Protecting Your Intellectual Property During the Coronavirus Pandemic
The new coronavirus disease COVID-19 (the ‘coronavirus’) is an infectious disease that has taken over domestic and international dialogue. Every media outlet is discussing the impact of the coronavirus on public health, the economy, and how quarantines, travel restrictions, and physical distancing will affect the solvency of businesses and job stability in the months and years to come.
For many businesses, concerns center on how long will the pandemic last and when the economy and society will return to normal. Many businesses and governments are adapting by using technology to minimize disruptions while complying with government safety measures which limit the spread of the coronavirus.
More particularly, IP offices have been responsive to the changing demands of day-to-day life in view of quarantines, travel restrictions, and physical distancing practices by offering various accommodations to their clients. IP professionals also understand that in the face of broad economic uncertainty, a frank dialogue about the impact of such a far-reaching event can give peace of mind to growing businesses and entrepreneurs that are looking past the pandemic and, instead, thinking about securing their long-term business goals.
In view of these evolving circumstances, this article will review the response of the Canadian intellectual property community to the coronavirus pandemic, the general business impact of the coronavirus, how key intellectual property offices across the world are accommodating the needs of their clients, and how to manage your intellectual property portfolio until the coronavirus threat is eliminated.
Administrative changes made by national, regional and international IP offices are discussed below.
The Response from the Canadian Intellectual Property Community
The Canadian Intellectual Property Office (CIPO)
CIPO announced on March 17, 2020 that while CIPO would remain open and operational, it would be experiencing significant delays in processing IP matters.
Initially, the Commissioner of Patents, Registrar of Trademarks, and the Industrial Design Minister decided to extend any filing deadline with CIPO in the designated days beginning on March 16 and ending on March 31, 2020 to the first 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.
In practice, this extends any time period fixed under the Patent Act, Trademarks Act, and Industrial Design Act in respect of any business before the CIPO for doing anything that ends on these designated days to the first day after the designated days which does not fall on a weekend or holiday.
On March 27, 2020 CIPO released an update on how it would be conducting its operations in view of the continued coronavirus threat.
The Commissioner of Patents, Registrar of Trademarks, and Industrial Design Minister further designated all days in the period of time beginning on April 1 and ending on April 30, 2020. Consequently, the deadline extensions fixed under the Patent Act, Trademarks Act, and Industrial Design Act are now extended to the first day after the newly designated days which does not fall on a weekend or holiday. For example, a patent filing deadline of March 30 would now be extended to May 1, 2020. In practice, quasi-judicial proceedings before IP administrative bodies, like the Trademarks Opposition Board, are included in these deadline extensions.
CIPO later released an update confirming that these deadline extensions are further extended, albeit with designated days conclusively ending on August 28, 2020. That is, CIPO has announced that the designated days will not be extended beyond August 28, 2020.
CIPO has also indicated that in its role as the Canadian Receiving Office for PCT applications, CIPO will subscribe to WIPO’s recommended approach and treat COVID-19 related delays favorably.
CIPO has continuously emphasized that its online resources would remain available on a 24/7 basis and are remotely accessible. On April 27, CIPO’s Client Service Centre will be resuming its intellectual property document order service but has advised that clients should expect delays in the processing of their requests as CIPO works through the orders currently backlogged. Starting April 28, CIPO will be sending out email notifications when patent grant letters are released to ensure that members of the IP profession who are not receiving physical mail will be notified of a patent being granted as soon as possible. CIPO further recommended that any party interested in securing IP protection in Canada use online services for all CIPO-related matters. Lastly, CIPO published a patent FAQ to address general inquiries on patent-related service interruptions during the coronavirus outbreak and another FAQ directed to clarifying how proceedings before the TMOB will be conducted.
CIPO and the G20 Intellectual Property Offices
On October 26, 2020 CIPO and the intellectual property offices operating in the G20 jurisdictions of Argentina, Australia, Brazil, China, France, Germany, India, Indonesia, Italy, Japan, South Korea, Mexico, Russia, Saudi Arabia, South Africa, Turkey, the United Kingdom, the United States, and the European Union issued a joint statement directed to enhancing cooperation and interjurisdictional support during the COVID-19 pandemic.
In particular, each of these G20 IP offices will endeavour to share policy information, encourage voluntary dissemination of relevant scientific and technological knowledge, promote respect for IP rights, explore effective IP office practices and procedures, and exchange their experiences with using digital technology. G20 IP offices will also work to promote cooperation between intergovernmental organizations, governments, and the private sector. Future meetings between the G20 IP offices were also highlighted as a meaningful opportunity to discuss viable solutions to COVID-19-related challenges to the IP community.
Provided that the G20 represents around 80% of the world’s economic output, two-thirds of the global population, three-quarters of international trade, and approximately 96% of all patent filings, 91% of all trademark filings, 94% of worldwide design filings, and 73% of creative goods exports, collaboration between G20 IP offices is an integral element of facilitating global innovation and economic resurgence. Notably, stronger interjurisdictional dialogue and support can help those policies or operations found to be effective in overcoming the challenges posed by COVID-19 to be applied across the G20 jurisdictions to incentivize innovation, creativity, and trade.
The Response from Canadian Courts
IP litigation falls to the Canadian Federal Court as a result of the constitutional division of powers between the federal and provincial governments in Canada. Accordingly, the Federal Court released an Updated Practice Direction and Order on April 4, 2020 to clarify what ongoing measures will be in place to minimize disruption to court proceedings.
Many Federal Court timelines are suspended until May 29th. The underlying intention is to allow parties to resume proceedings after the suspended period as if the suspended period never existed. However, there are numerous exceptions to these timeline suspensions, and it is prudent to consult legal counsel to identify whether or not a specific timeline suspension is applicable to your legal dispute.
The Federal Court also announced that timelines for the filing of documents and the taking of other procedural steps are extended by 14 days past the end of the May 29th suspension period, effectively extending such deadlines until June 14, 2020. Accordingly, if a party was entitled to more than one day to take a step, that party will have those same days plus the additional 14 days after the end of the suspension period. For example, if a party had three days to take a step, this would extend the deadline by 17 days past May 29, 2020 until June 15, 2020.
Furthermore, all hearings previously scheduled to occur before May 29, 2020 are adjourned sine die unless they are deemed urgent or exceptional, with such a determination being made on a case-by-case basis. Case management hearings will continue if a case is urgent, subject to a fixed trial or hearing date, subject to a statutory deadline, or all parties consent to the matter advancing. The Federal Court will also receive individual requests to accommodate a hearing, which will be assessed on a case-by-case basis. The Federal Court will continue to adjudicate motions in writing made pursuant to Rule 369 of the Federal Courts Rules(i.e., if a party in a notice of motion requests that the motion be decided on written representations) or if all parties consent and all documents required for a matter to be determined have been or will be filed electronically.
In terms of rescheduling the hearings that have been adjourned, if the Federal Court does not extend the period of suspension beyond the May 29, 2020 deadline, the parties to a dispute shall provide to the Judicial Administrator mutual dates of availability up to December 18, 2020. Rescheduling will broadly be conducted on a first-in first-out basis, except for urgent or otherwise time-sensitive matters and subject to the availability of the parties.
The May 29, 2020 deadline was subsequently extended until June 15, 2020 in the Atlantic and Western provinces and until June 29, 2020 in Ontario, Quebec, and the three Territories, with an additional 14-day period for the filing of documents and the taking of other procedural steps. Following the expiry of the suspension period and the additional 14-day period, time limits applicable to suspended proceedings commence to run again. In other words, on the day following the expiry of the 14-day period, parties are effectively in the same position they were in before the suspension period, as if the intervening period did not exist.
Several accommodations are available for the service and filing of court documents. Of particular importance, parties who file documents electronically during the suspension period are exempted from any requirements to file paper copies. However, confidential materials filed pursuant to a confidentiality order or direction should not be filed using the Federal Court’s e-filing portal. Instead, parties should contact the Registry at 1-800-663-2096 to arrange the submission of a confidential document. Furthermore, service may be effected electronically if done pursuant to Rules 139(1)(e), 141, 143, and 146(1) and forms 141A, 141B, and 146A of the Federal Courts Rules. Lastly, The Court will exercise discretion in accommodating affidavits sworn or affirmed remotely where it is not possible or it is medically unsafe for the deponent to physically attend before a commissioner. Note that it is prudent to regularly check the Federal Court’s online resources, since updates are continuously being issued about what accommodations are and are not available in view of COVID-19-related complications.
While IP litigation is generally brought before the Federal Court, many parties with an IP portfolio may nonetheless wish to bring civil disputes before the provincial courts. Both the Superior Court of Justice and the Ontario Court of Justice have published notices and updates about how their services are impacted by the coronavirus. If your dispute was or is likely to be brought before a provincial court, it is prudent to review the accommodations offered by the court and consult legal counsel to determine whether those accommodations are applicable to your case.
The Federal and Ontario Provincial Government Responses
The Canadian Federal Government tabled and passed Bill C-13 on March 24th, 2020 titled An Act Respecting Certain Measures in Response to COVID-19. Among the various measures to curtail the coronavirus, Part 12 amends section 19 of the Patent Act to permit compulsory licensing in response to public health emergencies.
More particularly, the newly added subsection 19.4 permits the Commissioner of Patents, on application of the Minister of Health, to authorize the Government of Canada and any other person specified in the application to manufacture, use, and distribute a patented invention insofar as it is necessary to respond to the public health emergency described in the application.
On May 19, 2020, the Government of Canada published draft legislative proposals that outline potential solutions to the challenges Canadian businesses have been facing from the COVID-19 outbreak. Included among these proposals are suspensions to statutory time limits and further power to federal ministers to extend or suspend deadlines found in federal legislation. These proposals are aimed at ensuring Canadian businesses have continued access to justice in legal proceedings before the courts and can otherwise meet statutory deadlines despite operational or administrative disruptions. The proposals also set standards of transparency and parliamentary oversight for any order for an extension or suspension, including a requirement to publish reasons and to table orders in each House of Parliament in a timely manner. In its publication, the Government of Canada noted that the draft proposals do not authorize the exercise of powers contained therein after September 30, 2020 and that any retroactive effect of powers exercised under the proposed legislation would not have retroactive effect before March 13, 2020.
At the provincial level, the Ontario government announced on March 23, 2020 that non-essential businesses would be closing to support containment measures against the coronavirus. The justice sector, including all professional and social services that support the legal and justice system, was listed as an essential service in the published list of essential workplaces and thus remains operational. Despite the listed closures, teleworking and online commerce are permitted at all times for all businesses. The Ontario government announced in May its plans to relax some of the coronavirus-related restrictions, including permitting some non-essential businesses to reopen. Nonetheless, Ontario’s emergency measures have been extended until May 19, 2020.
Modelling of the coronavirus outbreak also suggests that Ontario has reached its peak for the first wave of the disease. These optimistic data show that the total number of cases in Ontario is now expected to be almost 75% lower than earlier projections for the end of April. The Ontario government attributed these positive developments to public health intervention and social distancing.
The Business Impact
In practical terms, the effect of the Canadian preventative measures and accommodations is two-fold. First, introducing a limited compulsory licensing provision in response to public health emergencies can be instrumental in ensuring the health and well-being of an increasing number of Canadians who are at risk of being exposed to and contracting the coronavirus. Now more than ever there is a need for vaccines and pharmaceutical products that kill the coronavirus itself or control the coronavirus’s symptoms.
There is also a great need for medical devices and equipment that reduce one’s risk of exposure, like filtration masks that physically block the coronavirus from entering a new host. With many healthcare facilities operating at or beyond capacity, businesses have the unique opportunity to provide an innovative solution to an urgent and global problem that can save lives.
Secondly, keeping the justice system operational means Canadian businesses and international businesses looking to conduct business in Canada still have access to the legal services they need and at the same caliber they would regularly expect from IP professionals. Legal counsel can be crucial to achieving your business objectives and many IP service providers understand the importance of not only maintaining the status quo for your business, but also moving businesses forward. To those who specialize in IP, it is business as usual.
If your business conducts research and development in the health sector or if you are an independent innovator with a solution-oriented focus, reflect on how you might address current healthcare needs by generating new products or services that address problems created by the coronavirus. For example, can you create a device that would reduce the risk of exposure to the coronavirus for persons who, despite physical distancing restrictions, still might find themselves in close proximity to others because they work in, for example, a grocery store?
The Responses from Foreign and International Intellectual Property Offices
In an increasingly connected global market, it is prudent to examine how intellectual property offices around the world have responded to the coronavirus outbreak. What follows are details about how the intellectual property offices in jurisdictions most relevant to Canadian businesses have responded to the coronavirus outbreak.
The United States Patent and Trademark Office (USPTO)
On March 15, the USPTO announced that it will be closing their physical offices to the public until further notice, but that any and all USPTO services will continue without interruption. Some accommodations were later announced, as discussed below, for trademark and Trademark Trial and Appeal Board (TTAB) deadlines and various copyright matters.
The USPTO initially published a document detailing what relief will be available to USPTO customers affected by the coronavirus outbreak.
Under certain conditions, patent applicants or patent owners who were unable to file a timely reply to a USPTO communication because of the coronavirus outbreak and whose application is consequently abandoned, terminated, or limited may be able to waive the 37 CFR 1.17(m) petition fee when attempting to revive their application or patent. Such a waiver is available only if the petition and response are filed within 2 months of the issue date of the notification of the office action and in no circumstances later than 6 months after the date the patent application became abandoned, terminated, or limited.
The USPTO may similarly waive the petition fee to revive a trademark application or registration if the application or registration was abandoned or cancelled due to an inability to file a timely response to trademark-related office communications because of the coronavirus outbreak. Such a waiver is not available unless the petition was filed within two months of the issue date of the notice of abandonment or cancellation and in no circumstances later than 6 months after the date the trademark electronic records system indicates that the application is abandoned or the registration is cancelled.
In order to benefit from either of these fee waivers, the petitions must be accompanied by a written reply stating how the coronavirus prevented a timely filed response.
The USPTO has also waived the requirement for an original handwritten signature for certain correspondence with the Office of Enrolment and Discipline and certain credit card payments. In both circumstances, copies of handwritten signatures will be accepted.
The USPTO later announced deadline extensions for certain trademark and Trademark Trial and Appeal Board (TTAB) matters as part of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). Under subsection 12004(a) of the CARES Act, certain due dates expiring between, and inclusive of, March 27, 2020 and April 30, 2020 are extended by 30 days from the initial due date, provided that the filing is accompanied by a statement evidencing that the delay was caused by the coronavirus outbreak. These extended due dates include some responses to Office actions, statements of use, requests for an extension of time to file a verified statement that a trademark is used in commerce, priority filing bases, transformations of an extension of protection to the United States into a U.S. application, affidavits of use or excusable nonuse, and renewal applications. The USPTO also published an accompanying FAQ directed to clarifying the particulars of how the trademark-related deadline extensions under the CARES Act apply.
On April 28, the USPTO announced, in accordance with the temporary authority provided by the CARES Act, that the USPTO would be providing further deadline extensions for filing certain patent and trademark-related documents and for the payment of certain required fees. These deadline extensions apply to certain patent and trademark matters that would have otherwise been due between March 27 and May 31 and extend any such due dates until June 1, 2020. The USPTO will also temporarily permit the filing of plant patent applications and follow-on documents through the USPTO’s EFS-Web and Patent Center filing systems.
The USPTO announced on May 27 that these extensions would be expiring on May 31, 2020 and that stakeholders who continue to require accommodation may receive relief on a case-by-case basis. More particularly, applicants who were unable to submit a timely response or fee in response to a USPTO communication should file a petition to revive the application. Applicants who missed the 36-month statutory deadline for filing a statement of use, and therefore their application has been abandoned, should use the Trademark Electronic Application System (TEAS) “Petition to the Director” form. Lastly, registrants who missed a statutory deadline, resulting in a cancelled/expired registration, or who were unable to submit a timely response or fee in response to a UPSTO communication regarding a registration should similarly use the TEAS “Petition to the Director” form.
To help facilitate a smooth transition back into its normal operations, the USPTO has launched a COVID-19 Response Resource Center. The Resource Center aims to help stakeholders and other interested parties access USPTO initiatives, programs, and other helpful IP-related information as it relates to the COVID-19 outbreak.
The USPTO has also launched a COVID-19 Prioritized Examination Pilot Program for small and micro entities. Under this program, the USPTO can grant requests for prioritized examination to COVID-19-related patent applications made by small or micro entities without those entities paying the typical fees associated with other prioritized examination. This permits COVID-19 related applications filed by small and micro entities to be put on a fast track for patent examination while removing some costs associated with prosecution. Furthermore, the USPTO is endeavoring to reach final disposition of application in the COVID-19 Prioritized Examination Pilot Program within six months, provided applicants respond promptly to any interim communications from the USPTO.
Some accommodations are also available to parties seeking U.S. copyright protection. Among these, are modified timing provisions for affected persons, expanded electronic submission options, and temporary relief for claims with physical deposits. More particularly, the Cares Act added section 710 to the U.S. Copyright Act to authorize the Registrar to temporarily adjust timing provisions in response to the coronavirus where the ordinary function of the copyright system is disrupted. On April 6, the U.S. Copyright Office announced several such temporary adjustments which would be in effect until May 12, 2020. These accommodations are directed to modifying registration timing requirements for certain statutory remedies, timing requirements for serving and recording notices of termination, and timing requirements for serving section 115 notices of intention and statements of account. Persons experiencing other issues related to the timeliness of a copyright procedure are encouraged to contact the U.S. Copyright Office through their online help form or by phone at (202) 707-3000. Parties with copyright interests in the U.S. may also wish to retain professional council to discuss the particulars of accommodations that may be applicable to your copyright.
The United States Court of Appeals for the Federal Circuit also published a guidance document about the service of court documents outside of the court’s electronic filing system during the coronavirus outbreak, which is largely applicable to the service of confidential materials or where serving upon self-representing litigants. The document clarified that parties may electronically serve documents outside of the court’s electronic filing system by another electronic means if the party to be served consented to such service in writing. If the party to be served does not consent, consider printing and mailing all documents that cannot be served through the electronic filing system or filing a motion to delay service of process.
Lastly, the USPTO encouraged registered users of the USPTO’s Patent Electronic Systems who have not yet opted to receive notifications by the e-Office Action program to long into Private PAIR and update their Customer Number details to enable receipt of electronic notifications of office communications.
USPTO customers ought to reach out to the Office of Patent Legal Administration hotline at (571) 272-7704 ((571) 272-7703 for re-examination) or by email at [email protected] if there are patent-related questions about the relief offered by the USPTO.
The World Intellectual Property Organization (WIPO)
WIPO announced on March 20 that it will continue its regular operations under the Patent Cooperation Treaty (PCT), the Madrid System for the International Registration of Marks, the Hague System for the International Registration of Industrial Designs, the Lisbon System for the International Registration of Geographical Indications, and several other IP and IP-related systems. WIPO later advised all PCT Offices and Authorities to adopt the excuse of delay in meeting time limits due to reasons of force majeure provision found under PCT Rule 82quater.1. If adopted by PCT Offices and Authorities, this provision excuses delays where an interested party provides sufficient evidence of the coronavirus causing the delay. WIPO also advised that any such request should be treated favorably, for example, by not requiring the provision of evidence that the virus affected the locality in which the interested party resides.
WIPO’s Arbitration and Mediation Center is also continuing its operations in processing domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) along with other alternative dispute resolution services.
WIPO has implemented a business continuity protocol by shifting to an almost entirely virtual work presence and closing its physical offices to all non-essential staff, retaining only a limited group of personnel on-site at the Geneva, Switzerland WIPO headquarters. WIPO further stated that it is committed to keeping transitional issues that users, IP offices, and other stakeholders experience to a minimum.
Lastly, WIPO announced on March 31 that, due to ongoing disruptions in global postal services and the suspension of postal services in Switzerland, it would be delivering electronic documents for the foreseeable future. The affected documents include certified copies of certificates of international registration and renewal, attestations, and detailed certified extracts. WIPO also added that the issuance of simple certified extracts, legalisation of documents, and expedited services are suspended until further notice.
The European Patent Office (EPO) and the European Intellectual Property Office (EUIPO)
The EPO published a Notice in its Official Journal on March 15 that all patent-related deadlines set to expire between March 15 and April 17, 2020 are extended to April 17, 2020. This deadline extension applies equally to international applications filed under the PCT and may be extended by further publications from the EPO if the coronavirus disruption extends beyond April 17, 2020.
The EPO’s Notice also clarifies that the leniency afforded by Rule 134(5) EPC with respect to the timeliness of filing documents is applicable to cases of delay caused by the coronavirus outbreak. More particularly, any document which is received late will be deemed to have been received on time if the concerned party provides evidence which proves that on any of the ten days preceding the deadline it was not possible to observe the deadline due to the coronavirus and that the transmission of the document was effected, at the latest, on the fifth day after the end of the coronavirus disruption.
After the World Health Organization (WHO) characterized the coronavirus outbreak as a pandemic, the executive director of the EUIPO signed a decision on March 16 to extend all time limits expiring between March 9 and April 30, 2020 to May 1, 2020. In practice, this extension is effective to May 4 since May 1 is a public holiday, followed by a weekend.
On April 30, the EUIPO announced a second extension of time limits for all deadlines expiring between March 9 and May 17 to extend these deadlines until May 18, 2020. For clarity, these extensions cover all procedural deadlines, irrespective of whether they have been set by the EUIPO or are directly stipulated in regulations. These deadline extensions also take effect automatically.
The executivedDirector of EUIPO also released a video update on April 17 affirming EUIPO’s commitment to teleworking and assuring interested parties that, despite procedural restrictions, production at the EUIPO continues at almost normal levels. The executive director also highlighted the importance of continued virtual services delivery and cooperation between national and regional IP offices in the EU. It was also noted that the EUIPO is planning for an eventual return to its physical premises when conditions allow, but that such a return must be balanced with the health and safety of frontline staff.
The EUIPO later announced that, as of May 18, 2020, the extensions of time limits related to the coronavirus outbreak would be coming to an end. EUIPO noted that many users of its services may still experience difficulties as a result of the COVID-19 pandemic, and has provided additional online information regarding available remedies, time limit extensions, and the suspension or continuation of proceedings. To help ease the transition back to normal operations, EUIPO executive director Christian Archambeau has been regularly releasing video updates on the EUIPO’s operations. Most recently, the executive director announced that staff are gradually returning to the EUIPO headquarters, with teleworking still in place for those that need it. He has also stated that while there was an initial drop in filing demand at the start of the COVID-19 crisis, that trend has been reversed and it is now projected that the EUIPO will receive around 5% more EU trademark applications this year.
Additionally, the Court of Justice of the European Union announced on March 31, 2020 that judicial activities will continue, but priority will be given to those cases that are deemed particularly urgent. Procedural time limits for instituting proceedings and lodging appeals remain unchanged. However, time limits prescribed in ongoing proceedings, with the exception of proceedings deemed urgent, are extended by one month. In particular, the extended time limits will expire at the end of the day which, in the following month, is numbered the same as the day on which the time limit should have expired or, if that day does not exist in the following month, at the end of the last day of that month. Hearings that are listed between March 31, 2020 and April 30, 2020 are adjourned until a later, to be determined, date. The Court currently anticipates holding hearings once again starting May 25, 2020 and has, for some previously scheduled hearings, replaced such hearings with written questions to the parties.
The United Kingdom Intellectual Property Office (UKIPO)
The UKIPO published a services update on March 27 asking rights holders and IP professionals to continue to file as normal, where possible. In terms of accommodation, the UKIPO declared March 24, 2020 and each subsequent day, until further notice, interrupted days.
Any deadlines for patents, supplementary protection certificates, trademarks, designs, and applications for any of these rights which land on an interrupted day are extended until the UKIPO notifies the public and ends the interrupted days period.
The UKIPO also stated that, for health and safety reasons, it cannot process paper documents through physical delivery to its offices or through its fax services. As such, UKIPO customers should use online services when filing or communicating with the UKIPO. A new email address, [email protected], was created to receive faxes or documents that would otherwise be posted to the UKIPO in a non-digital format.
UKIPO confirmed on July 8, 2020 that it would be continuing with its period of interruption only until July 29, 2020. Starting Thursday, July 30, all interrupted day deadlines expire. In view of this change, UKIPO has introduced a temporary reduction in certain patent, trademark, and design fees from July 30, 2020 until March 31, 2021. For example, there are no fees for extensions of time, to apply for reinstatement and restoration, late payment of a renewal fee on patents and designs, and only a £1 surcharge for payment of late renewal fees for trademarks.
The Australian Intellectual Property Office (IP Australia)
The Australian IP Office (IP Australia) has been publishing a series of updates on how its provision of IP services are impacted by the coronavirus outbreak and what accommodations it will provide to businesses. IP Australia is continuing to serve IP interests through its online portal on a 24/7 basis, as well as through its phone lines and has opened a dedicated COVID-19 helpline to provide information about trademark registration and to offer free support and assistance services to small and medium-sized businesses during the pandemic.
Extensions of time and waivers or refunds of associated fees may be available, with the procedure for making such requests unchanged from the norm. Whether these accommodations are granted or not will be considered on a case-by-case basis. In response to the growing number of extension requests, IP Australia has launched a streamlined process for these requests through its eServices portal. Hearings are being conducted only by video conference, telephone, or written submission.
Extensions of up to three months are available through IP Australia free of charge, with the usual extension fee being automatically waived if the extension is requested through the eServices portal. There is also no requirement to provide a written explanation of the impact of COVID-19 on one’s timeliness, but users of IP Australia’s eServices will nonetheless be required to make a legal declaration that they are unable to meet a deadline due to disruptions from the COVID-19 pandemic. Note that false declarations could jeopardize IP validity. Further extensions of time for up to three months are also available, if required.
These accommodations will be in place until November 30, 2020 with IP Australia regularly reviewing whether further accommodations are required. Nonetheless, IP Australia will provide at minimum one week’s notice before ceasing accommodation.
The New Zealand Intellectual Property Office (IPONZ)
IPONZ published a brief update on their provision of IP services, stating that all of IPONZ’s services will be operating as usual, albeit staff members will be working remotely. If a party believes their ability to respond in a timely manner to a deadline has been affected by the coronavirus, they may request an extension of time in the usual manner and identify the cause of the delay as the coronavirus. IPONZ stated that such requests will be assessed on a case-by-case basis. IPONZ later confirmed on April 15 that these requests will be treated favorably and directed parties unable to request an extension of time to contact IPONZ using their online form.
IPONZ later released guidelines clarifying how IP-related hearings will be conducted in view of COVID-19 service disruptions. All proceeding tasks that require the submission of evidence were initially automatically extended. On May 25, IPONZ ended automatic extensions for trademark owners filing counterstatements and evidence in revocation proceedings for non-use of a trademark, but extensions of time can still be requested for these matters if the owner was impacted by COVID-19.
The requirement for evidence to be presented in the form of a statutory declaration or affidavit for the determination of a proceeding remains a requirement; however, until further notice, the registry’s hearings office will accept unsworn evidence to meet an evidence deadline in a proceeding.
IPONZ also stated that it may change the due dates for certain cases and tasks in view of service disruptions caused by the coronavirus. These cases and tasks include deadlines to respond to patent examination reports, deadlines to request examination for patent applications, and deadlines to file evidence for proceeding cases, among others.
IPONZ later announced that it will no longer provide automatic extensions for cases and tasks for any due dates that fall after July 31, 2020 but will continue to accept requests for extensions of time on a case-by-case basis. IPONZ further stated that extension requests related to delays resulting from COVID-19 should provide specific details describing how any such delays were caused by COVID-19.
The China National Intellectual Property Administration (CNIPA)
On February 14, CNIPA published a general policy statement on how it would safeguard its clients and minimize the impact of the coronavirus on its operations. Therein, CNIPA affirmed core principles of leadership in the face of economic challenge, fostering confidence in the IP system, and to work at both the regional and local level to ensure neither public health nor economic stability are compromised.
In terms of accommodations, CNIPA published an official statement explaining that deadlines for trademark-related matters may be suspended from the time a CNIPA client is hospitalized or isolated after being infected with the coronavirus or from the date when the trademark-related matter cannot be conducted normally where the client is located because of prevention and control measures. Such a suspension will last until the date when the client is discharged from their hospital stay, isolation ends, or when the location experiencing work disruption due to prevention and control measures resumes normal operation.
The Korean Intellectual Property Office (KIPO)
KIPO announced on February 28 that it will be offering financial support to companies that are either affected by the coronavirus or that are working to combat it. KIPO is also providing prompt examinations and trials for any IP that may benefit the public by limiting the spread of the coronavirus or addressing its cause.
Automatic extensions will also be applied to defer the deadlines for certain actions, like the submission of written opinions, to April 30, 2020 where the delay is for a coronavirus-related reason.
KIPO also committed to conducting emergency monitoring of any counterfeit goods that may have a negative impact on the health, wellness, and recovery of its citizens. In practice, this means KIPO will be more vigilant towards products that are in high demand as a response to the coronavirus threat and which profiteers may look to manufacture counterfeits of.
KIPO hosted a teleconference with 16 IP offices to discuss the Korean experience in response to the coronavirus outbreak, what response models have been successful in facilitating a healthy IP system during the outbreak, and how these insights may benefit the international community. Among the teleconference participants were the United States, China, Japan, India, and numerous European representatives, with a hotline further being established between Korean and U.S. patent officers to facilitate joint responses to the coronavirus.
Lastly, KIPO issued a notice on August 31, 2020 that, as part of an effort to stimulate innovation, there would be a temporary reduction in the interest rate for loans under the intellectual property deduction.
The Japan IP Office (JPO)
On April 6, 2020, the JPO published guidelines explaining what accommodations are available to parties seeking IP protection or who are enforcing their IP rights in Japan. Among these guidelines, the JPO advises parties unable to carry out procedures for applications, trials, or appeals due to the coronavirus outbreak to attach a document explaining the circumstances that prevented the procedure from being carried out in a timely manner. The guidelines state that if the JPO recognizes the necessity of the delay, the IP procedure that the explanatory document is directed to may be considered valid even after the expiration of an associated deadline. On April 30, the JPO released an update clarifying that this determination of validity depends on whether the delay constitutes a reasonable period in view of the delay’s duration and the spread of the coronavirus. The JPO also affirmed its commitment to adopting a flexible approach when considering whether to allow a delayed procedure after the expiration of a time limit.
The JPO also announced that the JPO Library will be closed starting April 8 and will remain closed for the foreseeable future to help prevent the spread of the coronavirus. The JPO Library is the only specialized library for IP in Japan and provides substantive Japanese IP legal resources along with science, technology, and general IP administrative materials.
India’s Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM)
Following the announcement that India would enter a nationwide lockdown to prevent the spread of the coronavirus, the CGPDTM issued a public notice on March 25 that it will remain closed for a 21 day period, in conformity with the nationwide lockdown. This closure was subsequently extended until May 17, 2020, with any IP-related deadlines that would otherwise fall within this period being deferred to June 1, 2020.
The registry has also cancelled all hearings that were scheduled on lockdown dates, with parties being notified of new dates at a later time. The High Court of Delhi and all subordinate courts are similarly suspending their operations until, at the earliest, June 1.
India’s lockdown was subsequently extended until June 30, with a phased reopening being implemented on a month-by-month basis by the Ministry of Home Affairs. This reopening strategy aims to resume regular economic operations by loosening the lockdown restrictions in monthly increments while maintaining stronger restrictions for containment zones with higher COVID-19 case counts. This phased re-opening has been extended until October 31, 2020. India’s lockdown was subsequently extended until June 30, with a phased reopening being implemented on a month-by-month basis by the Ministry of Home Affairs. This reopening strategy aims to resume regular economic operations by loosening the lockdown restrictions in monthly increments while maintaining stronger restrictions for containment zones with higher COVID-19 case counts. This phased re-opening has been extended until October 31, 2020.
Initially, the announcements by the Indian intellectual property office indicated that any IP-related deadline extensions would come to an end on June 1, 2020. However, the Intellectual Property Attorneys Association (IPAA) challenged the registry’s handling of deadline extensions by alleging that the termination of deadline extensions would conflict with the Supreme Court’s order regarding the extension of all limitation periods regardless of legal basis. Upon review of the IPAA’s challenge, the Delhi High Court found that no court, tribunal, or other authority could impose timelines on limitation periods in violation of the Supreme Court’s ruling. Consequently, it appears that limitation periods remain extended until further notice from the Supreme Court. Nonetheless, the e-filing services of CGPDTM are unaffected by the lockdown.
The Russian IP Office (Rospatent)
On April 3, Rospatent announced that due to a temporary closure of their correspondence reception center in response to the coronavirus outbreak, applications and correspondence can be sent to the email address [email protected] until further notice. Rospatent clarified that any application filed by email will be considered as if it had been filed on paper, without reducing any associated fees. In facilitating the transition to the temporary electronic filing regime, Rospatent encouraged interested parties to review the electronic services and related materials found on the portal for public services of the Russian Federation (www.gosuslugi.ru), the official website of the Federal Service for Intellectual Property (www.rupto.ru), and the official website of the Federal Institute of Industrial Property (www.fips.ru).
On April 15, Rospatent launched a telephone helpline network to connect parties interested in securing IP protection in Russia with IP experts working remotely. These helplines facilitate several IP-related help services, including consultations on PCT issues, consultations on the registration of computer programs, trademark search advice, and consultations on the payment of patent fees, among others.
Remotely Managing and Leveraging Your Intellectual Property
In view of the quarantines, travel restrictions, and physical distancing measures aimed at curtailing the effect of the coronavirus on both public health and the global economy, the need for effective remote service delivery models has never been greater.
In response to the challenges posed by the coronavirus, the global IP community remains committed to ensuring clients still receive the same standard of service they have come to expect and IP offices across the globe have implemented various accommodations to minimize the impact the coronavirus has on businesses.
While concern lingers in the business community, now is still a good opportunity to move your IP portfolio forward. Most intellectual property offices operate on a first to file basis and as such, hesitating now could lead to someone else filing before you.
In practical terms, a business that chooses to delay filing for IP protection risks losing that protection if another party files competing IP without delay. The race to an IP office determines who has priority and is entitled to IP rights. If a business files IP before its competitors, it can thereafter move to exclude those competitors from operating in the same market in terms of selling products or services under the proposed patent or in association with the contemplated trademark.
If you intend on filing for IP protection, but are unsure of when you will be filing for IP protection, consider the impact such a deferral can have on this priority. By hesitating to file for IP protection you may lose not only priority over a competing party, but also any costs, effort, and time invested in developing the IP.
Furthermore, there is ample opportunity to develop innovative health solutions targeting the new healthcare needs raised by the coronavirus. Currently, many markets and individuals are looking for products and services that address the unique problems being faced by frontline healthcare workers, the transition to working remotely, or the need to remain active, engaged, or even entertained in view of physical distancing. Developing IP addressing any of these issues could benefit any business, whether new or well-established, as well as the public at large.
For more information on how your IP rights may be affected by the coronavirus and what you can do to manage and leverage your IP during the outbreak, contact us now for a complimentary and confidential initial telephone appointment.