On March 11, World Health Organization Director-General Tedros Adhanom declared that the COVID-19 outbreak "can be characterized as a pandemic," cautioning that the WHO has "rung the alarm bell loud and clear." At the time of the announcement, the WHO noted that there were 118,000 cases reported globally; in its situation report for April 12, the WHO indicates that to date there have been 1,696,588 cases globally. The WHO's declaration last month -- and global developments since then -- raise the question of how the pandemic has been affecting the patent community.
We have been reporting (see links below) on the impact of the COVID-19 pandemic on the U.S. Patent and Trademark Office, World Intellectual Property Organization, European Patent Office, IP Australia, Intellectual Property Office of New Zealand (IPONZ), Brazilian Patent and Trademark Office (INPI), Canadian Intellectual Property Office (CIPO), Mexican Institute of Industrial Property (IMPI), National Office of Intellectual Property (ONAPI) in the Dominican Republic, Intellectual Property India, National Intellectual Property Office (NIPO) in Sri Lanka, Israel Patent Office, Intellectual Property Office of Vietnam (NOIP), and Directorate General of Intellectual Property (DGIP) in Indonesia, as well as U.S. Federal courts, including, in particular, the Supreme Court and Federal Circuit. Today we present a summary of procedural changes and deadline extensions being offered by the above patent offices:
IP Australia
• If circumstances related to the COVID-19 pandemic have affected or are affecting a business' ability to respond by a deadline, an extension of time can be requested (in the normal way) and will be assessed on a case-by-case basis.
Instituto Nacional da Propriedade Industrial (INPI) -- Brazil
• Cancelled all in-person meetings until further notice.
• Postponed deadlines until April 14, 2020.
Canadian Intellectual Property Office (CIPO)
• Hearings of the Patent Appeal Board and the Trademarks Opposition Board will take place by telephone and/or teleconference until at least April 30, 2020.
• Regional offices in Toronto, Vancouver, Edmonton, and Montréal will not be receiving CIPO correspondence until further notice.
• Initially extended all deadlines falling between March 16 and March 31 to April 1, and then further extended all deadlines to May 1, 2020.
Oficina Nacional de la Propiedad Industrial (ONAPI) -- Dominican Republic
• Has not provided any deadline extensions as result of COVID-19 pandemic [as far as Patent Docs is aware].
European Patent Office (EPO)
• Has extended periods expiring on or after the March 15, 2020 for all parties and their representatives to April 17, 2020.
Intellectual Property India
• Has indicated that no filings will be possible until India's nationwide lockdown has been lifted, and that all deadlines will be automatically extended or extendable with petitions.
• Cases with deadlines on or before April 14, 2020 have been assigned a new deadline of April 15, 2020.
Directorate General of Intellectual Property (DGIP) -- Indonesia
• Has provided an extension of time for the submission of any formality documents and payment of any annuity fees that fall due between March 23 and April 21, 2020, when the DGIP is scheduled to resume service.
Israel Patent Office
• Certain services (recording assignments, licensing new practitioners, notices of formal defects in PCT national stage applications, and daily notices of outgoing correspondence) will be delayed at least until after Passover (April 15, 2020).
• In-person meetings and proceedings before the ILPTO, including hearings in adjudicatory proceedings, have been suspended until May 1, 2020.
• Deadlines for filing new applications, responses to office actions, and the like will not be held in abeyance.
• Applicants or other parties in proceedings before the ILPTO who are unable to timely make submissions as a result of coronavirus-related circumstances may request extensions or reinstatement based on those circumstances, which will be taken into account when deciding whether or not to grant the extension or reinstatement.
• Caps on the number of extensions have been temporarily waived.
• Deadlines for PCT national phase entry, for payment of renewal fees, for filing for patent term extensions remain in place.
• Deadline for filing for PTE remains 90 days from the date of approval by the Israel Ministry of Health.
Instituto Mexicano de la Propiedad Industrial (IMPI)
• Has suspended all activities from March 27 to April 19, 2020, precluding ability to file motions until April 20, 2020.
• Still possible to pre-file applications online, but such applications will have to be digitally signed on April 20, at which time an application number will be assigned by the IMPI.
Intellectual Property Office of New Zealand (IPONZ)
• If circumstances related to the COVID-19 pandemic have affected or are affecting a business' ability to respond by a deadline, an extension of time can be requested (in the normal way) and will be assessed on a case-by-case basis.
National Intellectual Property Office (NIPO) -- Sri Lanka
• Government of Sri Lanka declared a public holiday from March 13-19, 2020 for all non-essential services, and declared the period from March 20-27, 2020 as a period to work from home or remotely for all public sector and private sector personnel.
United States Patent and Trademark Office (USPTO)
• Has waived the petition fee pursuant to 37 C.F.R. § 1.17(m) when patent applicant or patent owner files a reply with a petition under 37 CFR 1.137(a) in those instances when patent applicants or patent owners were unable to timely reply to an Office communication due to the effects of the coronavirus outbreak, which resulted in the application being held abandoned or the reexamination prosecution terminated or limited.
• Has waived requirements for submitting an original handwritten signature personally signed in permanent dark ink or its equivalent for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.
• Pursuant to Coronavirus Aid, Relief, and Economic Security Act (CARES Act), will extend certain deadlines occurring between March 27, 2020 and April 30, 2020 by 30 days from the initial date on which those patent-related documents or fees were due, "provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak."
Nation Office of Intellectual Property (NOIP) -- Vietnam
• Has limited in-person interviews with IP Vietnam's examiners.
• Has extended deadlines falling between March 30, 2020 and April 30, 2020 for establishing IP rights for all IP matters (i.e., claiming priority, submitting documents, responding to Decisions/Notifications from IP Vietnam, paying annuity and renewal fees, making payment of relevant fees, filing appeals) to May 30, 2020.
World Intellectual Property Organization (WIPO)
• Has suspended the transmittal of PCT documents (e.g., PCT Forms, letters) on paper.
• The International Bureau will be transmitting documents only via e-mail until further notice.
Patent Docs will continue to monitor and report on patent-related developments related to the COVID-19 pandemic. In addition, we encourage our readers to let us know about any changes or updates to the information provided above, as well as any developments related to the COVID-19 pandemic at other patent offices.
