[Updated – March 30, 2020] As local and national governments take measures to combat the spread of COVID-19, patent and trademark owners are facing potential difficulties with meeting prosecution and dispute deadlines.
The closure of offices, retail locations, and limited access to information create obstacles with the prosecution, maintenance, and enforcement of patents and marks. Moreover, the closure of administrative authorities has, in some cases, prevented the legalization of documents. To address these obstacles, some patent and trademark offices have extended deadlines or offered relief when requested.
We have updated our March 20, 2020 alert to include the status of deadlines and extensions for both patents and trademarks and have included additional jurisdictions. We will continue to update this chart, as appropriate.
North America
| Canada |
All deadlines falling between March 16, 2020-April 30, 2020 have been extended to May 1, 2020. For deadlines falling after April 1st, extensions of time are available upon request. |
| Mexico |
All deadlines falling between March 24, 2020-April 19, 2020 have been extended to April 20, 2020. |
| United States |
On March 27, 2020, the President signed the “Coronavirus Aid, Relief and Economic Security Act,” that provides temporary authority to the USPTO Director to ‘toll, waive, adjust, or modify, any timing deadline’” under the relevant U.S. patent and trademark statutes. This bill also gives the U.S. Register of Copyrights the authority to “toll, waive, adjust, or modify any timing provision” upon finding that the national emergency “will generally disrupt or suspend the ordinary functioning of the copyright system.” The authority for these actions ends 60 days following the stated end of the emergency. More details will follow regarding this authority and next steps by the USPTO and the U.S. Copyright Office.
Prior to the passage of the above legislation, the USPTO had issued guidance that in-person interviews, PTAB/TTAB oral hearings, and other in-person meetings are now to be conducted by telephone or video conference. Further, the following requirements have been waived for cases impacted by the COVID-19 outbreak:
- Petition fees to revive an abandoned application or reinstate a canceled/expired registration; and
- 37 CFR 1.4(e)(1) and (2) requiring an original handwritten signature in matters before the Office of Enrollment and Discipline and certain payments by credit card.
|
South America
| Argentina |
All deadlines falling between March 12, 2020-April 3, 2020 have been extended to April 6, 2020. |
| Brazil |
All deadlines falling between March 16, 2020-April 14, 2020 have been extended to April 15, 2020. Applicants are advised to use online services, if possible, to meet deadlines instead of relying on the extension. |
European Union and the United Kingdom
| Benelux - Belgium, Netherlands, and Luxembourg |
Public emergency restrictions are in effect in these countries. Any requests or procedures having deadlines falling on or after March 16, 2020 will not be withdrawn, if the deadlines are missed, as long as the public emergency restrictions remain in effect. Once the restrictions are lifted, any requests or proceedings whose time limits have lapsed in the interim (or whose time period for response is less than a month from the date the restrictions were lifted) will have one month for a response. These extensions also apply to opposition proceedings and payment deadlines. |
| EUIPO (Trademark) |
All deadlines in EUIPO proceedings falling between March 9, 2020-April 30, 2020 have been extended to May 1, 2020. |
| EPO (Patent) |
All “routine” deadlines falling between March 15, 2020-April 16, 2020 are extended to April 17, 2020. |
| Germany |
All deadlines set by the German Patent and Trademark Office are automatically extended to May 4, 2020. The extension does not apply to deadlines set by law such as priority or opposition deadlines. |
| France |
All patent, trademark and design deadlines, except trademark opposition deadlines, are extended to July 16, 2020. |
| Italy |
All patent, trademark and design deadlines falling between February 23, 2020-April 15, 2020 have been extended to April 16, 2020, except for mandatory deadlines in opposition proceedings and appeals. |
| Portugal |
All deadlines falling on or after March 12, 2020 are suspended until further notice. Signatures are not needed for online services and face-to-face services are unavailable. |
| Russia Patent Office and Eurasian Patent Office |
All patent deadlines falling between March 28, 2020-April 5, 2020 are extended to April 6, 2020. |
| Spain |
All deadlines are suspended until Spain’s national state of emergency is over. |
| United Kingdom |
All deadlines for patents, supplementary protection certificates, trademarks, and designs falling on or after March 24, 2020 have been extended until at least April 17, 2020, at which time the UKIPO will announce whether suspension of deadlines will continue or not. |
Asia and Oceania
| Australia |
Deadlines have not been extended, though requests for extensions of time or requests for waivers/refunds of extension fees will be considered when accompanied by a declaration that the COVID-19 outbreak interfered with responding on time. |
| China |
Deadlines have not been extended, but CNIPA will consider suspending specific deadlines if a party provides evidence that the deadline was/will be missed as a result of the COVID-19 outbreak. |
| Hong Kong |
Deadlines have not been extended. |
| India |
All deadlines administered by the Controller General of Patents, Designs and Trademarks falling between March 25, 2020-April 14, 2020 have been extended until the Office re-opens, which will be no earlier than April 15, 2020. All hearings scheduled on or before April 15, 2020 have been adjourned until further notice. Hearings after that date remain scheduled. |
| Japan |
Deadlines have not been extended. |
| Malaysia |
All deadlines falling between March 18, 2020-March 31, 2020 have been extended at least until April 1, 2020. Office action responses (including appeals, oppositions and payments) and trademark renewal deadlines falling during this period are extended to April 30, 2020. Patent and industrial design renewal deadlines are extended to April 1, 2020. The Malaysian IP Office is closed for paper submissions until April 1, 2020, though electronic filings may still be made. All hearings falling in the period have been postponed until further notice. |
| New Zealand |
Deadlines have not been extended, though extensions of time are being considered on a case-by-case basis. |
| Philippines |
All deadlines falling between March 16, 2020-April 14, 2020 have been extended to April 15, 2020. All hearings and mediations scheduled during this time have been suspended and will be rescheduled. |
| Singapore |
Deadlines have not been extended. |
| South Korea |
Deadlines have not been extended, but extensions of time will be granted to applicants for missed deadlines for any reason related to COVID-19. Affected applicants will be asked to submit a relief measure request or a statement of payment, together with an explanatory statement and evidentiary materials. |
Africa & Middle East
| Egypt |
All deadlines have been extended until April 8, 2020. The Office is closed for manual submissions, though online filings may still be made. |
| Israel |
Deadlines have not been extended, however, no cases will be permanently closed due to missing deadlines that fall before May 1, 2020. Applicants may submit a request for extension of time for any office-set missed deadlines during this period, and missed deadlines due to COVID-19 are likely to be considered as “a reasonable cause” and/or “circumstances over which the applicant and his representative had no control and which could not be prevented” when considering whether to grant the extension.
Deadlines set by legislation cannot be extended and include: fee payment deadlines, opposition submissions, requests for patent term extension, requests to reinstate a trademark or design, and requests to reconsider a design rejection.
The following activities are suspended until April 16, 2020: assignments/changes of name/changes of address; notices regarding formal deficiencies in national phase patent applications. |
| South Africa |
All deadlines have been extended to May 1, 2020. |
| Saudi Arabia |
Deadlines have not been extended. |
| UAE |
Deadlines have not been extended. |
