Since the publication of our client alert a few weeks ago, some patent offices have extended policies they had already enacted to protect patent applicants, while others have adopted new measures. This table below provides updates to our previous alert and also expands our coverage to include several additional patent offices. Despite these accommodations, it is advisable for applicants not to rely on such measures unless necessary, to avoid additional cost and uncertainty, and to proceed as if those measures are not in place. As always, the IP team at Baker McKenzie remains available to help you navigate a complex and constantly changing landscape, wherever you do business.

Patent Office

 

Extension of Deadlines Available Due to COVID-19 Outbreak 

 

Revival if Application Goes Abandoned Due to COVID-19 Outbreak

 

WIPO

(UPDATE)

 

Yes (see here)

"[T]he receiving Office of the International Bureau of WIPO has decided to delay the issuance of any such notifications (Form PCT/RO/117) [i.e., Notification That International Application Considered To Be Withdrawn] until May 31, 2020, and the International Bureau of WIPO urges all PCT receiving Offices to adopt the same practice."

 

Yes (see here)

"The International Bureau of WIPO, including in its role as receiving Office, will treat favorably any PCT Rule 82quater request [which excuses an applicant's inability to meet a time limit fixed  for performing an action before the receiving Office on account of extenuating circumstances] made citing COVID-19 related issues and not require evidence to be provided that the virus affected the locality in which the interested party resides.  The International Bureau of WIPO urges PCT Offices and Authorities to do likewise."

 
United States (USPTO) 

Yes (see here)

"The due date for any…reply to an Office notice or action issued during examination; issue fee; notice of appeal … that was due between, and inclusive of, both March 27, 2020 and April 30, 2020, will be extended 30 days from the initial date it was due, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

A delay in filing or payment is due to the COVID-19 outbreak … if a practitioner, applicant, patent owner … inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through 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 timely filing or payment."

The USPTO's notice does not address application filing deadlines, e.g., non-provisional "conversion" deadlines, continuation application deadlines, national stage filing deadlines, etc. 

Yes (see here)

"For patent applicants or patent owners who 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, …, the USPTO will waive the [revival] petition fee in 37 CFR 1.17(m) when the patent applicant or patent owner files the reply with a petition under 37 CFR 1.137(a). See 35 U.S.C. § 41(a)(7)." 
Canada (CIPO) 

Yes (see here)

"On account of the continuing unforeseen disruption caused by the COVID-19 outbreak, and being satisfied that it is in the public interest to do so, the Commissioner of Patents… the Registrar of Trademarks… and the Minister … have designated … all days in the period of time beginning on April 1, 2020 and ending on April 30, 2020. This designation is in addition to the previous designation of the days in the period beginning March 16, 2020 and ending March 31, 2020 [extending time limits to April 1, 2020].

The result of designating these days is that if a time period fixed under the Patent Act, Trademarks Act and Industrial Design Act in respect of any business before the Canadian Intellectual Property Office for doing anything ends on any of these designated days, that time period is extended to the next day that is not either a designated day or a day that has been prescribed under section 5 of the Patent Rules, section 15 of the Trademarks Regulations and section 36 of the Industrial Design Regulations, which means that all such time limits ending on any of these designated days will now be extended until May 1, 2020." 
N/A 
Mexico (UPDATE) 

Yes (see here)

On March 23, 2020, the Mexican Institute of Industrial Property (IMPI) published in its Gazette an official communication informing that deadlines are suspended and there will be no legal terms in the IMPI from March 24 to April 19, 2020, regardless of the filing means (either in hard copy or e-filing).  Likewise, on March 27, 2020, IMPI published a second official communication, announcing its temporary shutdown from March 27 to April 19, 2020.

Any type of diligence that is necessary to control the mitigation of the effects of the pandemic, or, where appropriate, lift provisional measures imposed within an infringement procedure, are exempt from the suspension of terms.

Finally, on April 16, IMPI issued two official communications informing that in compliance with what was ordered by the Ministry of Health, IMPI will maintain the suspension of work and deadlines indicated in the communications published on March 23 and 27 respectively, until April 30, 2020. Depending on the development of the pandemic, this period may be further extended. Additionally, starting on April 16, it is possible to file patent applications and related motions online, however, their filing date will be the day IMPI restarts activities.

 
N/A  
Brazil (UPDATE) 

Yes (see here)

The temporary suspension of all deadlines (originally covering the time period from March 16, 2020 to April 14, 2020) has been automatically extended until April 30, 2020.

 
N/A 

Europe (EPO)

(UPDATE)

 

Yes

"The due date for renewal fees falling due on March 31, 2020 is deferred to April 20, 2020."

"Periods expiring on or after March 15, 2020 are extended for all parties and their representatives to May 4, 2020. In accordance with Article 150(2) EPC this applies also for international applications under the PCT. The above period may be further extended by the publication of another notice if the dislocation extends beyond the aforementioned date." 

Yes

"Pursuant to Rule 134(5) EPC, any document received late will be deemed to have been received in due time if the person concerned offers evidence that on any of the ten days preceding the day of expiry of a period, it was not possible to observe the time limit due to this exceptional occurrence and that the mailing or the transmission was effected at the latest on the fifth day after the end of the disruption."

"Without prejudice to paragraph 2 of this Notice, applicants are referred to Rule 82quater.1 PCT as regards time limits and conditions applicable under the PCT. In particular, where the interested party offers satisfactory evidence that a time limit under the PCT was not met due to natural calamity or other like reason in the locality where the interested party resides, has his place of business or is staying, and that the relevant action was taken as soon as reasonably possible (and no later than six months after expiry of the time limit in question), the delay in meeting the time limit is excused. This provision applies to international applications pending in the international phase, but not to the priority period." 
United Kingdom (UPDATE) 

Yes (see here)

"Due to the unprecedented disruption…we have decided to declare March 24, and subsequent days until further notice, interrupted days.

This means that any deadlines for patents, supplementary protection certificates…and applications for these rights, which fall on an interrupted day will be extended until the IPO notifies the end of the interrupted days period. To support rights holders, businesses and IP professionals plan ahead we will provide a minimum of 2 weeks’ notice before ending the interrupted days period.

We reviewed the situation on 17 April and, due to continuation of the current government restrictions to combat the Coronavirus outbreak and disruption to our customers normal operating, we have decided to continue with the period of interruption.

This will be reviewed again on 7 May when we will either continue with the period of interruption or announce that the period will end."

 
 N/A
Germany (UPDATE) 

Yes (see here)

“With regard to all pending IP procedures, time limits granted by the German Patent and Trade Mark Office are extended, [e.g., . deadlines set by an examiner to answer to a communication], and no decision will be made because of the expiration of any time limit, until May 4, 2020.

The German Patent and Trade Mark Office is not authorized to extend time limits provided for by law [, e.g., deadlines for filing an appeal or deadlines relating to payments]. In this respect, reference is made to the option of re-establishment of rights (see also Notice of the German Patent and Trade Mark Office of March 3, 2020).” 

Yes (see here)

 

"The German Patent and Trade Mark Office cannot extend time limits specified by law. However, the German Patent and Trade Mark Office draws attention to the option of re-establishment of rights. Any person who, owing to the current situation, has not observed a time limit imposed by law without any fault on his part can subsequently have their procedures re-established upon request. They will then be in the same position as if they had observed the time limit. The unit in charge will check in the individual case whether the conditions are met." 
Gulf Cooperation Council 

Yes (see here)

"Extension of time-limits connecting to patent applications set out in the GCC patent law and its implementing bylaw, which expire during the work suspension period, and such extension is deemed void on the first working day following the work suspension period." 
N/A 

Eurasia (EAPO)

(UPDATE) 

Yes (see here)

“Regarding the deadlines for the applicants, patent owners or their representatives to carry out procedural actions in respect of Eurasian applications or Eurasian patents, the last day of which falls on the dates from March 28 to May 5, 2020 inclusive, the day of the end of such terms in accordance with the fourth paragraph of the rule 38 (3) of the Patent Instructions under the Eurasian Patent Convention (hereinafter referred to as the Patent Instructions) shall be the next working day, i.e. May 6, 2020." 

Yes (see here)

 

"This rule will apply to all procedural terms provided by the Eurasian Patent Convention, Patent Instructions, the Regulation on Fees of the Eurasian Patent Organization and the EAPO normative legal acts, including deadlines for payment of fees, including fees for maintaining a Eurasian patent in force, terms for entry international applications to the EAPO regional stage, deadlines for submitting a request for substantive examination, the deadlines for providing answers to Office Actions, the deadlines for submission of requests, including requests for restoration of rights in respect of a Eurasian application or Eurasian patent, requests for continuation of proceedings and the request for term extensions." 

India

(UPDATE) 

Yes (see herehere and here)

Deadlines falling between March 25 and May 3, 2020 for carrying out activities or payment of fees have been extended to at least May 4, 2020.

“[A]ll the Offices under administrative control of O/o CGPDTM will remain close for a period of 21 days with effect from March 25, 2020.

In view the above, due dates falling due during the above said period in the matter of timelines/periods prescribed under the IP Acts and Rules administered by the O/o CGPDTM with respect to completion of various acts/proceedings, filing of any reply/document, payment of fees, etc. regarding any IP applications filed with the offices under the administrative control of the O/o CGPDTM, for computation of time, shall be the date of next day on which the offices re-open as per Section 10 of the General Clauses Act, 1897.”

"[A]ll the Offices under administrative control of O/o CGPDTM shall not be physically accessible to public (in person) for a further period up to May 3, 2020 with effect from April 15, 2020. In view of the above, the relaxation notified in the Public Notice shall also be extended accordingly." 
N/A 
China (CNIPA)  N/A   

Yes (see here)

"If a party delays the time limit stipulated in the Patent Law and its Implementing Rules or the time limit specified by the State Intellectual Property Office due to epidemic-related reasons, resulting in the loss of its rights, the provisions of Article 6.1, of the Implementing Rules of the Patent Law shall apply. The parties may request the restoration of their rights within 2 months from the date of removal of the obstacle and at the latest within 2 years from the date of expiry of the period. If you request to restore the right, you do not need to pay the restoration right request fee, but you need to submit a request for restoration of the right, explain the reason, attach the corresponding certification materials, and go through the corresponding formalities before the loss of rights." 
Taiwan (UPDATE)  N/A  

Yes (see here)

"Any patent or trademark applicant who fails to comply within a statutory time period due to the COVID-19 may file a request for reinstatement accompanied by the documents of proof. In principle, such cases will be determined leniently on a case-by-case basis." 
Hong Kong (UPDATE) 

Yes (see here)

“Under: (i) rule 100A(2) of the Patents (General) Rules; and (ii) rule 73A(2) of the Registered Designs Rules, and (iii) rule 96(2) of the Trade Marks Rules where any period of time specified in the Patents Ordinance (Chapter 514), Registered Designs Ordinance (Chapter 522), Trade Marks Ordinance (Chapter 559), Patents (General) Rules (Chapter 514 sub. leg.), Registered Designs Rules (Chapter 522 sub. leg.) or Trade Marks Rules (Chapter 559 sub. leg.), or as extended under those rules, for the filing of any document or other thing with the Registrar expires on a day notified under the Rules, the period shall be extended to the first day next following that is not so notified (not being a day that is not a business day of the Registries).

Accordingly, if the time for filing any document or other thing with the Registrar expires on April, 20, 21, 22, 23 or 24, 2020, the period shall be extended to April 27, 2020 [earlier notices had extended deadlines which fell in previous weeks].” 
N/A 
Korea 

Yes (see here and here)

"Joining a nationwide effort to limit the spread and impact of the COVID-19, the Korean Intellectual Property Office (KIPO) announced measures to support its applicants and users in South Korea affected by COVID-19.

According to the announcement, the measures include a grant of deadline extension for applicants who have failed to comply with the statutory time limits for submitting documents or paying fees to KIPO, for any reasons relating to the coronavirus. Affected applicants will be asked to submit a relief measure request or a statement of payment, together with an explanatory statement and evidentiary materials."

"Official Notice of ex-officio extension for designated periods due to the effects of the COVID-19 … As such, if the designated periods, enumerated in the appendix, end on a date between March 31, 2020 – April 29, 2020, the deadline of such periods according to Article 15 (2) of the Patent Act, Article 3 of the Utility Model Act (Article 15(2) of the Patent Act shall apply mutatis mutandis), Article 17(2) of the Design Protection Act and Article 17(2) of the Trademark Act will be ex-officio extended until April 30, 2020." 
N/A 
Singapore (UPDATE) 

Yes (see here)

"We will extend all filing deadlines to May 8, 2020, for those required to respond between April 7, 2020 to May 7, 2020 inclusive. This extended deadline also applies to cases under our Hearings and Mediation Department." 
N/A 

Japan

(UPDATE) 

Yes (see here)

If you are not able to carry out procedures for applications or trials/appeals pending at the JPO within the designated time limits due to the COVID-19 coronavirus, please attach a document explaining the circumstances that prevented you from carrying out the procedures. By doing so, the procedures will be considered to be valid even after the designated time limits expired if it is found to be necessary.

If you are unable to carry out certain procedures due to the COVID-19 coronavirus within the procedural periods specified by laws or governmental and ministerial ordinances, you can carry out the procedures only within the relief period. In conducting the procedures, please attach a document explaining the circumstances that prevented you from conducting the procedures due to the COVID-19 coronavirus. When the JPO recognizes the necessity, the procedures will be considered to be valid.

Please carry out procedures within 14 days from the time it becomes possible (this is within two months for overseas residents; regarding (7), this is within one month for overseas residents)…Please note, however, that this is limited to within six months after the lapse of the prescribed period. 
N/A 
Vietnam (UPDATE) 

Yes (see here)

"All procedures for registration of industrial property rights which are due in the period from March 30, 2020 to April 30, 2020, namely requests for claiming priority rights, provision of supplement documents, responses to decisions/notifications of the IP Viet Nam, requests for annuities/renewal of the validity of protection titles, payment of all types of fees and charges, lodgement of appeals/oppositions, shall be automatically extended to May 30, 2020.

In other cases, applicants who are still suffering from impacts of COVID-19 in perusing their applications for establishment of the industrial property rights with IP Viet Nam, can request for the application of regulations on objective obstacles, force majeure provided for in Points 9.4, 9.5 of Circular No.01/2007/TT-BKHCN amended by Circular No.16/2016/TT-BKHCN." 
N/A
Australia (IP Australia)

 

Yes (see here)

"Where customers are having difficulties meeting time frames because of the COVID-19 outbreak an extension of time may be available. Where we have discretion we will seek to apply it."

 

N/A 

Philippines

(UPDATE)

 

Yes (see here)

"Deadlines for all papers, pleadings, documents, and payments thereof falling due from March 16, 2020 to May 15, 2020, are deemed extended for a period of sixty (60) calendar days from the due date."

 

 

N/A 
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