By Keith Medansky, Michael Geller, Ed Chatterton, Niels Mulder, Melinda Upton and Leigh Martin

While the United States Patent and Trademark Office (USPTO) remains open, on March 31, 2020, the USPTO announced certain deadlines may be eligible for an extension if a party cannot meet its obligations due to the coronavirus disease 2019 (COVID-19) outbreak.  Specific deadlines falling between March 27, 2020 and April 30, 2020 may be extended to 30 days from the initial due date if the ultimate filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Acceptable reasons for a delay in filing or payment include that the trademark owner or its attorney, or another person associated with the filing, was personally affected by the virus outbreak, including, without limitation, “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered” with the filing or payment.

Deadlines which may be eligible for an extension include:

  • Response to an Office action, including a notice of appeal from a final refusal;
  • Statement of use or request for extension of time to file a statement of use;
  • Notice of opposition or request for extension of time to file an opposition;
  • Priority filing basis under 15 U.S.C. §§ 1126(d)(1) and 1141g;
  • Affidavit of use or excusable nonuse; and
  • Renewal application.

The USPTO also issued a blanket statement noting that anyone in a Trademark Trial and Appeal Board dispute may make a motion for an extension of time due to COVID-19 related issues. The USPTO’s full statement is available here.

Similarly, trademark offices across the world are adjusting schedules, protocols and deadlines in response to the COVID-19 pandemic.  In an effort to provide an overview of common jurisdictions and the steps taken in those jurisdictions, DLA Piper has utilized its global resources to compile information for key countries.

Jurisdiction Services affected Calculation of deadlines and key dates
Australia IP Australia remains open and operational.

For applicants who cannot act within time due to the COVID-19 outbreak, an extension of time may be available. Such requests should be accompanied by a declaration stating how the COVID-19 outbreak interfered with timely response. Requests for waiver or refund of the fee for the extension of time will be considered on a case-by-case basis.

Update date: March 30, 2020

All deadlines remain active.

 

Update date: March 30, 2020

 

Brazil The Brazil Patent and Trademark Office is operational, but face-to-face meetings with all examiners and employees have been suspended.  All questions and requests for information are being handled electronically.

Update date: March 30, 2020

All deadlines between March 16, 2020 and April 14, 2020 are suspended.

 

Update date: March 30, 2020

 

Canada In March 2020, the Canadian Intellectual Property Office (“CIPO”) made multiple announcements below with regard to the COVID-19 situation:

–          The CIPO remains open and in operation; however, users and stakeholders should expect significant delays in all CIPO services.

–          These regional offices are not receiving CIPO correspondence until further notice:

o   Toronto

o   Vancouver

o   Edmonton

o   Montréal

–          The CIPO recommends e-services for all transactions.

Update date: March 23, 2020

As CIPO announced on March 27, 2020, all time limits for trademark, patent and design applications falling between March 16, 2020 and April 30, 2020 are extended until May 1, 2020. Relevant department directors may decide to extend such deadlines depending on the circumstances posed by the pandemic.

As CIPO announced on March 30, 200, for proceedings before the Trademarks Opposition Board (“TMOB”):

–         deadlines falling between March 16 and April 30, 2020 will now fall on May 1, 2020;

–         for deadlines falling after May 1, 2020, the Registrar (1) will, upon the applicant’s request, consider the disruption caused by COVID-19 a sufficient circumstance to obtain an extension of time; and (2) may use its discretion to extend deadlines on its own initiative if it is in the interests of justice to do so.

Update date: March 27, 2020

China As of March 27, 2020, the National Intellectual Property Administration, PRC (“CNIPA”) maintains normal operations.

Update date: March 27, 2020

EU (EUIPO) Following the Spanish government’s activation of a “state of alarm” on March 14, 2020 due to the COVID-19 situation, the European Union Intellectual Property Office (“EUIPO”) has announced the below measures and assurances:

–          Starting March 16, 2020, all EUIPO staff will work from home.

–          Business at the EUIPO, however, continues as usual.

Update date: March 16, 2020

 

 

The EUIPO issued a decision on March 16, 2020 regarding calculation of deadlines:

–          All deadlines expiring between March 9, 2020 and April 30, 2020 (inclusive) that affect all parties in proceedings before the Office are extended to May 1, 2020. Accordingly, as May 1, 2020 is a public holiday, these deadlines are extended to May 4, 2020.

Update date: March 16, 2020

Hong Kong The Hong Kong Intellectual Property Department (HKIPD) is adopting special work arrangements between March 23 and March 27, 2020 (inclusive).

During this period, HKIPD is maintaining the following limited services:

–          Online search

–          E-filing

–          Publication of Hong Kong Intellectual Property Journal

–          Access to HKIPD’s on-premise Public Service Counter from 1:00 pm to 5:45 pm.

–          Documents can continue to be sent by mail to the Trade Marks, Designs and Patents Registries.

For hearings scheduled to take place during this period, HKIPD will contact the parties to the proceedings to make appropriate arrangements.

HKIPD has put in place special measures for Public Service Counter users. It is recommended that members of the public with fever and/or displaying symptoms such as malaise or cough should avoid entering the Public Service Counter but access HKIPD’s service through the E-filing System instead.

Update date: March 22, 2020

All official deadlines falling between March 23 and March  27, 2020 (inclusive) are extended to March 30, 2020.

Update date: March 22, 2020

India Due to the COVID-19 situation, the Government of India announced a nationwide lockdown on March 23, 2020. Following this, the Office of the Controller General of Patents, Designs & Trade Marks adopted the below measures:

–         All hearings at the Trade Marks Registry scheduled between March 17, 2020 and April 15, 2020 will be adjourned and rescheduled in due course.

Update date: March 23, 2020

For stakeholders experiencing difficulty filing timely submissions with the Trade Marks Registry due to the COVID-19 situation, the Trade Marks Registrar announced that it will consider requests for extensions of time for submission of these documents (such as affidavits). These requests can be filed anytime from now up to one month after the date when the COVID-19 outbreak ceases to exist.

Update date: March 19, 2020

Indonesia Latest developments

On March 23, 2020, the Director General of Intellectual Property (“DGIP”) announced that the modified arrangements it previously announced on March 20, 2020 are extended until April 5, 2020, which include:

–         The Intellectual Property Service Counter located on the ground floor of the Directorate General of Intellectual Property building will be closed.

–         Intellectual property applicants can submit applications through e-filing.

–         DGIP officers continue to work from home, and certain floors of the building where DGIP is located have been sterilized and cannot be used until further notice.

Update date: March 23, 2020

The dispensations for any delays regarding the  completeness of documents for IP applications documents published on March 20, 2020 remain valid, as reaffirmed, and the period is extended to April 5, 2020 by DGIP’s announcement on March 27, 2020.

Update date: March 20, 2020

 

Macau On March 2, 2020, the Macau IP Office resumed normal operations, with all services online.  Previously, the Macau IP Office was ordered by local government to provide “limited services” only, but normal operations have since resumed.

Update date: March 2, 2020

 The Macau IP Office has resumed normal operations. Calculations of deadlines will follow normal rules.

Update date: March 2, 2020

 

Malaysia The local government announced a Movement Control Order from March 18, 2020 to March 31, 2020, which has since been extended to April 14, 2020, and the Intellectual Property Corporation of Malaysia (“MYIPO”) is to implement the below office guidelines:

–         No manual filings will be accepted during this period because the Customer Service Counters in MYIPO’s Headquarters and all branch offices are closed.

–         Only e-filings for new trade mark applications will be processed. The e-filings for matters related to Patent and Industrial Designs will be processed as usual.

–         Applications for Copyright Voluntary Notification are suspended and will resume on April 1, 2020.

–         Requests for Certified True Copies are suspended.

–         Hearing sessions for Trade Marks, Patent and Industrial Designs and all programs and awareness activities including seminars and workshops originally scheduled during this time will be rescheduled to a later date.

–         No physical documents will be accepted.

Update date: March 26, 2020

The below deadlines and key dates are affected by the announcement of the Movement Control Order:

–         All manual filings related to a Priority Date Claim that falls due within this period may be extended until April 1, 2020.

–         Deadlines on letters from the MYIPO (including appeals, opposition and payments) are extended until April 30, 2020.

–         Filings of International Trade Marks through the Madrid System are suspended until March 31, 2020 and shall resume on April 1, 2020.

–         Renewal deadlines for Patent and Industrial Designs are extended until April 1, 2020.

–         Trade Mark renewal deadlines that fall during the period of December 27, 2019 to March 27, 2020 are extended to April 30, 2020, and payment can be made starting April 1, 2020.

Update date: March 17, 2020

Mexico The Mexican Patent and Trademark Office remains operational and is accepting filings, but all terms and deadlines are suspended until April 20, 2020.

Update date: March 30, 2020

Deadlines are suspended until April 20, 2020.  The filing date for applications filed between March 24, 2020 and April 19, 2020 will be deemed April 20, 2020.

Update date: March 30, 2020

Philippines The Philippine Intellectual Property Office (“IPOPHIL”) has announced changes of operation during the imposition of an “enhanced community quarantine” (“ECQ”) for Metro Manila effective from March 15, 2020 to April 14, 2020, as below:

–         Only e-filing of new applications for patents, utility models, industrial designs and trademarks will be accepted. No manual filing will be accepted.

–         All hearings, including mediations, preliminary conferences, and trials originally scheduled during this period are suspended.

–         Access to mailboxes at the IPOPHIL is allowed during the quarantine period.

–         IPOPHIL will be unable to process requests for certified true copies for the period of March 16, 2020 to April 14, 2020.

–         All previously announced events at the IPOPHIL during this period will be rescheduled.

Other local updates include:

–         The Supreme Court has suspended all hearings in all courts during this period. All written submissions due during this time are automatically extended by 30 days counted from April 15, 2020.

–         As the entire island of Luzon (which encompasses Metro Manila) is under ECQ, everyone is ordered to stay home, public offices are closed, and all private businesses are ordered to close down operations until 12:00 am on April 13, 2020, according to the latest government announcement.

Update date: March 19, 2020

Due dates falling within March 15, 2020 to April 14, 2020 for annuities and maintenance fees, responses to office actions, declaration of use, renewals, motions for extensions, notices of opposition, answers to oppositions, cancellations, intellectual property violations, position papers, appeals, comments, and all other types of written submissions for the IPOPHIL are automatically extended for 30 calendar days counted from the existing due dates.

 

Update date: March 19, 2020

South Korea The Korean Intellectual Property Office (“KIPO”) announced the below measures on March 24, 2020 to support its applicants and users:

–         Deadline extension will be granted for applicants who have failed to comply with the statutory deadlines for submitting documents or paying fees to KIPO, for any reasons related to the coronavirus. In support of the application of deadline extension, the affected applicants should submit:

o   a relief measure request or a statement of payment;

o   an explanatory statement; and

o   evidentiary materials.

–          Use of KIPO’s online services and phone interviews is encouraged. Physical visits to KIPO officials should be avoided.

Update date: March 24, 2020

Taiwan The Taiwan Intellectual Property Office (“TIPO”) has announced the following measures for IP filers affected by the COVID-19 outbreak:

–         A petition to revive can be filed for trademark and patent applications that were considered abandoned or canceled/expired due to delays caused by the expanding effects of the COVID-19 outbreak. However, the petition has to be accompanied with relevant documents certifying the cause.

–         On March 12, 2020, the TIPO Office in Taipei began access control and all visitors to the premise must have their body temperature measured before accessing different parts of the building.

Update date: March 11, 2020

The TIPO has yet to announce any changes in relation to calculation of deadlines affected by the COVID-19 outbreak.

Update date: March 11, 2020

United Kingdom On March 27, 2020, the UK Intellectual Property Office (“UKIPO”) announced the below measures in view of the COVID-19 situation:

–         UKIPO buildings are closed.

–         UKIPO is currently unable to process paper forms, faxes and paper correspondence.

–         No documents can be filed by hand at UKIPO.

–         E-services and digital communications with UKIPO are preferred.

–         Email addresses are set up by UKIPO to receive faxed and posted documents. However, faxed documents will not be processed until further notice and posted paper documents will be given the date of receipt as a provisional filing date.

–         Users can expect delays in receiving postal versions of trade mark and design registration certificates. If users have an urgent business need, email copies can be provided on request.

–         There will be no hearings in person (at least until June 1, 2020, subject to continuous review); however, hearings via virtual means (such as telephone and Skype) will be continued. Parties to hearings will be contacted by UKIPO if there are changes to arrangements. For certain hearings where virtual means are not suitable, they will be postponed.

–         For trade mark matters, specifically:

o   for responses to examination, hearing reports and filing of evidence, users should use the electronic system’s “reply” button or email address provided in the examination report;

o   for new trade mark examination reports, there will be four months for response (instead of the current two months, removing the need for an extension);

o   publication of certain marks may be delayed because notifications to owners of UK earlier marks (and international marks with UK designation) are only transmitted by post. UKIPO is currently exploring alternatives to this;

–          For design matters, specifically:

o   unlike the treatment of trade mark matters, there will be no extension to the reply period for examination reports but extensions can be requested.

Update date: March 27, 2020

UKIPO has issued a Certificate of Interruption declaring March 24, 2020 and subsequent days to be “interrupted days,” until further notice is given by the authorities. Deadlines interrupted include any deadlines for patents, trade marks, designs, supplementary protection certificates and application for these rights.

Currently there is no announcement on when the interrupted days may end. That being said, the UKIPO will provide a minimum of 2 weeks’ notice before ending the interrupted days period and is set to review the situation on April 17, 2020 to decide whether it will become necessary to further extend the interruption days for another two weeks.

Regarding deadlines related to the Tribunals, any new deadlines set will be doubled (such as periods for filing evidence or submissions). Deadlines to appeal trade mark decisions can be extended.

Update date: March 27, 2020

United States While the United States Patent and Trademark Office (USPTO) remains open, on March 31, 2020, the USPTO announced certain deadlines may be eligible for an extension if a party cannot meet its obligations due to the COVID-19 outbreak.  Specific deadlines falling between March 27, 2020 and April 30, 2020 may be extended to 30 days from the initial due date if the ultimate filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Acceptable reasons for a delay in filing or payment include that the trademark owner or its attorney, or another person associated with the filing, was personally affected by the outbreak, including, without limitation, due to “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered” with the filing or payment.

Deadlines eligible for an extension include:

–         Response to an Office action, including a notice of appeal from a final refusal;

–         Statement of use or request for extension of time to file a statement of use;

–         Notice of opposition or request for extension of time to file an opposition;

–         Priority filing basis under 15 U.S.C. §§ 1126(d)(1) and 1141g;

–         Affidavit of use or excusable nonuse; and

–         Renewal application.

In addition, the USPTO has announced that:

–         All USPTO offices will be closed to the public until further notice. However, USPTO operations will continue without interruption.

–         All Trademark Trial and Appeal Board (TTAB) oral hearings and other similar in-person meetings with parties and stakeholders scheduled to take place at USPTO offices on or after March 13, 2020 will be conducted remotely by video or telephone, which the Office will forward with further instructions.

–        The requirement for an original handwritten signature for, inter alia, payments by credit cards where the payment is not being made via the USPTO’s e-filing system is waived.

Update date: March 31, 2020

 

 

The USPTO has yet to announce any automatic extensions or other changes regarding the calculation of deadlines affected by the COVID-19 outbreak.

 

Update date: March 25, 2020