(This article is being updated – all new information is below. Contact us if there are any updates that should be added)
Update: 8 April 2020
More updates that brand owners should be aware of:
- The Nigerian IP Office has sent a letter (photo) to local practitioners about the measures it is taking in relation to the covid-19 outbreak. The Nigerian government has ordered a "complete shutdown of activities" in the country, and so the IP registry has extended all actions affected by the lockdown – particularly with respect to applications published in the February 2020 edition of the Trademarks Journal. The suspension will occur until the end of the lockdown period "as declared by the federal government". (H/T @IpNaija)
- The Italian IP Office (UIBM) has contacted WTR to clarify its current status. A representative said: "Our premises have been closed to the public since March 12 due to the pandemic, but the office staff is working remotely and is fully operational. Our services are provided online and on the phone, and our helpdesk is available." Further information can be found on the UIBM website.
Update: 7 April 2020
A few more updates from IP registries around the world:
- The USPTO has posted new information on the extensions of deadlines under the CARES Act. Specifically, a new 'trademarks and TTAB' FAQs page has been published, with various questions that users have requested being answered.
- The Chile IP Office (INAPI) has announced "exceptional measures for its judicial processes". Specifically, Law 21,226 has passed which allows the suspension of hearings (or other actions) in court cases. For its part, the INAPI confirmed various new measures to comply with the new law, including that it will reschedule any suspended proceedings at the "earlier possible date".
- The Korean IP Office (KIPO) has hosted a teleconference meeting with 16 major IP offices to explain the "Korean Covid-19 Quarantine Model". The call, which was held on 6 April, included IP registries from the United States, China, Japan, India and various European countries. A KIPO representative stated that the meeting was a success, adding: "We will actively participate in global efforts for our efforts to share Korean experiences and successful response models in the field of intellectual property with the international community."
- The World IP Association (WIPO) has informed users that the IP offices of Antigua and Barbuda, Italy, Madagascar, Mexico and Tunisia are now closed to the public for the foreseeable future.
- The Belize IP Office has closed for all business and will resume services from 20 April, according to local media. In the meantime, users can send any enquiries (such as about e-filings) to two emails addresses ('[email protected]' and '[email protected]').
Update: 6 April 2020
Further updates that trademark practitioners should be aware of:
- The Singapore IP Office (IPOS) has announced new relief measures related to covid-19. The registry confirmed that, from 7 April, its physical office will be closed, with staff working from home "to support all customers". Furthermore, all filing deadlines are extended until 8 May for any deadlines set between 7 April and 7 May inclusive. Finally, all appointments will be conducted by phone or email, with all business and legal clinics moving to tele-conferencing. Concluding the announcement, the IPOS said: "We ask for your patience and understanding where there may be potential delays in documentation. However, we like to assure you that we are closely monitoring the ever-evolving situation."
- The Djibouti IP Office has suspended all operations until further notice, with deadlines extended "until the trademark office reopens for business".
- The Qatar IP Office has suspended legal deadlines (and related penalties) from 5 April until the foreseeable future. However, this suspension is not applicable "to annuities, examination and grant fees for patents which are paid online". (H/T JAH & Co IP)
Update: 3 April 2020
More updates from the past couple of days:
- The Russian IP Office (Rospatent) has explained to users how its rules for accepting applications has changed due to the coronavirus infection. In a new post, Rospatent confirmed it has temporarily closed some of its offices and that applications (and various types of re-correspondence) can now be sent by email address ('[email protected]') until paper applications are accepted again. Therefore, "an application filed by e-mail is considered as an application filed on paper", so therefore the size of the fee is not reduced. The registry further clarified that any application filed by email "should be presented in the form of scanned copies in PDF format containing the signature of the applicant".
- The Polish IP Office (UPRP) has updated users on measures it has implemented to counteract the effects of the pandemic. The most significant measure is that various IP actions are suspended. For example, filing an objection to a trademark applications with a deadline from 8 March to 30 June is now suspended to 1 July. Furthermore, all court proceedings, administrative proceedings, hearings and public meetings will not be conducted for the foreseeable future. Crucially, authorities conducting these proceedings cannot be "punished, fined or ordered to pay sums of money to the applicants for not issuing decisions within the time limits specified by law".
- The Vietnam IP Office (NOIP) has posted an update on filing IP applications online and by post. Specifically, the NOIP now only accepts online applications or filings sent by post only to its offices in Ho Chi Minh City and Da Nang City. At the same time, all transactions are now stopped at its Hanoi office (from 3 April until the foreseeable future).
- The Cuban IP Office (OCPI) has confirmed various measures it has implemented due to the covid-19 crisis. Firstly, it has suspended deadlines for IP procedures for any that were due to expire in the period from 27 March to 4 May. It is understood that the new deadline resumes from May 5 (the OCPI includes examples in its post). Secondly, the OCPI customer service is now limited to Monday to Thursday from 8am to 12pm.
- The Uzbekistan IP Office has announced that its staff are now working remotely, and it has posted relevant phone numbers for key staff on its website.
- The Sri Lanka IP Office (NIPO) has posted another update on the measures it has implemented. It advised users that wish to file notices of opposition should send a filled-in scanned form and a bank receipt to a new Gmail address ('[email protected]'). Furthermore, it confirmed that three month extensions will be granted to file oppositions (from the date of the gazette publication). To request an extension, users should send it to the above Gmail address "on or before the due date". Finally, the registry also posted contact details of key staff that are now working remotely.
Update: 1 April 2020
Further developments from around the world:
- The USPTO has announced an extension of certain trademark-related timing deadlines as part of the Coronavirus Aid, Relief, and Economic Security Act. Full details can be read on the USPTO website. Broadly, all prosecution deadlines that fall between 27 March and 30 April are now eligible for a 30-day extension. To get one, a party will need to file a statement claiming that the delay us due to the covid-19 pandemic and that someone involved with the prosecution is personally affected – with that definition including things such as office closures, travel delays and family illnesses. Crucially, such deadlines extensions are not possible for actions including inter partes review petitions and original filing deadlines. In a statement announcing the deadline extensions, USPTO director Andrei Iancu said: "Our goal is to ensure not only that inventors and entrepreneurs can weather the storm, but that they can also hit the ground running once it passes."
- The Malaysian IP Office (MyIPO) has confirmed that extensions related to the coronavirus have been extended until 14 April 2020. Therefore, any deadlines set for 1 April are now extended until at least 14 April.
- The Korean IP Office (KIPO) has announced a new video conference with the USPTO to share the current status of covid-19 response and to find better ways to help users. According to the KIPO, it is "the first international video conference" to be organised between two IP offices focused on coronavirus response. Furthermore, the two registries have established a 'hotline' to "quickly share the coronavirus-related trends in the future and continue to discuss preemptive response requirements". Commenting on this development, KIPO director Won-Ju Park said: "In the future, even in this crisis, the KIPO will continue to contribute to solving social problems through rapid international cooperation."
- The Russian IP Office (Rospatent) has temporarily suspended the receiving of correspondence on paper at its office located at Berezhkovskaya Embankment. It urges users to use electronic services.
- The African IP Office (OAPI) has published a letter (in French) with measures it is taking in relation to the coronavirus. A key measure is that most IP-related deadlines that fall between 18 March and 30 April are now extended until 31 May. Furthermore, it confirmed its headquarters is now open only from 8.30am until 1.30pm.
- The Peru IP Office (Indecopi) has eased requirements for those who need to obtain digital certificates for the first time. In a press release, the registry said the relaxation of requirements is for users whose digital certificate has expired and those who request it for the first time. A registry representative said: "The purpose of [this move] is to facilitate remote communications with full legal effect in the current moment of health emergency due to the covid-19 coronavirus, in which face-to-face verification for this type of activity has been suspended by mandate of superior legal regulations."
Update: 31 March 2020
Another update from the past 24 hours:
- The World IP Organisation (WIPO) has sent an alert to users on temporary measures concerning certified documents. It confirmed that, due to ongoing disruptions in postal services across the globe, the International Bureau of WIPO will be delivering electronic versions of various documents for the foreseeable future. The documents, which will be sent in PDF format, are certified copies of certificates of international registration and renewal, attestations, and detailed certified extracts. Paper copies of these documents will be sent "as soon as possible". Furthermore, three services are suspended until further notice: the issuance of simple certified extracts, legalisation of documents, and expedited services. Finally, WIPO added: "Holders of international registrations with a date later than January 1, 2011, and their representatives are reminded that they may download, free of charge, simple copies of their certificates of international registration and renewal using the Madrid Portfolio Manager."
Update: 30 March 2020
Various updates from IP registries around the world:
- The Spanish IP Office (OEPM) has published Royal Decree 463/2020 which addresses how the office will address interruptions due to the Covid-19 crisis. It clarifies that "all kinds of applications will continue to be accepted for processing", although notes that a suspensions are not necessarily granted. For users with current or upcoming IP matters at the OEPM, the resolution is a must read.
- The Portugal IP Office (INPI) has issued another update to its operations. It reminds users that 97% of its employees are now teleworking, and that face-to-face services are now only available by appointment. Furthermore, while most IP deadlines are suspended, users can act within a deadline period because the INPI wants to continue the processing of work as possible. In fact, the office concluded its latest post by saying: "It is important to appeal to everyone that it is increasingly important not to leave until tomorrow what we can do today, even if digitally."
- The French IP Office (INPI) has provided details on a new ordinance in relation to deadlines during the country's state of emergency. Most IP-related deadlines occurring "in the period between 12 March and one month after the end of the state of health emergency" are now postponed by either one month after the end of this period (if the initial period was one month) or two months after the end of this period (if the initial period was two months or more). The INPI acknowledged this could be confusing for users, so expanded: "By way of illustration, this means that if the end of the state of emergency is declared for example on April 28, all the deadlines supposed to end between March 12 and May 28 are postponed to June 28 if the initial deadline was one month and July 28 if the initial period was two months or more." However, the INPI urged users to continue responding to notifications if they can, as the registry expects services to be "clogged up" at the end of the health emergency and INPI staff are continuing to process requests through teleworking.
- The Austrian IP Office (Patentamt) has posted another update, this time confirming that its customer center and deposit box are closed until further notice.
- The Finland IP Office (PRH) has published an update on deadlines for trademarks and designs. "We understand that the coronavirus causes difficulties for customers and therefore want to support applicants in all ways permitted by law," a PRH representative says, adding that some trademark-related deadlines (including filing statements or corrections) cannot be changed. "We will take into account the exceptional situation caused by the coronavirus when we consider deadline extensions," the PRH representative added. "We extend deadlines easier if the customer cannot act by the deadline due to the coronavirus. Customers must pay an extension fee for each extension request."
- The Irish IP Office (IPOI) has confirmed that it will remain closed "for transaction business with the public" until at least 19 April 2020. Therefore, any days until then are deemed to be "excluded days" from deadlines. Furthermore, all IPOI staff are now working remotely and are not able to deal with phone enquiries. Therefore, from 30 March, all enquiries to the IPOI should be made by email ([email protected]) until further notice.
- The Russian IP Office (Rospatent) has posted an update on its services following the Russian government establishing that the period 30 March to 3 April are "non-working days". Therefore, the registry confirmed that any deadline that falls on those dates "will be considered the day of the end of the term" (presumably 4 April).
- The South African IP Office (CIPC) has announced that, due to the national lockdown implemented in the country, it will be closed to the public from 25 March until 30 April. Therefore, all IP deadlines at the CIPC are extended until 1 May 2020. Furthermore, all external-facing CIPC IP systems (including online filing) are not available during the closure dates, while all contact enquiries (including by email and phone) will not be "attended to, processed or responded to" during the time period.
- The African Regional IP Office (ARIPO) has confirmed that its headquarters will be closed from 30 March for 21 days. The move follows the Zimbabwean government mandating a national lockdown during that time. However, the director general of ARIPO added that the registry "remains operational" with staff working from home.
- The Canadian IP Office (CIPO) has published an update on its operations, stating that users should "expect significant delays in all CIPO services". To help reduce the negative impact for users by these delays, the registry confirmed that all deadlines that fall before 30 April 2020 are now extended until 1 May 2020. A further extension could occur depending on circumstances, the registry added.
- The Hong Kong IP Office has confirmed that its special work arrangement are now extended until 5 April. Therefore, like before (see below update), many of its services are running at a limited capacity.
- The Pakistan IP Office has announced that, as of 24 March, its branch and regional offices will be closed for the foreseeable future. Therefore, all hearings (and other meetings) will be rescheduled.
- The Belarus IP Office (NCIP) has confirmed that, from 25 March, its IP consultation center has been "temporarily limited". Therefore, any contact should be via phone instead of in-person.
- The Latvian IP Office (LRPV) has announced that all face-to-face services are restricted until the end of the country's state of emergency. Therefore, users are urged to submit any applications online, by email, or by postal mail.
- The Georgia IP Office (Sakpatenti) has fully switched to remote working mode, it confirmed in a statement. Therefore, users are urged to submit all applications digitally, and pledged that all services will continue to by performed "without delay".
- The Lithuania IP Office has similarly confirmed that all staff are working remotely until at least 13 April.
- The Slovenia IP Office has explained specific measures it has introduced to help users during the covid-19 crisis. Specifically, various time limits "do not run" during the current time period, including deadlines for opposition and maintenance of rights. However, some exceptions do occur for matters deemed to be "urgent", including the issuing of priority certificates for patents, trademarks and designs. Furthermore, the office no longer allows written and oral submissions, and requests all applications to be sent by email.
- The Moldova IP Office (AGEPI) has announced that, from 30 March to 3 April, it will be suspending all activities. Nonetheless, it confirmed that during that period, "the legal regime will apply", suggesting any deadlines on those days will remain in place.
- The Montenegro IP Office (ZISCG) has informed users that all requests and submissions to the registry must be sent electronically by email. For that reason, its primary office is now closed to the public.
- The Croatian IP Office (DZIV) has expanded on measures to prevent the spread of the coronavirus. It confirmed that face-to-face services are suspended from 24 March, with users requested to use the DZIV online, email and phone in the meantime. Furthermore, "due to special circumstances", the registry is unable to provide search services for IP information.
- The Australian IP Office (IP Australia) has written another update on changes needed to ensure it complies with Covid-19 restrictions. Going forward, all hearings are being conducted by video conferencing, telephone or by written submission. It follows the previous update on deadlines earlier this month.
- The El Salvador IP Office (CNR) has confirmed that its offices will remain closed to the public until further notice.
- The Dominican Republic IP Office (ONAPI) has suspended all of its services following the country's declaration of a state of emergency. From 20 March, all of the registry's offices were closed for the foreseeable future, although its online platform remains open. Therefore, all legal deadlines are currently suspended, and will be resumed "within three business days of the end of the state of emergency".
- The Sri Lanka IP Office (NIPO) has confirmed that it plans to re-open its headquarters on 1 April "to attend to some urgent matters". Therefore, any users that have urgent matters or are due payment can request (by email) an appointment on that day (with slots allocated upon a request being received). The registry adds: "When visiting the office please adhere to the health instructions given by the authorities, such as wearing face masks."
- The Brunei Darussalam IP Office (BruIPO) has posted a brief update on measures it has implemented in recent days. "The safety and wellbeing of our guests and customers is always a top priority," an office representative said. "BruIPO have implemented proactive precautionary measures including installing hand disinfectant dispenser and increase sanitization at the reception area. Nonetheless, the reception area will be temporarily closed and BruIPO will only accept documents, filing submissions and payments."
- The Sint Maarten IP Office (BIPSXM) has confirmed that its headquarters will be closed to the public until at least 31 March 2020. Users are therefore urged to contact the office by email, phone or WhatsApp in the meantime.
- The Iraq IP Office has suspended all operations until 11 April.
- The IP registries of Ethiopia and Syria have suspended all operations "until further notice".
- The Tunisia IP Office has extended all deadlines until 6 April 2020, with all operations at the registry suspended until that date.
- The Egypt IP Office has confirmed that all operations are suspended until 8 April.
Update: 27 March 2020
Updates from the United Kingdom and Turkey:
The UK IP Office (UKIPO) has temporarily closed its buildings in Newport and London following government advice aimed at reducing the spread of Coronavirus. The organisation has stated that the majority of its services remain unaffected, with changes to some service processes implemented. The changes include the declaration of a period of ‘interrupted days’ to give rights holders, businesses and IP professionals flexibility until normal business resumes, no processing of business or communication by fax or paper and a new dedicated email address available for services not available online. The full announcement is available here.
Turkish Parliament has approved Law No. 2/2633 adapting the measures to suspend time limits for various administrative and legal proceedings including those concerning IP rights. It came into force upon its publication in yesterday’s (26 March 2020) Turkish Official Gazette. WTR received the following update from Yasemin Aktas, partner at OFO VENTURA: “The Turkish PTO and the legal authorities will fully remain at the disposal and the below measures in the Law are aimed to extend deadlines just in case: (A) Time limits for administrative proceedings, including before the Turkish PTO, expiring between 13 March and 30 April 2020 have been suspended to 1 May 2020. This suspension includes all procedural deadlines from payment of any official fees for obtaining or maintaining any IP rights to filing responses to office actions and from submission of oppositions and appeals to submission of evidences to prove use of opponent’s marks and claiming priority. (B) Time limits for civil legal proceedings expiring between 13 March and 30 April 2020 have been suspended to 1 May 2020. This includes all deadlines irrespective of whether they have been set by the courts or are statutory in nature, from filing civil court actions with infringement, nullification and unfair competition claims to filing court actions for cancellation of the Turkish PTO decisions, from responding court actions and preliminary injunction requests to submission of evidences, from submission objections/statements on expert reports to filing appeals to the decisions of first instance courts, regional courts of justice or court of appeals or responding appeals, from payment of ordered legal fees to starting or maintaining mediation proceedings. By contrast, time limits for proceedings required to conduct preliminary injunction orders are kept out of this suspension measure and will run as usual. (C) Time limits for filing criminal complaints and for conducting search and seizure orders due to infringement and unfair competition actions which are subject to jail and fines will keep running, but all other time limits for subsequent proceedings in criminal legal actions expiring between 13 March and 30 April 2020 have been suspended by 1 May 2020 regardless of whether they have been set by the courts or are statutory in nature. (D) Hearings of civil and criminal court actions falling into this suspension term can be postponed by the courts to any date later than 30 April 2020 (in practice 4 May because 1 May is a public holiday leading into the weekend). (E) The suspended time limits for administrative and legal procedures will start running again after 30 April 2020, with another 15 days extension for the deadlines which would have ended in or less than 15 days to 13 March. In case of continuation of the pandemic, this suspension term may be extended for once up to six months by the president without prejudice to change of its scope and terms."
Update: 25 March 2020
More updates from registries from around the world:
- The KIPO has announced further measures to support applicants "directly and indirectly" affected by the Covid-19 outbreak. In an email to WTR, a KIPO spokesperson said that, regardless of their nationality, applicants whose applications is currently pending before the registry will be granted "an automatic extension" for certain actions (such as submission of written opinion) to 30 April 2020. Applicants will not be required to file a request for this extension to take effect. The KIPO representative added: "This measure also applies to the cases where applicants have failed to observe time limits for certain procedural actions for any reasons relating to the Covid-19, as KIPO will regard such reasons as the causes beyond their control and therefore not imputable to them. All they will be asked to do is just indicating in the statement simply that the cause of such failure relates to the Covid-19. This ex post remedy will also be available up until 30 April 2020."
Yesterday, India's prime minister Narendra Modi imposed a nationwide lockdown in an attempt to slow the spread of the coronavirus – the restrictions to be in place for 21 days. in a public notice issued shortly after India’s Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) noted that it will remain close for a period of 21 days with effect from 25 March. It adds: “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.”
South Africa’s Companies and Intellectual Property Commission (CIPC) has announced that, due to a national lockdown, customers can not currently interact with CIPC, which has also brought forward its financial year end. It anticipates that electronic services will resume on 1 April 2020.
WIPO has contacted WTR with an update on operations, confirming that its UDRP and related ccTLD case capacity remains unchanged, the organisation continuing to process cases. As noted in a recent update, parties are “kindly requested to understand that a degree of flexibility and discretion may be appropriate or necessary in individual case scenarios (eg, in granting extensions).” As before, parties may submit case filings to [email protected], case-specific queries to [email protected] and general questions to [email protected]. A general update on WIPO services is available here.
Update: 23 March 2020
The latest updates from the past few days:
- In a public notice issued earlier today, India’s Office of the Controller General of Patents, Designs and Trademarks has, in view of the concern raised by stakeholders over the submission of documents in time in prevailing conditions, drawn attention to Section 131 of the Trademarks Act 1999, and Rules 109 & 110 of the Trademarks Rules 2017, with regards to extension of time. It states: “Accordingly the applicant can file request for extension of time (now or after situation becomes normal) and such request will be considered by the Registrar in accordance to law”. Additionally, all patent office hearings scheduled to take place between 23 March and 31 March via video conferencing are cancelled and will be rescheduled for a later date.
- Portugal’s INPI has suspended mandatory digital signatures across a range of trademark processes, although digital signatures are still required for oppositions, renewals and registry changes, amongst other things. Portugal has also published Law No. 1-A / 2020, which allows for the suspension of procedural activities and deadlines. The office states, however, that it is operating as normal as possible . in the current state of emergency.
- The Kenya Industrial Property Institute has issued a notice on disruption to services. It notes that a limited number of staff will continue to essential services such as receiving and processing applications, and issuing certificates. Applicants are advised to file applications and other documents via the [email protected] email address.
Update: 20 March 2020
A range of measures have been implemented over the past day:
- The World IP Organisation (WIPO) has released an information notice explaining remedies it has taken in recent days. Key measures include the automatic extension of time limits when a national IP office is not open to the public, and urging all brand owners to "use electronic communication to minigate the negative effects of possible disruptions in mail or delivery services".
- The UK IP Office (UKIPO) has released an update on its measures to tackle the spread of the coronavirus. The registry confirmed that its buildings remain open "for essential work", but that the majority of UKIPO staff are "equipped to work from home". However, it admitted that hearings held at its Aldgate Tower office will be disrupted, with hearings to continue by phone, Skype or other virtual methods, and physical hearings suspended until at least 1 June 2020.
- The Sri Lanka IP Office (NIPO) has issued a notice confirming that it will accept payments through bank transfers "only for urgent matters of trademark, patent or industrial design". On top of that, NIPO director general Geethanjali Ranawaka apologised for the inconvenience but pledged to support the local IP community: "It is important that all of us should work together in order to overcome this situation whilst protecting our employees as well as the general public, who patronize this office. We assure you that upon resuming normal functions we will work hard to achieve our predicted targets."
- The Benelux IP Office (BOIP) has posted an update on its measures to combat coronavirus. Specifically, the registry said that all employees are working from home, its premises are currently closed to the public, and current deadlines are posted. On the latter point, a separate letter was issued that said, from 16 March, "BOIP will not withdraw any requests or procedures because a given deadline has not been met". That measure will be in place "until such time as it is reasonably possible for IP professionals and entrepreneurs in the Benelux countries to work normally again". The registry also warned that, because of the suspension of deadlines, "the register may not reflect the accurate status of certain trademarks".
Update: 19 March 2020
Further measures from IP offices over the past 24 hours:
- The USPTO has announced another measure to help users adapt to 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 related to the Covid-19 outbreak. In a detailed post, 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 Italian IP Office (UIBM) 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).
- The German IP Office (DPMA) has confirmed that its information centres and research rooms will be closed "until further notice". Further, there will be no on-site consultations and no initial consultations for inventors for the foreseeable future. "This measure is necessary to prevent a possible spread of the coronavirus (COVID-19) at the DPMA and to reduce the risk of exposure of staff and visitors," a DPMA representative said. "We ask for your understanding."
- The French IP Office (INPI) has closed all of its buildings to the public, with most staff now working from home. Further, all training organised by INPI has been suspended.
- The Australian IP Office (IP Australia) has written a post reflecting on the "unprecedented situation" caused by the Covid-19 outbreak. In it, IP Australia announced that requests for extensions can be made "in the normal way" and will be considered on a case-by-case basis. However, it added that "some time periods cannot be extended" and suggested that brand owners reach out to IP professionals to check if an extension is possible.
- The New Zealand IP Office (IPONZ) has issued an update on its services during the Covid-19 outbreak. Specifically, the registry says that all services are currently operating as usual, and users can request an extension of time should they be affected by the virus. An IPONZ representative added: "IPONZ’s existing commitment to flexible working means that our staff members already have the tools they need to work remotely. We anticipate that IPONZ will be able to continue providing at least core services, should the need arise for all staff to work remotely."
- The Ireland IP Office has confirmed the closure of its office from 13 March to 29 March. The registry clarified that it will continue to "maintain all of its online and e-services, including e-filing of applications, electronic fee payments and enquiries by telephone and email during normal opening hours".
- The Philippines IP Office (IPOPHL) has confirmed that it has moved to an "online only" service for the time being. From 16 March until 14 April, all manual IP filings are suspended and staff will be working from home. Explaining the move, IPOPHL director general Rowel Barba said: "IPOPHL is closely watching developments to guide us in effectively protecting our employees, our top priority, while still delivering our services to our stakeholders through innovative alternative methods. Despite the month-long work suspension, it will be public service as usual for IPOPHL as my hardworking colleagues and I virtually communicate every day to maintain the quality and nationwide availability of our service."
- The Norway IP Office (NIPO) has announced various measures to help it maintain services while lessening the risk of exposure for staff. The registry confirmed that its customer service centre will "hold normal office hours", but staff will be taking the calls from home. However, in-person meetings cannot be conducted as the NIPO headquarters are closed to the public "until further notice". Further, deadline extensions for "at least two months" will now be granted for designs and trademarks. Finally, if a user fails to meet a specific deadline or loses registered rights during this period, users can now request re-establishment of those rights.
- The Finland IP Office (PRH) has closed its customer service building in Helsinki, with users urged to use the registry's online and telephone services instead. A registry representative said: "We are prepared to carry out our duties as an authority despite the coronavirus outbreak. [Users] an send paper notifications by post or leave them in our mailbox, but it is quicker and cheaper to file online."
- The Portugal IP Office (INPI) has confirmed that all employees will be working from home from 16 March, with face-to-face services only available through pre-scheduling.
- The Austrian IP Office has admitted in an alert that trademark-related services may slow down due to the coronavirus outbreak. "Due to the current exceptional situation, we are forced to change our processes," a registry representative said. "Therefore, there may be delays in the provision of services by the Austrian Patent Office in the area of trademarks (trademark similarity research, pre-check trademark). We strive to limit these to a few individual cases and ask for your understanding." On top of that, all office deadlines in proceedings before the registry (eg, 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" (eg, deadlines for submitting appeals or for paying annual and protection fees) cannot be extended, the registry added.
- The Israel Patent Office has issued an alert that all users (including applicants and attorneys) should not visit the registry's headquarters until further notice. "Due to the situation, physical access should be avoided, except for the submission of documents in the deposit box near the guard position," a registry representative said. "You can contact the Authority by phone as usual, and submit documents online. [Further], until the end of the Passover holiday (19 April 2020), the regular hearings in the Tribunal are cancelled, and new dates will be adjusted by the Tribunal Secretariat."
- The African Regional IP Office (ARIPO) has announced new measures in regard to the Covid-19 outbreak. They include discouraging walk-in enquiries and strongly encouraging users to take advantage of the office's online services and email/phone communications.
- The Kazakhstan IP Office (Kazpatent) has announced that, from 16 March to 15 April, public consultations will no longer be possible at the registry's headquarters. Instead, consultations can be carried out by phone or email.
- The Brazilian IP Office (INPI) has informed users that its face-to-face service is now suspended "for an indefinite period".
- The Chilean IP Office (INAPI) has announced various measures that it is taking in relation to the coronavirus outbreak. These include public opening hours being reduced to only "essential queries and procedures that cannot be carried out by other means", and an extension of terms in administrative procedures.
- The Croatian IP Office (DZIV) has announced internal protocols related to the Covid-19 situation. The key message is that it urges all communications (and filings) with the registry to be conducted digitally.
- The Czech Republic IP Office (UPV) has announced the adoption of emergency measures. From 16 March, its filing office and cash desk have reduced opening hours (from 9:00 to 14:00), while normal office hours are reduced to Monday and Wednesdays from 9:00 to 12:00. The registry urged users to file trademark and design applications online, and for those that must visit the office, added: "Please show consideration to others and use a mask or otherwise cover your nose and mouth during your personal visit."
- The Slovakia IP Office (IPOSR) has confirmed the various measures it has taken following the Slovak government declaring a state of emergency. Specifically, the registry's headquarters is only open to employees for the foreseeable future, and all public information is restricted to phone and email. Furthermore, personal filings are not accepted, with users urged to use electronic or postal submissions to lodge IP applications.
- The Hungary IP Office (HIPO) has published a letter to customers outlining the emergency measures it has taken. The registry confirmed that its face-to-face customer service will be restricted to shorter opening hours, with users urged to consider using email or phone instead. The inspection of documents is now possible "on limited occasions", while all in-person consultations with examiners is suspended "for an indefinite amount of time".
- The Moldova IP Office (AGEPI) has outlined its measures in relations to the pandemic. From 17 March to 15 May, users are urged to file IP applications on the registry's online platform, and that the payment of all fees must be made my bank transfer or through the MPay system. All in-person consultations are suspended, and it is understood that deadlines for proceedings before the AGEPI are suspended until the lifting of the country's state of emergency.
- The Dominican Republic IP Office (ONAPI) has posted a lengthy update on actions that it is taking to mitigate the impact of the Covid-19 pandemic. Measures include "extension of all the legal terms granted to individuals until 31 March", while all ONAPI staff over the age of 60 or those included in risk groups are granted leave with pay.
Update: 18 March 2020
More IP office measures were announced in the past 24 hours:
- The Canadian IP Office (CIPO) has warned users to "expect significant delays" in all services, as operations ramp down. Multiple CIPO offices are no longer receiving correspondence, including those located in Edmonton, Montreal, Toronto and Vancouver. On top of that, all deadlines will be extended until 31 March.
- The Malaysian 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.
- The Ecuador IP Office (SENADI) has announced the closure of its premises from 16 March until further notice, with online filings still continuing. Furthermore, the registry has opened an email address for the filing of submissions ([email protected]) and suspended deadlines that fall between March 16-22. Finally, the registry now allows the payment of filing fees (which was previously only allowed by actual deposits in the bank) through wire transfers to the registry's bank account. The payment change "follows requests by local IP associations requesting urgent acceptance of online payments given that the suspension of terms does not protect IP rights from lapsing for lack of renewal or payment of annuity fees", one local practitioner told WTR.
Update: 17 March 2020
With the coronavirus pandemic continuing to worsen across the world, further measures were announced in the past 24 hours:
- 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".
- The Indian Trademark Registry has announced that it has suspended all hearings related to trademark matters between 17 March and 15 April. These hearings will be rescheduled "in due course", says a registry representative, while any hearings scheduled after 15 April are still planned to go ahead.
- The Intellectual Property Office of the Philippines (IPOPHL) has issued a press release that extends deadlines and confirms affected services until at least 14 April. Specifically, work at the IPOPHL is suspended from this week until 14 April, with a "skeletal workforce" being maintained "to ensure continued delivery of services". While new applications can be filed during this time period, any responses to official actions and other activities (such as appeals and motions for extensions) should be filed on 15 April (and any filed during the quarantine period will be "considered as having been filed on their due dates"). Furthermore, all payments that are due during the quarantine period should be paid on 15 April, while all IP court hearings and services are suspended for the time being.
- The Spanish IP Office (OEPM) has announced that all deadlines for pending proceedings are suspended, and will be resumed when the state of emergency or its extensions finish.
- The Kuwait IP Office has confirmed that it has suspended operations until 26 March, meaning recordal requests or changes to applications cannot be processed until the registry re-opens. However, urgent opposition cases can still be processed, as well as any online functions (including filings and renewals).
- The Saudi Arabia IP Office has announced that it has suspended operations for at least 16 days from 16 March. This development means functions can be undertaken using the registry's digital tools, but delays are "expected". Crucially, though, online trademark searches of the Saudi trademark register cannot be conducted during the quarantine period.
- The Iran IP Office has confirmed it is continuing without service disruption, but has decreased its working hours.
- The Libya IP Office (as well as all courts in the country) is closed until further notice.
Update: 16 March 2020
Over the weekend, more measures were announced by national IP offices:
- The USPTO has announced that, due to the "abundance of caution for the health and safety of the public and USPTO employees", all of its offices will be closed from 16 March 2020 until further notice. Despite that move, all USPTO operations "will continue without interruption", with all patent and trademark-related deadlines not extended.
- The EUIPO has confirmed that it has extended all time limits expiring between 9 March and 30 April have been extended until 1 May 2020, with all staff "given the green light" to move to teleworking. An EUIPO spokesperson added: "It is business as usual for all our activities. We have the tools and technology to keep on working as normal (or as close to it under the circumstances) while at home."
- The Peru IP Office (Indecopi) has announced that it has suspended all public meetings from this week. Alongside that move, all deadlines that were being processed are now suspended.
- Over in Geneva, the World Intellectual Property Organisation (WIPO) has announced that it is now "reserving access" to its headquarters to only personnel who are "essential to the delivery of the organisation’s business continuity protocol". On top of that, it announced that the processing of applications filed via WIPO's IP services are so far "not affected" by the coronavirus outbreak. "WIPO is dedicated to ensuring the health and safety of its personnel, while implementing plans that allow us to continue to deliver our important work program,” said WIPO director general Francis Gurry. "In these worrisome times, the entire WIPO workforce stands in solidarity with the global community as we work together to overcome Covid-19."
Update: 11 March 2020
Further measures have been implemented by national IP offices:
- The UKIPO published a blog on its "robust plans" to maintain services during the coronavirus outbreak. They include extending deadlines for those affected by the virus, granting extensions on a case-by-case basis, and the ability to reinstate IP rights should they be lost due to the outbreak.
- The Italian IP Office (UIBM) published a blog confirming that it was "reorganising its services in the best way possible" to help fight and contain the COVID-19 virus. New measures include suspending its telephone assistance service to allow call centre operators "to activate agile workstations from their homes" and temporarily closing its public-facing service except to file urgent documents.
- The Hungarian Patent Office (HIPO) confirmed that its annual Ányos Jedlik Awards ceremony (scheduled for 15 March 2020) will be postponed, has requested that users contact them by email or phone rather than in person, and that all registry employees will not travel to professional events (including those hosted by the EPO, EUIPO and WIPO).
- The Slovakian IP Office (IPOSR) has urged the public to "eliminate any personal contact with IPOSR employees" and confirmed that the registry's study room is temporarily closed.
Original article: 4 March 2020
The novel coronavirus epidemic is continuing to spread across the globe and some national IP offices have launched measures in response. WTR looks at what has currently been implemented in jurisdictions including China, Hong Kong, South Korea, Vietnam and the European Union.
The number of confirmed cases of the coronavirus (COVID-19) has surpassed 92,000 globally, with 80,100 of those located in China. So far, there have been 3,131 deaths and 48,500 patients fully recovering. At present, the virus has spread to 77 countries around the world, with South Korea (5,186), Iran (2,336), Italy (2,036), Japan (283), France (191), Germany (188), Singapore (108), the United States (103) and Hong Kong (100) the worst affected.
The epidemic has also had a significant impact in the IP world. In terms of mass gatherings, many IP events have been cancelled or postponed in recent weeks, including the INTA Annual Meeting, the IACC Annual Conference, ICANN’s Mexico meeting and – just this week – the MARQUES Spring Meeting. INTA is expected to announce the location of its rescheduled 2020 Annual Meeting in the days ahead. However, with other major international events facing possible cancellation (including the Olympics and Euro 2020) and many companies banning employees from non-essential travel, there could be more hurdles ahead for the INTA (and other IP organisations with scheduled events).
From a brand protection perspective, the outbreak has had a major effect on the counterfeits industry in China. A recent WTR investigation found that the production, trade and shipment of fake goods had virtually ground to a halt – although, with Chinese authorities now “encouraging citizens to return to work”, counterfeit factories and shipping agents are expected to resume operations once again.
However, when it comes to the day-to-day work of trademark professionals, national IP offices are implementing measures to minimise the impact of COVID-19. So far, some registries have announced their plans, with others currently running as normal but drafting contingency plans should the virus spread further in their jurisdiction. For example, a spokesperson from the UK Intellectual Property Office (UKIPO) told WTR: “[We are] monitoring the coronavirus situation closely and have a staged plan in place should the situation escalate nationally. We are following official coronavirus workplace guidance to ensure that we have the appropriate measures in place to help protect our staff and visitors while maintaining services for our customers.”
Also, the EU Intellectual Property Office (EUIPO) has confirmed the postponement of “all meetings and events involving a high number of external stakeholders during the month of March”. Specifically, that includes events such as the 23rd Liaison Meeting on Trademarks, the 28th User Group Meeting and the fifth Anti-scam Meeting. Further, any events or activities planned outside of the EUIPO’s offices (eg, technical visits as part of the European Cooperation Project) are also postponed. A dedicated monitoring committee has also been setup at the EUIPO to follow the situation and take necessary decisions on future measures.
Elsewhere, the Hong Kong IP Office has confirmed that it is strengthening the prevention and control of the virus at its headquarters. The registry announced this week that any member of the public to visit its headquarters will have a body temperature check and will be required to wear a face mask. On top of that, meeting places have been rearranged to “better manage the distance of users” and surfaces are being regularly disinfected. Moreover, the registry is arranging hearing cases by telephone conferencing (or other electronic means) to avoid gathering people in confined areas. The Vietnamese IP Office implemented similar measures last week.
The Hong Kong registry has also extended all patent, design and trademark deadlines for any filing date that fell between 29 January and 21 February. It is understood, though, that – with service resuming at the registry – deadlines that fall after these dates are currently unaffected.
The China National IP Administration (CNIPA) has similarly extended deadlines for any trademark applicant or registrant affected by the coronavirus outbreak. On its website, the CNIPA explained that any time limits for trademark-related matters can be suspended from when a user “was hospitalised or isolated after being infected with the novel coronavirus” or from that date that any business has suspended operations “due to the prevention and control measures”. In those cases, the deadline will be extended “until the date when the infected user is discharged from hospital, or when the isolation ends, or when the business resumes work”. Further, trademark registrants that do not renew their trademark within the extension period due to the epidemic can apply for an additional two-month extension.
In South Korea, the Korean Intellectual Property Office (KIPO) has taken a major step by offering “secure collateral loads for intellectual property of Coronavirus damages”, it announced this week. Specifically, the registry is offering to financially support companies affected by the virus and those helping to tackle it (through vaccine development, prevention and diagnosis). On top of that, the registry has pledged to “improve the examination and review process of patents, trademarks, and designs” and especially conduct “prompt examination” of any patents linked to the coronavirus. Finally, the KIPO is conducting “emergency monitoring” on counterfeit goods that could impede the recovery and health of citizens at risk of the virus. “These measures are what the patent office can take right now to respond to CO-19,” commented KIPO president Won Joo Park. “We will concentrate all our capabilities to protect the health and safety of our citizens and minimise the damage to our companies.”
As the virus spreads to more countries around the world, it is expected that a greater number of national IP offices will be introducing measures to offset the impact. For now, trademark professionals are urged to keep an eye on IP office alerts – while COVID-19 is causing chaos at many businesses and law firms, some registries are taking proactive steps to help ensure users are as unaffected as possible.