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Impact of COVID-19 on Patent Deadlines

With courthouse closures and law firms quick to implement remote working policies, the COVID-19 pandemic is having an impact beyond the realm of public health. As the virus continues to spread, IP offices are adopting measures to accommodate missed deadlines relating to COVID-19. We caution that the information below is a snapshot only – the situation is extremely fluid and we expect that additional extensions of time or special considerations for the hardship that the current situation has caused are likely to be introduced in the days and weeks ahead.

Canada – Extend Deadlines

On March 17th, 2020, the Canadian Intellectual Property Office (CIPO) announced that in response to the COVID-19 pandemic, deadlines falling between Mach 16th and March 31st are extended to April 1st 2020. Such deadlines include deadlines for responding to Examiner’s Reports, renewal deadlines, and any other deadline that is fixed under the Patent Act. On March 27th, 2020, the CIPO  announced that in addition to the previous extension, deadlines falling between April 1st and April 30th, 2020 will now be extended to May 1st, 2020. If the circumstances surrounding COVID-19 continue, the CIPO may continue to provide further extensions of time.

Care should be taken in relying on the extension.  For example, for new Patent Cooperation Treaty (PCT filings) where the CIPO is the receiving office, the Regulations under the PCT should be consulted.  There can also be potentially unintended consequences of relying on any extension of the deadline for a new convention filing, as while notionally the deadline to file the application in Canada and claim priority may be extended, there may be no clear extension of any limitation period, for example the one-year period for public disclosure by an inventor.  Thus, for new convention filings and PCT filings (where the CIPO is the Receiving Office), the appropriateness of relying on the extension should be carefully and specifically considered, and this should only be done as a last resort.

The CIPO also says that it remains open and in operation, although it warns that clients should expect significant delays in all CIPO services.

US – Waive Revival Fees

On March 16th, 2020, the US Patent and Trademark Office (USPTO) said that it considers the effects of the COVID-19 outbreak to be an “extraordinary situation”. To provide relief to patent applicants and patentees who missed deadlines for responding to communications from the USPTO due to the effects of the COVID-19 outbreak, the USPTO has decided to exercise its authority to waive revival petition fees. However, the requirement that the entire period of the delay between the date the deadline was missed and the date the petition was filed must be unintentional continues to apply, so the necessary action should be taken as soon as it is possible to do so.

The fee waiver does not apply to missed statutory filing deadlines. Additionally, the USPTO cautions that it is not extending deadlines during the COVID-19 pandemic.

Europe – Push Back Deadlines

The European Patent Office (EPO) advised that it will push back all deadlines expiring on or after March 15th to April 17th, 2020. If the disruption continues after April 17th, the EPO may provide further extensions and remedies.

China – Suspend Deadlines

The Chinese National Intellectual Property Administration (CNIPA) views COVID-19 as force majeure in Article 6 of the Implementation Rules of Patent Law. The CNIPA’s Notice No. 350 says that if a party misses a deadline due to COVID-19 related obstacles, the party can request restoration of their rights within 2 months after the day when the COVID-19 related obstacles are resolved. Such a request must be filed within 2 years from the deadline.

In an explanation for Notice No. 350, the CNIPA lists some COVID-19 related obstacles that include infection or self-isolation. Additionally, the CNIPA cautions that not all deadlines are suspended. For example, loss of rights relating to novelty grace period and priority period cannot be restored.

More Temporary IP Deadline Changes

We are in an unprecedented territory – the spread of COVID-19 has prompted many IP offices, in addition to the above-mentioned four, to be flexible and pragmatic to protect patent rights. For example:

While most IP offices continue their electronic services and can receive submissions and new applications electronically so that deadlines should continue to be met wherever possible, in the unfortunate event that a patent owner is not able to take a necessary step in time, the available extensions of time and procedural remedies in the country concerned should be carefully considered.  Most offices are trying to offer relief against the serious loss of rights that could be caused due to the inability to meet deadlines in the patent process.


*This article was originally published by The Lawyer’s Daily (www.thelawyersdaily.ca), part of LexisNexis Canada Inc.


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