[Written on 19 March 2020].

Various intellectual property offices have announced support for applicants in light of the ongoing COVID-19 outbreak.

Generally speaking the authorities have recognised the outbreak as an exceptional event and have triggered provisions that some certain deadlines to be extended.

Of course, this law-related post has an even stronger than usual disclaimer that this is a general comment and this post does not provide counsel about any particular situation.  There are some short summaries of the situation at key IP offices below.

It should be noted however that IP protection only starts one an application is lodged.

It is still vital to secure an early filing date to ensure your protection starts as early as possible.

Another critical deadline that needs careful attention is what we in the profession call the “Convention deadline“: this is the legal deadline for making an IP filing in one country that makes a “priority claim” to backdate the protection to an earlier filing date in a different country. The Convention deadline is 12 months from the first patent filing, or 6 months from the first trade mark or registered design filing. This deadline is of a different legal character to other procedural deadlines, so we recommend making the assumption that

The Convention deadline cannot be extended.

So utmost care should be taken if relying on any extensions and one should be wary of making any general assumptions.

This post is not intended to act as a rolling news feed, but some short summaries and useful links are detailed below. We act for clients globally and would be happy to give some further advice, just get in touch – via mail[at]scintilla-ip[.]com.

European Patent Office (European Patents):

All time limits expiring on or after 15 March 2020 are extended until 17 April 2020. This might be extended in the event of longer disruption.

General status page: https://www.epo.org/news-issues/covid-19.html

EUIPO (EU Trade Marks and Registered Designs):

All time limits expiring between 9 March 2020 and 30 April 2020 inclusive are extended until 1 May 2020.

UKIPO (UK Patents, Trade Marks, Registered Designs):

The UKIPO have made some general statements saying “we are willing to support affected customers using the discretionary powers available to us” and; “The IPO is willing to consider requests for extensions of time as favourably as possible on a case-by-case basis.”

We expect the UKIPO to take a supportive approach to applicants, although it seems likely that some kind of statement or reasons must be given, and evidence of disruption might be required in the case of  very long extensions or exceptional circumstances.

WIPO (International Patent Applications, International Trade Marks and Designs)

All we are aware of is a general status page confirming that WIPO is still open and staff are working remotely.

However, in practice, there are not many deadlines that need to be observed before WIPO – if we take for example the International Patent Application process, most deadlines are observed before the competent national IP offices who play different roles in the PCT system – for example as a Receiving Office, International Preliminary Examiniation Authority, Designated Office or Elected Office.

So, the vast majority of deadlines which must be observed as part of the PCT process (and for other WIPO procedures) are in fact governed by various local IP offices and therefore subject to their own provisions about extensions as mentioned above.

Again as mentioned above the precise details can be quite intricate so you would need to contact us for advice if you wanted guidance for any specific situation.

 

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