US Patent Office and the Patent Offices of the IP5 are Open for Business - COVID-19 Update
The Intellectual Property (IP) team at DeWitt is committed to supporting our clients during the COVID-19 pandemic. Like DeWitt, the world’s five largest intellectual property offices (IP5) are open for business. Set forth below is how each of the IP5 is handling deadlines in patent matters during the COVID-19 pandemic.
The IP5, which includes the United States Patent & Trademark Office (USPTO), the European Patent Office (EPO), the Japanese Patent Office (JPO), the Korean Intellectual Property Office (KIPO) and the National Intellectual Property Administration of the People’s Republic of China (CNIPA), have implemented policies to assist applicants in meeting filing and fee deadlines due to issues related to COVID-19.
The recently passed US CARES Act allowed the USPTO to announce the extension of time to file certain patent-related documents or fees, which otherwise were due on or after March 27th, 2020. The list of patent filing and fee deadlines is extensive. The DeWitt IP team is ready to counsel clients on which deadlines are eligible for extension.
For deadlines due between March 27th and April 30th (inclusive), an extension of 30 days is available. The filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. The extension is defined to include late filing situations where a practitioner, applicant, patent owner, petitioner, third-party requester, inventor, or other person associated with the filing was personally affected by COVID-19. These situations include:
- Office closures;
- Cash flow interruptions;
- Inaccessibility of files;
- Travel delays; or
- Personal or family illness.
The broad definition available under the extension protocol protects many from forfeiting patent rights due to missed deadlines during the COVID-19 pandemic. It is likely the USPTO will extend its policy if the pandemic continues beyond April 30th.
The JPO implemented a similar statement of procedures as the USPTO. However, the JPO has provided late filing deadlines of 60 days to 6 months after the reason for delay ends, or 60 days to 1 year after the reason for delay ends, depending on the type of deadline.
The EPO is currently providing extensions for missed deadlines between March 15th and April 17th. The request for the late filing must include evidence that on any of the ten days preceding the original due date, it was not possible to observe the time limit due to the pandemic. The late filing must be made no more than five (5) days after the end of the disruption. This policy will likely be extended beyond April 17th.
The CNIPA set out a restoration policy instead of allowing extensions of time. If an applicant misses a deadline for reasons related to COVID-19, and a loss of rights occurs, the applicant may request the restoration of the lost rights within two (2) months from the date of removal of the obstacle to making the filing. At the very latest, the request for restoration of lost rights must be filed within two (2) years from the date of expiry of the “Pandemic Period.” The CNIPA itself will define the “Pandemic Period.”
The KIPO implemented a policy that allows applicants with pending applications to be granted an automatic extension for certain actions through April 30, 2020. There is no requirement to file a request for this extension to take effect.
The information above is a brief summary of the policies implemented by the IP5, and a vast majority of patent offices around the world are also operating and providing applicants assistance with extending deadlines due to COVID-19. The DeWitt IP team is ready to navigate the issues associated with COVID-19 here in the US, and we are also working in close communication with our foreign associates around the world to solve deadline issues for our clients. Please contact one of our team members with any questions.
Stay safe and healthy.
DeWitt Intellectual Property Team
About the Author
Chris is the Co-Chair of DeWitt’s robust Intellectual Property (IP) Group. His domestic and international practice involves all facets of IP law, especially patent and trademark prosecution. He also serves as In-House Corporate Counsel on a contract basis for clients, where he manages IP portfolios, outside counsel and any litigation matters which may arise.
Chris can be reached at firstname.lastname@example.org or at 262-754-2862.
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