Meeting important patent deadlines in view of the Covid-19 outbreak

Covid 19 virus and its impact on IP services around the world

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  • Naleesha Niranjan - Associate, Patent & Trade Mark Attorney
  • Associate, Patent & Trade Mark Attorney

We understand that this is a time of great uncertainty. If you have any foreign applications filed in or if you have a national phase filing deadline or other IP related deadlines in any countries affected by the Covid-19 outbreak, we encourage you to contact a patent attorney at Baxter IP.

Australia

IP Australia has announced that they are currently open for business and working remotely.

In line with physical distancing rules, any oral hearings such as opposition hearings will be conducted by video conference, phone or written submissions.

Extensions of time are available for those deadlines for which an extension of time is normally available. To get an extension of time, a formal declaration will be required setting out how the Covid-19 outbreak interfered with responding in time.

There is no extension currently available for establishing an initial filing date by, for example, by filing a provisional application.

This means that the 12-month grace period for establishing a filing date after a public disclosure cannot be extended.

New Zealand

The New Zealand patent office (IPONZ) has indicated that they are operating and that any extensions of time requests will be assessed on a case-by-case basis. Any request will require sufficient detail or evidence as specified in relevant Acts and regulations.

United States

The USPTO considers the Covid-19 outbreak to be an “extraordinary situation” within the meaning of 37 CPR 1.183 and 37 CPR 2.146 for affected patent and trademark applicants, patentees, re-examination parties, and trademark owners.

The USPTO will not automatically grant waivers or extensions of dates or requirements set by statute.

However, in a notice issued on 16 March 2020, the USPTO announced that reliefs may be available to revive an application for example if a reply is unable to filed to an office communication in time due to the effects of Covid-19, and this resulted in abandonment of the patent application or termination or limitation of the re-examination period.

The associated fee may be waived under certain conditions and it is important to contact your patent attorney if you believe an extension of time will be required for you to act.

In the same notice, the USPTO mentioned that the following patent-related time periods are not extendable by petition:

  • the period to file a non-provisional patent application claiming the benefit of a prior filed foreign application;
  • the period during which a non-provisional application claiming the benefit of a prior filed provisional application must be filed in order to obtain benefit of the provisional application’s filing date;
  • the requirement to file a child application prior to issuance of the parent application;
  • the three-month time period to pay the issue fee for an issued patent; and
  • the two-month time period from the date of patentee service, for a requester to file, in an ex parte re-examination, a reply to a statement filed by the patentee.

Europe

The EPO announced the extension of certain “periods” of time, including the period to respond to search reports, and the period to enter the European national stage. Relevant periods of time expiring on or after March 15, 2020 are extended until April 17, 2020 for all relevant parties and their representatives.

Periods expiring on or after the date of publication of the notice [15 March 2020] are extended for all parties and their representatives to 17 April 2020.

However, the following deadlines may not be extended:

  • Paying a renewal fee for a European patent application
  • Filing a divisional application
  • Filing a patent application not later than the date of a public disclosure (no creation of deadline)
  • Filing of written submissions ahead of scheduled oral proceedings
  • Oral proceedings
  • PCT applications where EPO is the receiving office

Please contact your patent attorney if you believe an extension of time will be required on any one of the above.

China

CNIPA has indicated that offices are currently back to normal except for the Hubei CNIPA centre in Wuhan.

A restoration of IP right may be available if a deadline is not met due to outbreak and evidence can be provided of a negative impact on the ability to meet a deadline. Examples of this may include local government declarations, announcements of emergency rules evidence showing the applicant or agent has been quarantined or diagnosed with Covid-19.


If Covid-19 is affecting your business and you have patent deadlines coming up in any of the above countries or countries not mentioned above, please contact your patent attorney at Baxter IP for advice tailored to your specific circumstances.