COVID-19 Patent Office / IP Office Status

 

Last updated:  June 9, 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 July 3, 2020 are extended to July 6, 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 Updates through 2020 June 9:

·      Almost all patent, industrial design and trademark deadlines falling between March 16, 2020 and July 3, 2020 are extended to July 6, 2020.

o   June 9 Update:  Commissioner has further designated June 15 to July 3, 2020 as designated days for the purpose of most patent, trademark and industrial design deadlines.

o   This is in addition to the previous designations of March 16 – May 15, May 19 – May 29, and June 1 – June 12, 2020.

o   See CIPO Patents FAQ below for patent deadlines that are not extended.

·      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 June 9:

·      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 June 9:

·      CIPO’s Frequently Asked Questions and their Answers, for industrial designs. 

 

CIPO Trademarks FAQ, updated June 9:

·      CIPO’s Frequently Asked Questions and their Answers, for trademarks. 

 

CIPO Trademarks Opposition Board FAQ, updated June 9:

·      CIPO’s Frequently Asked Questions and their Answers, for proceedings before the Trademarks Opposition Board. 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE

 

·      Highlights:

·      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. 

·      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. 

·      Large entities may apply for further relief on a case by case basis.

·      Petition fees to revive patent and TM applications abandoned through June 30, 2020 due to the pandemic are waived.

·      For details see the April 28 and May 27 Updates below.

 

New USPTO webpage, “USPTO notices regarding COVID-19”:

·      Consolidates USPTO COVID-19-related information in a single page.

 

USPTO Update June 3:

·      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 Update May 29:

·      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.

 

USPTO Update 2020 March 31:

·      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.) 

 

USPTO Update 2020 March 19:

·      Original signature requirement waived for credit card fee payments and correspondence with Office of Enrollment & Discipline.

 

USPTO Update 2020 March 16:

·      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.)

 

USPTO Update 2020 March 15

·      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

 

WIPO Update 2020 May 27:

·      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.

 

WIPO Update 2020 April 9:

·      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 Update 2020 March 30:

·      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. 

 

WIPO Update 2020 March 17:

·      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 June 3:

·      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:  Updated May 21st: 

o   All oral proceedings before the Opposition Division scheduled through September 14, 2020 (previously June 2, 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 were scheduled to resume in-person oral hearings, to a limited extent, at their premises in Haar from May 18, 2020.  Parties will be contacted to confirm they can attend in person and don’t anticipate being affected by travel restrictions.  (Previously, all oral proceedings before appeal boards scheduled through May 15, 2020 were postponed.)

·      All EPO-organized events in March, April and May are postponed, as is the European Inventor Award scheduled for June 17-18.

·      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.

 

EUIPO Update 2020 April 29:

·      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.

 

EUIPO Update 2020 March 19:

·      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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