As we move through the COVID-19 pandemic and many countries start to show signs of emerging out the other side, how are Patent Offices around the world modifying their approach to dealing with the hardship that patent applicants are experiencing in these difficult times?
Many Patent Offices worldwide have implemented temporary extensions of time to meet the requirements of satisfying deadlines. The measures currently in place on a selection of Patent Offices in the jurisdictions of Australia, New Zealand, and several of our major trading partners are reported below.
Australian Patent Office
- Extensions of time of up to 3 months are still available to respond to a Patent Office deadline due to COVID-19 related misadventure, including for e.g.:
– Filing a request for examination
– Submission of evidence in opposition proceedings
– Payment of renewal fees
– Applications for extension of term of a patent
– All deadlines in matters before the courts or the Administrative Appeals Tribunal on application to the relevant body.
- A declaration is not necessary when the disruption is identified as being COVID-19-related –– No fees are payable for the extension request.
- Streamlined extensions are available for many (but not all) patents, trade marks and designs deadlines.
New Zealand Patent Office (IPONZ)
- If circumstances related to COVID-19 have affected you or are affecting your ability to respond by a deadline, you may request IPONZ for an extension of time to meet that deadline.
- Deadlines will be extended by 3 months for COVID-19 related disruptions.
- IPONZ will assess extension of time requests on a case-by-case basis.
Canadian Patent Office
- Initially, all deadlines falling between 16 March 2020 and 31 March 2020 were extended to 1 April 2020.
- On 26 March 2020, the Canadian Patent Office issued a notice informing that deadlines falling between 16 March 2020 and 12 June 2020 would be extended until 15 June 2020.
- If additional time beyond 15 June 2020 is required, a further extension of some, but not all, deadlines may be requested under the Canadian Patent Rules.
- For such additional extension requests, COVID-19 related delays will be considered to be exceptional circumstances when accompanied by a simple justification of why the extension of time is necessary.
European Patent Office (EPO)
- The EPO initially extended all deadlines expiring on or after 15 March 2020 to 17 April 2020 which was then further extended to 2 June 2020.
- EPO special COVID-19 related measures relating to extensions of deadlines have since ended.
- If an extension is still required, a request for such can be submitted under the normal EPO regulations.
- All oral proceedings in examination and opposition proceedings scheduled until 14 September 2020 are postponed until further notice unless they have already been confirmed to take place by means of videoconferencing.
United States Patent Office (USPTO)
- The USPTO is providing extension of patent and trade mark deadlines due to disruptions related to COVID-19. These extensions are governed by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act)
- For Small and Micro entities, deadlines up to 1 June 2020 are automatically extended to 1 July 2020 provided that the documents filed to compete a deadline action are accompanied by a statement that the delay in filing or payment was due to COVID-19.
- For large entities, after 31 May 2020, relief will be available to those who need it on a case-by-case basis.
- The USPTO will also waive fees for filing a request for a revival of a patent application which became abandoned on or before 30 June 2020.
Chinese Patent Office
- Where a deadline before the Chinese Patent Office is missed, the Applicant is able to request restoration of the application under normal Chinese patent regulations.
- The request for restoration must be filed either within 2 months of removal of the obstacle which caused the delay or within 2 years of the deadline which was missed, whichever occurs first.
- The fees to request restoration of the application are waived, however, normal evidentiary and formalities requirements must be filed with the restoration request.
- The entire country of India was in lockdown between 25 March 2020 to 31 May 2020. Some regions have since relaxed the lockdown requirements, however, strict restrictions remain in force in regions which have a large number of COVID-19 cases.
- Initially, all deadlines falling between 15 March to 17 May 2020, were automatically extended to 1 June 2020.
- If an extension of time beyond 1 June 2020 is required, or for a deadline which fell due after 17 May 2020, a request for extension of time can be filed under the normal Indian patent regulations.
- Requests for extension of time need to be filed no later than one month from when the obstacle for meeting the missed deadline is removed.
- There is no waiver of official fees for requesting an extension of time.
Patent Offices in other countries are also implementing special provisions to assist Applicants in coping with disruptions due to the COVID-19 pandemic. A short summary of the measures taken by individual offices is provided on the WIPO website.
If you have any specific concerns regarding the possibility or actual missing of deadlines as a result of disruption due to the pandemic, please get in contact with us to asses your particular circumstances and the remedies available with the relevant patent office(s).