cannot be completed before 24 June 2020, they can be completed at the latest within two months following the Covered Period. The Order also provides for suspension of deadlines under which an administrative decision may be taken on the basis of the administrations silence. All deadlines falling in the Covered Period are postponed either to 24 July 2020 (if the original deadline was one month), or to 24 August 2020 (if the original deadline was two months or more). Deadlines that expired before 12 March 2020, or that will expire after the end of the Covered Period are unaffected.
Germany – German Patent and Trademark Office (DPMA)
The DPMA is able to continue to provide its services using the electronic means available to it. Quarantine measures have been put in place in the office, which may delay any paper-based mail being sent out by the office. With regard to all pending IP procedures, time limits granted by the German Patent and Trade Mark Office are extended, and no decision will be made because of the expiration of any time limit, until 4th May 2020. Time limits to be set by the German Patent and Trade Mark Office will be as generous as the situation requires.
Statutory deadlines cannot be extended by the DPMA. However, the DPMA has drawn attention to the option of "re-establishment of rights" that is provided in the Acts (for instance, missing a deadline without any fault). There may be delays in issuing certificates, therefore it has been advised that requests for certificates are made as early as possible.
Hong Kong – Hong Kong Intellectual Property Department (IPD)
Since 29 January 2020, the IPD's services have been affected by periods of closure and reduced working hours. For example, in the coming week (23 to 27 March 2020) the IPD will only be open during the afternoon. Deadlines falling on days of reduced service or closure have been automatically extended to the next day on which the IPD resumes normal business hours. E-filing of applications has been available throughout this period.
Hungary – Hungarian Intellectual Property Office (HIPO)
The HIPO has informed the public that it is closing down its visitors office (1054 Budapest, Akadémia u. 21.) from 18 March 2020 for an indefinite period of time. Inspection of documents will not be available during this period. From 16 March 2020, in-person consultations with case administrators are suspended indefinitely. In person filing of applications is only available at the central HIPO office (1081 Budapest, II. János Pál pápa tér 7.) on business days between 10.00 – 12.00. The automatic filing terminal in the central HIPO office will continue to be available 24/7. However, the HIPO is encouraging everyone to use the online filing systems or the postal services. If access to the HIPO building is inevitable, the person wishing to enter must fill out a liability form, including contact details.
Italy – Italian Intellectual Property Office
The local IPO issued a resolution mirroring the Government's decree which has recently put all deadlines (with a few exceptions, including the appeals before the Commissione ricorsi) on hold until 15 April 2020. All terms will restart running once the suspension is lifted. Currently terms are expected to start running again from 15 April 2020, but it is possible that the suspension will be extended.
All IPR registrations, the renewal of which falls due between 31 January and 15 April 2020, are automatically extended until 15 June 2020. After that date (or the subsequent date that the IPO will later identify) owners must take action to obtain renewal.
Poland – Polish Patent Office
The Polish Patent Office cancelled all hearings from 16 March 2020 onwards until further notice. They also have announced that they will only be communicating with parties via e-mail or regular mail – therefore there will be no possibility to review files.
Romania – the Romanian State Office for Inventions and Trademarks (OSIM)
OSIM was closed for quarantine from 10 March until 22 March 2020 and reopened on 23 March. Deadlines completed during the closure were automatically extended for close of business 23 March. It remains unclear if the suspension for this period has extended the other terms.
As of 23 March 2020, all activities involving public attendance (including hearings or meetings) were suspended until the termination of the emergency state (declared for 30 days starting with 16 March 2020 under the President Decree no. 195/20202). Any information or registration requests shall be submitted through the authority's website, email, mail, fax or telephone. It remains unclear if and how the challenges in front of the authority are also suspended and if positive, what would be the procedure for them.
Spain – Spanish Patent and Trademark Office
All administrative terms in proceedings managed by the Spanish Patent and Trademark Office have been suspended. The prescription period of rights and actions enforceable before the Office will be also deemed suspended. The Office has announced that, given the high volume of automated administrative processes, it is possible that some automatic notifications with references to deadlines will be generated, but that such references should be disregarded. The SPTO premises are also closed but the Office can be reached by telematic means.
United Kingdom – Intellectual Property Office (UKIPO)
On 27 March 2020, the UKIPO declared 24 March 2020 and subsequent days until further notice to be "interrupted days". The declaration of interrupted days means that any deadlines for patents, supplementary protection certificates, trademarks, designs, and applications for these rights which fall on an interrupted day will be extended to the next non-interrupted day. This extension applies to all non-statutory periods that have been specified by staff. However the extension does not apply to time periods that are set out under various international IP treaties such as the Patent Cooperation Treaty, European Patent Convention or the Madrid system, where the UKIPO may be acting as a Receiving Office. The period of interruption does not affect filing dates of IP applications which are filed at the Office and do not claim priority from a previous application. However, the UKIPO has advised users not to wait for the end of the period of interruption, and to meet original deadlines where possible to avoid a surge of work once the interruption period ends.
United States – the United States Patent and Trademark Office (USPTO)
On 16 March 2020, all USTPO offices were closed to the public "until further notice". However, USPTO operations will continue without interruption. Patent and trademark application deadlines, and other deadlines will not be extended. They have also confirmed that they will not grant any waivers or extensions of dates or requirements set by statute.
On 17 March 2020 USPTO announced that the effects of coronavirus were an "extraordinary situation" under the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants and owners. As a result, the office will be waiving petition fees in certain situations for customers impacted by coronavirus. On 19 March 2020 the office announced that they have also waived the requirement for original handwritten signatures signed in permanent dark ink or equivalent for certain correspondence, and are now accepting copies of handwritten signatures as an alternative.
World Intellectual Property Organisation (WIPO)
An announcement made by WIPO on 16 March explained that their business continuity plans have allowed them to continue to process applications filed through WIPO's Global IP Services. No extensions to deadlines have been announced to date.
Uche Eseonu, Trainee Lawyer, wrote this update.