2.4.20

Numerous intellectual property offices worldwide have responded to the COVID-19 pandemic by instituting time period extensions for various IP matters. In this post, we have summarized such responses from the following offices:

• the Canadian Intellectual Property Office (“CIPO”);
• the United States Patent and Trademark Office (“USPTO”);
• the European Union Intellectual Property Office (“EUIPO”);
• the European Patent Office (“EPO”);
• the United Kingdom Intellectual Property Office (“UKIPO”); and
• the World Intellectual Property Organization (“WIPO”).

Each day of this pandemic brings about new information and increased government responses. Accordingly, the responses from the abovementioned offices may also change.  We recommend you check with a registered IP practitioner before relying on any modified deadlines. 

How Extensions Usually Work

Typically, when the time period to complete an action ends on a day that the Patent or Trademarks Office is not open for business, the time period is automatically extended to the next day that the Office is open.  Such “prescribed days” generally include weekends and statutory holidays.  

CIPO Response to COVID-19

On March 16, CIPO announced that all days beginning on March 15, 2020 and ending on March 31, 2020 are now designated days.  On March 27, 2020, CIPO extended this end date to April 30, 2020.  As a result, clients with patent, trademark, industrial design or copyright deadlines such as renewals or responses or other application filings that fall on these dates will now have until May 1, 2020 to perform their required actions.  In light of the changing circumstances resulting from COVID-19, further extensions may occur.

Responses from the United States, the UK, Europe and WIPO

While the USPTO considers COVID-19 to be an “extraordinary event”, the office has refused to grant any waivers or extensions of dates or requirements set by statute.  Therefore, patent and trademark related time periods that pertain to, amongst others, applications, payment and requests for re-examinations are subject to their originally required timeframes. 

On the other hand, the EUIPO has extended all time limits expiring between March 9, 2020 and April 30, 2020, until May 1, 2020 and the EPO has extended all deadlines falling between March 15, 2020 and April 16, 2020 to April 17, 2020.  Similarly, the UKIPO has declared that March 24, and all subsequent days until further notice are now “interrupted days” meaning that deadlines for patents, supplementary protection certificates, trademarks and designs, and the applications for these rights, will be extended until the office announces the end of the interrupted days period. The UKIPO plans to provide a minimum of 2 weeks’ notice before ending the interrupted days period.

Lastly, WIPO has reminded that if, as a result of the pandemic, a time limit expires on the day the national office of a PCT applicant is closed, the time limit will expire on the first subsequent day on which that national office reopened.  This means that for Canadian PCT applicants who filed their PCT application through CIPO, any deadlines falling while CIPO is closed will be extended until CIPO is open. 

Further, if users of the Madrid trademark filing system fail to meet the required time limit in situations where access to mail and delivery services, as well as access to electronic communication may be impracticable (for example, in the case of a nation-wide lockdown), such users may be excused from this failure if they send communication within five days after regaining access to such mail or delivery services, or to electronic communication.  Regardless, WIPO must receive such communication no later than six months from the date on which the time limit in question expired. However, users must provide sufficient evidence of why WIPO should excuse the failure to meet the time periods in question, 

Limits of Extended Deadlines

Regardless of the above extensions, we emphasize that any extensions only apply to deadlines that already exist.  These extensions do not server to extend a filing date of an originating application.  Therefore, as always, we recommend that any application be filed as soon as possible.  Furthermore, due to the large number of deadlines that will be impacted by the current pandemic, we expect there to be a large backlog in the affected IP offices once they re-open.  We therefore also recommend meeting any current deadlines as they become due on their original deadline to avoid as much of this backlog as possible.

Announcements that impact the operation of IP office around the world are being made on an almost daily basis.  If you have any questions about the time limits and deadlines affecting any of your IP assets, please contact Richard Okimaw or Carolyn Walters.