Current Affairs

Intellectual Property Office Updates Regarding the COVID-19 Pandemic

March 26 2020 Update

South Africa’s Companies and Intellectual Property Commission (CIPC) ends financial year: it is anticipated that electronic services will resume April 1st 2020.

Indian IP Office to remain closed for 21 days: In effect from March 25th onwards, adding “In view the above, the due dates of timelines/periods prescribed under different IP acts and rules administered by the CGPDTM with respect to completion of various acts/activities, filing of any reply/document, payment of fees, etc. regarding any IP applications filed with the offices under the administrative control of the CGPDTM shall be the date on which the offices will re-open.”

The South Korean Intellectual Property Office (KIPO) granting automatic extensions: Applicants whose applications are currently pending at the registry will be granted an automatic extension for certain actions (such as submission of written opinion) until April 30th 2020. This extension is automatic.

The Russian Patent Office closure and deadline postponement: The registry is closed from March 28th – April 5th 2020, and all deadlines due during the closure will be postponed until April 6th 2020.

Eurasian Patent Office (EAPO) accepting digital documents: It has been announced that the original documents can be sent later, within one month.

Azerbaijan Patent Office closure and deadline postponement: The registry is closed until April 29th 2020. All deadlines due during the closure will be postponed to April 30th 2020.

March 23 2020 Update

Egyptian Patent Office Reopens: The registry was closed from March 19th-March 22nd 2020 and has now reopened and continues to operate without interruptions and is accepting physical visitors 3 times a week.

Automatic extensions of deadlines in Jordan: The registry is closed until April 1st 2020. Any deadlines falling between March 18th – March 31st 2020 will be automatically extended until April 1st 2020.

Sudan: The registry is accepting new filings but all other services are suspended from March 18th – March 29th 2020

Portugal: INPI is accepting digital signatures & suspension of deadlines.

India: The registry is accepting requests for extensions of time on deadlines and other matters. All trademark and patent hearings scheduled between March 23rd – March 31st via video conferencing are also cancelled.

Additional national IP offices that are physically closed or with very limited access to the public and operating mainly online only: Kuwait, Iran, Pakistan, Lebanon, Iraq, Tunisia, Morocco, Saudi Arabia & Libya.

March 20 2020 Update

Automatic extension of time from WIPO: WIPO has announced that there will be an automatic extension of time limits on deadlines when a national IP office is not open to the public.

The Sri Lanka IP Office (NIPO) will only accept digital payments: The registry has announced that it will accept payments through bank transfers.

The Benelux IP Office (BOIP) flexibility on deadlines: The registry is closed to the public and also announced that it “will not withdraw any requests or procedures because a given deadline has not been met” from March 16th 2020 onwards until the current situation passes and countries begin to work normally again. The registry also went on to say that the online registrar database may not reflect the accurate status of matters given the suspension of deadlines.

March 19 2020 Update

USPTO no longer requiring handwritten signatures: In this announcement the USPTO enacts another measure to help users adapt to the changing workflows due to the coronavirus outbreak. . In an emailed alert, the registry confirmed it will no longer require an original handwritten signature on a number of IP communications. “The USPTO is waiving the requirements of 37 CFR 1.4(e)(1) and (2) for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline (OED) and certain payments by credit card,” the registry explained. It follows the USPTO determining the Covid-19 to be an “extraordinary situation” within the meaning of 37 CFR 1.183 for affected patent and trademark owners. 

The EUIPO has issued another update on its deadline extensions: the registry clarified “the time limits affected by the extension, the nature of the extension, and the measures to adapt communications sent to user”.  The information includes exactly what matters are covered by the extension (ie, payment of application fees, opposition periods, requests for renewal) and that the new expiry date applicable to them all will be 1 May 2020 (although, in practice, it will be 4 May). An EUIPO representative added: “The extension of time limits granted by the executive director has the immediate effect of preventing the deadlines concerned from lapsing when they were originally due. This effect is automatic and derives directly from the decision of the executive director. Accordingly, affected parties are not required to file a request to the office for the extension of the time limit to take effect. The immediate effect of the extension also implies that users whose time limits are concerned will not be informed about the grant of the extension by means of individual communications.”

The Australian IP Office extension requests to be considered on a “case by case” basis: The registry is less flexible during this time than other jurisdictions and also specifically added that “some time periods cannot be extended”.

The New Zealand IP Office (IPONZ) is accepting extension requests for those affected: The registry has issued an update on its services and provides reassurance that functions are to continue as normal.

The Italian IP Office (UIBM) offers significant extensions: The registry has announced a significant extension of administrative procedures and an extension of the validity of expiring documents. From this week, any certificates and IP titles that expire between 31 January and 15 April will remain valid until 15 June 2020 (this does not apply to international trademark applications).  

Some deadline extensions allowed and delays to be expected at Austrian IP office: The registry announced that all office deadlines in proceedings before the registry (i.e. notice periods) are ex officio extended by two months without the need for users to request a further extension. However, all deadlines “directly resulting from the law” (i.e. deadlines for submitting appeals or for paying annual and protection fees) cannot be extended, the registry added.

Extension of deadlines at the Dominican Republic IP Office (ONAPI): The registry announced new measures that include an extension of all the legal terms granted until March 31st 2020.

Additional national IP offices that are physically closed or with very limited access to the public and operating mainly online only: Germany, France, Ireland, Philippines, Norway, Finland, Portugal, Kazakhstan, Brazil, Chili, Croatia, Slovakia, Hungary & Moldova.

March 18 2020 Update

Suspension of deadlines in Brazil: The Brazilian Patent and Trademark Office (BPTO) published the following notices in the Electronic Official Bulletin No. 2657, of March 17, 2020:

Due to the coronavirus (COVID-19) pandemic outbreak, deadlines are temporarily suspended from March 16, 2020 to April 14, 2020. In addition, the Office authorized remote working for public officers and announced that face-to-face services are not available as of March 16, 2020.

In regards to the Madrid Protocol in Brazil, the implementation of the registration of (a) multiclass trademarks; and (b) co-owned trademarks was postponed without further notice. In turn, the division of trademark applications and registrations is expected to be fully operating as of September 14, 2020.

Suspension of deadlines in Argentina: The National Intellectual Property Institute (INPI) has issued Resolution No. 16/2020. This resolution establishes the suspension until April 3rd for all deadlines that were in process when published. The dates of this measure could be modified or extended as needed.

Suspension of deadlines in Ecuador: IP Office (SENADI) promoting online payments and filings only. The IP office announced the closure of its offices from 16 March until further notice. Online filings will not be affected and are being promoted. The registry has provided the following email address for filing (documentos@senadi.gob.ec) and suspended deadlines that fall between March 16-22. The registry will now allow payment of filing fees (which was previously only allowed by actual deposits in the bank) through wire transfers to the registry’s bank account.

Deadline extension and office closure for the Malaysian IP Office: The IP Office is closed until 31 March, although e-filing for new trademark filings is still available. All priority deadlines for manual filings are extended until 1 April, while all appeals, oppositions and payment deadlines are extended until 30 April. 

Deadline extension & delays expected for the Canadian IP Office: CIPO has warned users to expect significant delays in all services. The following offices are no longer receiving correspondence: Edmonton, Montreal, Toronto and Vancouver. All deadlines will be extended until March 31st.

Deadline extension and suspension of operations for the Sudan Trademark Office: The registry has suspended all operations until April 1st 2020 but will be accepting online applications during this time. Any deadlines falling between March 18th – March 31st 2020 will automatically be extended to April 1st 2020.

March 17 2020 Update

USPTO Fee Alert: The USPTO has issued another alert, this time in regard to fees. In the notice, the registry confirmed it considers the effects of the coronavirus to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for any affected patent and trademark applicants and owners. Therefore, it confirmed it is waiving petition fees in certain situations for customers impacted by the coronavirus, although added that the notice “does not grant waivers or extensions of dates or requirements set by statute”.

Suspended operations for the Saudi Arabia IP Office: The registry has announced that it will suspend operations for at minimum 16 days from the 16th of March 2020. Delays are to be expected and measures are being taken to conduct business digitally but the trademark register will not be conducting searches during this period.

All hearings suspended at the Indian Trademark Registry on all trademark matters from March 17th – April 15th 2020.

Deadlines & payments extended for Intellectual Property Office of the Philippines (IPOPHL): The registry office has issued this press release. All new applications, responses to office actions, appeals, extension requests will be accepted for filing April 15th 2020 or later. All payments due during the quarantine period will become due on April 15th 2020.

Suspension of deadlines in Spain: The Spanish IP Office (OEPM) has announced that all deadlines for pending proceedings are suspended and are scheduled to resume when the state of emergency is over.

All operations suspended in Kuwait: the The Kuwait IP Office has accounced that it has suspended all operations until 26 March. Online functions, including filings and renewals remain operational.

March 16 2020 Update

USPTO announces office closure but states that all USPTO operations “will continue without interruption” with no patent or trademark related deadlines extensions. 

Deadline extensions at the EUIPO: The EUIPO has confirmed that it has extended all deadlines expiring between March 9th to April 30th have been extended until May 1st 2020.

All current deadlines in process for the Peru IP Office (Indecopi) have been suspended.