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COVID-19 Related IP Office Closures and Extensions

May 26, 2020

As governments around the world work to stem the coronavirus (COVID-19) pandemic, intellectual property (IP) offices in jurisdictions around the globe are temporarily closing and/or extending deadlines.

At Morgan Lewis, we are actively tracking these closures and new deadline policies to assist our clients in protecting their valuable IP rights. Our lawyers and other IP professionals, as well as our network of seasoned counsel around the world, remain available to help you to prosecute, maintain, and enforce your IP rights during this trying time.

The charts below provide information we have received from local counsel and/or local patent and trademark offices with regard to office closures, extensions, and other reactions of relevant government authorities as of the designated date. The information in these charts is believed to be current and accurate as of the date below, and will be updated periodically as new information becomes available.

Accordingly, parties that have critical deadlines pending in any of the jurisdictions listed below should independently verify the information provided. We recommend communicating with your local counsel (or request that Morgan Lewis do so on your behalf) in respect of any critical dates. In the meantime, should you have any questions regarding the information below and/or the steps necessary to protect your IP rights, please reach out to the listed contacts. We will continue to be available throughout this situation, and can coordinate with counsel in each jurisdiction upon request.


Trademark Contacts

Boston
Rachelle A. Dubow
David O. Johanson

San Francisco
Rochelle D. Alpert
Carla B. Oakley
Sharon R. Smith

Washington, DC
Dana S. Gross
Anita B. Polott
Kristin H. Altoff
Karen A. Butcher
Ron N. Dreben
Carole R. Klein
Rebecca E. McDougall


Copyright Contacts

Boston
David O. Johanson

San Francisco
Carla B. Oakley
Gene K. Park
John A. Polito

Washington, DC
Dana S. Gross
Anita B. Polott
Karen A. Butcher
Ron N. Dreben
Rachel E. Fertig


Patent Contacts

Boston
Mark L. Hayman, Ph.D.

Chicago
Christopher J. Betti, Ph.D.

Houston
C. Erik Hawes

Orange County
Mark J. Itri

Philadelphia
Louis W. Beardell, Jr.
Kenneth J. Davis
Christopher I. Halliday

San Francisco
Christina A. MacDougall, Ph.D.

Shanghai
Shaobin Zhu

Silicon Valley
Dion M. Bregman
Andrew J. Gray IV

Washington, DC
Jeffrey G. Killian, Ph.D.
Hosang Lee

Known Trademark Office Closures and Extensions
as of May 26, 2020

Jurisdiction

Trademark Office Status

 

Length of Extension

(applies to all deadlines until listed date unless otherwise noted)

United States
Open, but not to public

PTO remains open for filing of trademark and TTAB documents and for payment of fees electronically

All deadlines for trademark prosecution and maintenance filings/payments that fall between March 27 and May 31 are extended to June 1 provided that the filing/payment is accompanied by a statement that the delay in filing/payment was due to the COVID-19 outbreak

This includes deadlines to make priority filings and extend protection to the US pursuant to international treaties, respond to pending office actions, and to file a notice of opposition or a request to extend the opposition period

However, it does not include other deadlines related to pending TTAB actions; where a party is unable to file before a deadline due to the COVID-19 outbreak, a request (in ex parte appeals) or motion (for inter-parte proceedings) for an extension or reopening of time, as appropriate, can be made

Further, the PTO has waived fees associated with petitions to revive records that are abandoned/cancelled due to an inability to timely file caused by the outbreak  Owner has two months to file petition after issuance of notice of abandonment or cancellation if such notice is received or if notice is not received, owner has six months after TESS is updated to reflect abandonment or cancellation to file petition

Antigua and Barbuda* Closed

Until May 5

Australia Open

Up to three-month extension for certain office deadlines available upon request submitted with a single sentence declaration that delay was due to COVID-19 outbreak

However, many deadlines may not be extended, including deadlines for filing priority applications, renewal, and opposition

See IPA website for more details and verify all deadlines with counsel 

Barbados Closed Until further notice

Benelux

Open

All deadlines stayed until May 25

Additional extension of one month will be granted for all requests and proceedings for which the time limits have expired or which are less than one month at that time

See the PTO FAQs for more information on the above

Brazil*

Open

May 16

Canada

Open, but significant delays expected

June 1

Dominican Republic Closed

Until June 1
— All terms will start counting three days after the State of Emergency is lifted

India

Open, but not functioning fully

All deadlines up to and including May 17 extended until June 1

E-filing services shall remain unaffected during the extended lockdown

Indonesia

Closed until May 14

This closure does not affect online filings like new applications and/or related deadlines

For all in-person filings, deadlines are extended to June 1

Office will not grant any relief where applications have been abandoned or registrations lapsed due to missed deadlines due to COVID-19

Israel* Open with reduced staff

No extensions of deadlines before the ILPO

Extensions may be available upon request for certain deadlines if a party does not meet deadline because of circumstances related the pandemic; this does not include the deadline for filing an opposition, paying a renewal fee, or requesting the reinstatement of a trademark, and there also is no special treatment of deadlines deriving from international treaties

— Deadlines in proceedings before the Registrar scheduled for execution (before the extension given in the notice) from March 22 to April 1, are postponed until May 15

— Deadlines in proceedings before the Registrar scheduled for execution (before the extension given in the notice) from April 2 to May 1, are postponed until June 15

— Deadlines in proceedings before the Registrar scheduled for execution (before the extension given in the notice) from May 2 to May 15, are postponed until June 30

Japan Open

Time limits are not automatically extended

If a party is not able to carry out procedures for applications or trials/appeals within the designated time limits due to COVID-19, it may submit a declaration explaining the circumstances and the JPO is likely to grant an extension

The procedures and timing for submitting an explanation differs for time limits designated by the JPO as opposed to Japanese law or governmental and ministerial ordinances

Verify all procedures with counsel

Korea Open June 1
 Kuwait Closed Operations suspended until May 31

Malaysia

Closed until June 9

New filings with Priority Date Claim deferred to June 10

New filings via Madrid System deferred until June 16

Renewals extended until June 16

Responses to office actions, appeals, and oppositions, and all payment deadlines, extended until June 16

Mexico

Closed until May 4

All deadlines extended until June 1

Digitally signed online applications and online motions related to cases already being prosecuted online may currently be filed even though all related deadlines (including priority deadlines) have been extended

Paraguay* Closed
All deadlines suspended while office is closed
Peru Closed until June 10 All deadlines suspended until June 11

Online filings for renewals and oppositions are being accepted

Philippines*

Open, but working with only essential staff until further notice

All filings and payments with deadlines falling from March 16 through April 30 are extended by 45 calendar days

The foregoing does not apply to trademark applications claiming priority, which must be filed electronically before the subject priority filing deadline

The IPOPHL will resume normal operations on May 4

Romania

Closed

Until further notice

Singapore Closed All deadlines falling between April 7 and June 4 (inclusive) extended until June 5

Spain

Open

June 7

The closure may be extended another 15 days

Turkey* Open June 16
United Kingdom Open, but closed to public
 
 All deadlines extended until further notice
 Vietnam Closed
May 30

* Updates pending from local counsel

 

Status of US Copyright Office
as of May 26, 2020

  • Building closed to the public
  • Office open through the Copyright.gov website for online registration filings and searches
  • Members of the public may still submit emails with questions through the office’s website and by phone at (202) 707-3000
  • Deliveries of physical filings and/or deposits by courier will not be accepted; only accepting deliveries via US Postal Service and commercial delivery services such as UPS, FedEx, and DHL
  • Staff of the Records Research and Certification Section continue to offer search, records certification, and other services, but there will likely be unavoidable delays in processing times
  • Special handling of applications for registration on an expedited basis still available; such applications to be processed within five business days
  • All refusal letters and decisions regarding requests for reconsideration will be sent via email; the office’s email will provide instructions on how to request reconsideration (if available)
  • Congress passed and the president signed legislation (the CARES Act) on March 27 that grants the Register of Copyrights wide discretion to toll, waive, adjust, or modify any timing provision, effective period, or procedural provision under the Copyright Act or related regulations (other than most statutes of limitations and most copyright term provisions)
  • The Acting Register subsequently temporarily adjusted the application of the timing provisions of section 412 of the Copyright Act as follows:
    • If an applicant can submit an application electronically but is unable to submit a required physical deposit, the applicant may file its application electronically along with a (i) declaration certifying that the applicant is unable to submit the physical deposit due to the national emergency, and (ii) satisfactory evidence in support of this declaration (e.g., a statement that the applicant is subject to a stay-at-home order or unable to access required physical materials due to a business closure).  If this requirement is met, and the three-month window for registration after the date of first publication was open as of March 13, 2020, the window will be extended (and the applicant will be eligible for the remedies under section 412) so long as the applicant submits the required physical deposit within thirty days after the date the disruption has ended.
    • If an applicant is unable to submit an application (either electronically or physically) during the disruption, the applicant may submit an application after the Register has announced the end of the disruption, and include a declaration certifying that the applicant was unable to file its application due to the national emergency together with satisfactory supporting evidence (e.g., a statement that the applicant did not have access to a computer/internet or prevented from accessing or sending physical materials). If this requirement is met, the three-month window under section 412 will be tolled between March 13, 2020, and the date that the disruption has ended.
  • The Acting Register further temporarily adjusted the timing requirements under sections 203 and 304(c) of the Copyright Act, providing certain accommodations for persons who are prevented from serving or recording notices of termination within the statutorily required time periods. These persons likewise must provide a declaration supported by satisfactory evidence that they would have met the deadline but for the national emergency.
  • The Copyright Office published a Final Rule, 85 Fed. Reg. 19666, on April 8 that amended regulations requiring original signatures and/or paper copies of documents with respect to fourteen (14) categories of submissions, including applications for registration, certain requests for recordation, and appeals. The amended regulations will facilitate the Office’s ability to receive electronic submissions for more services.  More information regarding the current submission options, including the new emergency electronic options adopted by the Office, may be found here.
  • Morgan Lewis can coordinate any type of Copyright Office filing upon request

Known Patent Office Actions
as of May 26, 2020

Jurisdiction

Status Date

Patent Office Status

 

Known Updates In Consideration of
COVID-19

 

United States Patent

May 4, 2020

Open, not to public

Certain deadlines for actions due between March 27, 2020 and May 31, 2020 extended to June 1, 2020; this is in addition to prior 30-day extension and presumed to also require that any delayed filing is accompanied by statement that delay was “due to COVID-19 outbreak” and the USPTO has defined what it considers to be “due to the COVID-19 outbreak”  

The deadlines to be extended and requirements for submission are here

Upon request and affirmation that delay is due to COVID-19 outbreak (see above) a 30-day extension for specific PTAB deadlines will be granted; other deadline extensions may be requested (see here for more details)

Fees associated with petitions to revive under 37 CFR 1.137 are waived when applicants were unable to timely reply due to the COVID-19 outbreak as set forth in the USPTO’s March 16, 2020 notice found here

Original handwritten signature requirement waived

Designation of “extraordinary event” and waiver of petition fees in certain situations for customers impacted by coronavirus; this does not affect statutory dates, however

Examiner interviews, PTAB oral hearings and other similar in-person meetings scheduled to take place after March 13, 2020, to be conducted remotely

Temporarily permits filing of plant patent application and follow-on documents via EFS-Web or Patent Center until further notice

Congress passed and the President signed legislation (the CARES Act) on March 27 that grants the Director of the USPTO wide discretion to toll, waive, adjust or modify pending deadlines

Albania

March 20, 2020

Open

Applications to be submitted electronically

Argentina

March 18, 2020

Open

Deadline that were running on March 12, 2020, are extended to April 26, 2020

Local counsel recommends meeting deadlines where possible

Armenia

March 20, 2020

Open

Closed to visitors

Electronic filing

Deadlines not postponed

Official documents will not be received until after April 14, 2020

Australia

April 25, 2020

Open

New streamlined extension process, for applicable missed deadlines with a single sentence declaration that delay was due to COVID-19 outbreak

Extensions available up to three months for many (but not all) patent, trademark, and design deadlines

Streamlined extensions are available at no cost

Some time periods cannot be extended

See IPA website for more details

Austria

March 25, 2020

Open

Open official time limits extended two months

Deadlines set by law cannot be extended

Belarus

March 20, 2020

Open

No changes reported

Belgium

March 25, 2020

Open

Extensions by request

Benelux (trademarks and designs)

March 25, 2020

Open

Until end of imposed public restrictions BOIP will not withdraw requests or procedures for missed deadlines

One month additional period may be granted for all requests and proceedings for which time limits have expired or are within one month from end or restrictions

Bosnia & Herzegovina

March 20, 2020

Open

Shortened hours

Electronic communications only

Dropbox open outside premises

Bulgaria

March 20, 2020

Open

Electronic files preferred

Brazil

April 15, 2020

Open

In person meetings cancelled

Deadlines postponed to April 30, 2020; but, local counsel strongly advises meeting deadlines where possible

Canada

April 2, 2020

Open

Expect delays

Deadlines falling within March 16, 2020 through April 30, 2020, extended to next non-designated date

Chile March 27, 2020
Open

Extensions are possible through April 3, 2020

Electronic services are operational

Some accommodations being made for original documentation requirements

The People's Republic of China

March 27, 2020

Open

Where a party has missed the deadlines thus resulting in the loss of his/its rights due to the impediments caused by COVID-19, he/it may, within two months as of the removal of the impediments (e.g., lockdown released), or at the latest within two years as of the expiry of that deadline, request the China National Intellectual Property Administration (CNIPA) to recover his/its rights

A similar rule applies to layout-designs of integrated circuits (see No. 350 Announcement of the CNIPA, January 28, 2020)

The rule above does not apply to the deadlines provided in Article 24 (grace period of novelty), Article 29 (priority), Article 42 (patent term), and Article 68 (statute of limitations and other litigation-related time periods) of the China Patent Law

Croatia

March 20, 2020

Open

No changes reported

Czech Republic

March 20, 2020

Open

Visitor access in special cases only

Electronic filing, filing by mail

No extensions yet

Estonia

March 20, 2020

Open

Closed to visitors

Electronic filing, filing by mail

No extensions yet

Eurasian Patent Office March 27, 2020
Open

Following Russian closure policy; dates to be extended to April 6, 2020

Closed to visitors until April 15, 2020

Electronic filing recommended in both Eurasian and Russian patent offices due to limited ability to handled paper filings

EAPO file limit is 10Mb

EUIPO

May 23, 2020

Open

Extension periods have ended. To the extent an applicant requires further remedies they are referred to the EUIPO guidance

European Patent Office

May 23, 2020

Open

All deadlines after March 15, 2020, extended to June 2, 2020, EXCEPT divisional applications must still be filed during pendency of an EP application and deadlines for making final submissions before oral proceedings are not extended (details can be found here)

Some additional accommodations made for late filings

No oral hearings scheduled until May 15, 2020, unless already confirmed as video hearing

Oral proceedings at examination division noticed on or after April 2, 2020, to be held by videoconference

Finland April 2, 2020 Open Extension requests for trademarks and designs available with fees

France

March 25, 2020

Open

Deadlines for designs not expired on March 16, 2020, extended four months

Deadlines noticed during outbreak and one month beyond extended four months

Petitions for relief will be considered where restoration is necessary

Georgia

March 20, 2020

Open

Electronic filing possible

Germany

May 26, 2020

Open

Deadlines set by law cannot be extended

Restoration petitions will be considered

Scheduled hearings and oral proceedings until June 30, 2020 are affected as follows: summons to appear will not be issued; hearings are cancelled

Electronic filing recommended to avoid further delays

Certificate issuance to be delayed

Hungary

March 20, 2020

Open

Efiling and mail operating

In-person meetings only in exceptional circumstances

India

May 26, 2020

Closed

Deadlines between March 15, 2020 and May 17, 2020 are due June 1, 2020

Electronic filings are still permitted

International Bureau (i.e., The Receiving Office for Patent Cooperation Treaty (PCT))

March 31, 2020 Open

The International Bureau remains in full operation 

All communication by postal mail suspended until further notice; all PCT-related documents to be sent only via email to the address provided in relation to each international application 

PCT-related documents are also available through ePCT and also on PATENTSCOPE for published international applications

The International Bureau urges PCT users to urgently provide the contact email address in relation to their pending international application(s) if not currently provided (see instructions at Transmission of paper documents to and from the International Bureau during the COVID-19 pandemic)

All PCT users are strongly encouraged to avoid PCT-related submissions by postal mail and to communicate with the International Bureau exclusively by appropriate electronic means

Ireland

May 26, 2020

Open

Days between 13 March and 2 June are deemed to be “excluded days” for all purposes under the Acts and Rules

Israel

May 26, 2020

Open

Relief provided on a case-by-case basis

Extensions no longer applicable

Italy

 

 

Deadlines suspended from 23 February 23, 2020 to April 15, 2020

Japan April 3, 2020 Open

The delay or lapse of due dates may be remedied if such delay or lapse were caused by the influence of COVID-19 infection; documentation to explain the circumstances why necessary procedures could not be performed must be submitted

PCT national phase may be filed up to six months late

New applications with Paris Convention Priority should be filed within two months of priority due date expiration

Late office action response accepted if necessity found

Late Examination required if filed within two months of possible filing and within two years after original due date

Maintenance fees can be paid two months after possible filing and within six months of original date

Other procedural remedies may be available

Kazakhstan

March 20, 2020

Open

No visitors

All communication electronic except for those require handwritten signature

No extensions yet

Kosovo

March 20, 2020

Open

Reduced staff

Filing receipts intermittently mailed

No extensions yet

No electronic filing yet

Latvia

March 20, 2020

Open

No visitors

Electronic communication only

Mexico

April 20, 2020

Closed to May 4, 2020

March 24, 2020, through May 30, 2020, inclusive to be deemed non-working days; filings during this period will be accorded date of first working day after this period

Filings and payments can still be made electronically and physically

New Zealand March 27, 2020  Open

All services operational

Requests for extensions due to COVID-19 impact will be addressed on a case-by-case basis

Moldova

May 26, 2020

Closed

Extension period expired on May 15, 2020

Electronic filing possible

Montenegro

March 20, 2020

Open

Awaiting electronic filing enablement

North Macedonia

March 20, 2020

Open

Receiving registered mail, no deadlines extended

Norway

March 25, 2020

Open

Extensions of at least two months will be granted for those affected by COVID-19 outbreak only for deadlines set by NIPO and extensions must be requested prior to original deadline

Restoration of rights petitions to be considered

Poland

March 20, 2020

Open

Hearings postponed

No deadlines postponed

Romania

March 20, 2020

Closed

Deadlines postponed but electronic filing for deadlines is still possible

Russia

March 27, 2020

Closed

The week starting March 30, 2020, is declared a week off and Russian Patent and Trademark Office will not be operational

All deadlines will be extended to next working day

Eurasian Patent office plans to be partly operational and in remote mode, though deadlines will also be extended

Electronic filing recommended in both Eurasian and Russian patent offices due to limited ability to handled paper filings

Hearings in Russian Courts suspended until at least April 10, 2020

Hearings at Rospatent’s Chamber for Patent Discputes to be held remotely until May 8, 2020

Serbia

March 20, 2020

Open

Electronic filing or by mail

No deadlines extended

Slovak Republic

March 20, 2020

Open

No visitors

Electronic filing and mail filing

No deadlines extended yet

Slovenia

March 20, 2020

Open

Electronic filing (for some documents) or by registered mail, fax

No extensions yet

South Africa May 26, 2020
Closed

Extensions lapsed on May 6, 2020

Electronic platforms are still available

South Korea May 26, 2020
Open

Deadlines arising in prosecution matters during the designated period are automatically extended to May 30, 2020; but, this does not apply to national phase filings, Paris Convention filings, requests for examination, request for re-exam against final rejection, and notice of appeal

Revival available if abandonment due to COVID-19 outbreak on request submitted within two months from lapsed date

Expedited review may be available for COVID-19-related inventions
 
Constituents asked to avoid physical visits and use electronic communication means

Switzerland (and unitary Swiss-Liechtenstein patents)

March 25, 2020

Open

Deadlines set by office with date of between March 21, 2020, and April 19, 2020, now expire on April 20, 2020

Statutory and office time limits set in days are suspended from March 21, 2020, until April 19, 2020

Time limits expiring after April 19, 2020, not impacted

Ukraine

March 20, 2020

Open

Meetings with applicants cancelled until further notice

Electronic filing or by mail

No extensions yet

United Kingdom

April 2, 2020

Open

Any deadline falling on March 24, 2020, or later will be extended until the UKIPO notices that the interruption period is ended

No further physical hearings to be scheduled or to take place until June 1, 2020; the office is contacting affected parties

Email services can be used in some circumstances if electronic services not available

Uzbekistan

March 20, 2020

Open

Electronic filing

No extensions yet

Vietnam
 March 31, 2020 Closed

Reports of offices open for in-person filings

All deadlines for registration proceedings (i.e., requests for priority rights, subsequent document submission, responses to NOIP’s Decisions/Notices, requests for annuity/renewal of protection titles, appeals and payment of fees) due between March 30, 2020, and April 30, 2020, will be automatically extended to May 30, 2020

Other relief may be available by request for “force majeure” treatment pursuant to Articles 9.4, 9.5 of Circular No. 01/2007/TT-BKHCN as amended and supplemented by Circular No. 16/2016/TT-BKHCN

The PPH pilot program of this year (2020) between the NOIP and Japan Patent Office (JPO) will start from May 4, 2020, instead of  April 1, 2020

Starting April 1, 2020, all communication between IPVN and the applicants will be via post or efiling system

  

In addition, here are some links that you may find helpful: