Intellectual property agencies worldwide are adapting their practices in response to the vast financial and logistical disruptions experienced by many businesses during the COVID-19 crisis.
We have summarised some of the measures put in place by various trade mark offices in response to the COVID-19 pandemic below.
As from 22 April 2020, applicants who have a trademark application or opposition underfoot and are unable to meet a deadline due to disruptions relating to the COVID-19 outbreak can now apply to IP Australia for a free extension of time of up to three months (known as a “streamlined extension”).
The streamlined extensions are available until at least 31 May 2020.
The streamlined extensions apply to any time period that can currently be extended under Australia trademark legislation, with some exceptions, such as:
payment of trademark renewal fees (note that the grace period is still available);
deadlines for Headstart applications;
extensions of time for acceptance that are granted without requiring any reason for extension;
deadlines relating to Madrid Protocol or Madrid Agreement applications;
six-month priority period; and
time periods in matters before a Court or the Administrative Appeals Tribunal.
If an applicant needs to extend a deadline that is not covered by streamlined extensions, ordinary extensions of time are still available for application (and are granted at IP Australia’s discretion).
Applications for the streamlined extension must be made via IP Australia’s eServices portal and must include a simple declaration that the applicant is unable to meet the deadline due to the COVID-19 pandemic. IP Australia has provided a standard declaration text available here.
Applicants may still be required to pay extension fees to submit a streamlined extension. If the applicant has paid an extension fee, IP Australia will refund those fees as soon as possible.
If an applicant needs to extend a period for longer than three months, a streamlined extension should be sought first, and an ordinary extension can be sought at a later date (and will be granted at IP Australia’s discretion).
Keep in mind that all hearings are now being conducted by video conference, telephone or written submission. IP Australia is contacting all parties involved in ongoing proceedings. Also, as IP Australia’s physical offices are closed, the online eServices platform must be used to file a document or make a payment.
International Registrations - Word Intellectual Property Office (WIPO)
If an applicant is unable to meet a time limit for a particular WIPO communication because postal or electronic communication services are disrupted by the COVID-19 crisis, applicants will be excused if that communication is sent to WIPO within five (5) days after regaining access to postal or electronic communication services, and, in any event, within six (6) months of the deadline.
WIPO has now waived the requirement for applicants to provide evidence of their reasons for failing to meet the deadline.
Further, if applicants miss certain processing deadlines but submit to WIPO the relevant form to apply for ‘continued processing’ within two (2) months of the deadline and meet any other requirements, WIPO will continue processing the application instead of treating it as abandoned or cancelled. This applies in respect of the following processing deadlines:
time limits to remedy an international application;
a request for the recording, amendment or cancellation of the recording of a license;
a subsequent designation;
a request for the recording of cancellation, limitation or a change to the international registration,
pay the second part of an individual fee;
file a request for continuation of effects in a successor State.
Note that WIPO has suspended all postal communications. Original certificates (including certified copies of registrations or renewals) will be posted at a later date. WIPO has also suspended the issuance of simple certified extracts, the legalization of documents, and expedited services.
The UK Intellectual Property Office (UK IPO) has announced that trademark deadlines which fall on and from 24 March 2020 will be automatically extended until otherwise notified by the UK IPO. The UK IPO refers to all days from 24 March 2020 as ‘interrupted days’.
The extension only applies to time periods that are set out in the UK IPO’s rules. As trade mark priority applications do not fall within the scope of these rules, no extension is applied to the six (6) month priority window.
This also means that if the opposition period for a mark ends on an ‘interrupted day’, the opposition period will be effectively extended until the first working day that is not an ‘interrupted day’ – which may extend the usual timeframe for achieving registration.
The UK IPO will review the above arrangements on 7 May 2020 and will provide at least 2 weeks’ notice before ending the current interrupted day arrangement. This effectively means that deadlines have been extended until at least 21 May 2020.
For new examination reports, the UK IPO will extend the two-month default period to respond to four months (noting that the interrupted day period still applies to deadlines that fall during the period of interruption).
As the UK IPO’s physical offices are closed, all filings and fee payments should be made via the online services. Any documents that are filed by post will be given the date of receipt as a provisional filing date.
The European Union Intellectual Property Office (EUIPO) announced that all deadlines that expire between 9 March 2020 and 30 April 2020 inclusive that effect all parties in proceedings before the EUIPO are automatically extended until 1 May 2020 (in practice, 4 May 2020).
For example, the following time limits are covered by the extension:
Payment of application and opposition fees;
Right of Priority;
Request for Renewal;
Filing of an Appeal and of the Statement of Grounds, payment of the Appeal Fee;
Conversion of application.
Note that proceedings before authorities other than the EUIPO are not covered by the extension.
The EUIPO also will not issue any notifications for insufficient funds in current EUIPO payment accounts until the end of the period of extension.
United States of America
In the US, an eligible document or fee that was or is due to the United States Patents and Trademarks Office (USPTO) between 27 March 2020 and 31 May 2020 (inclusive) will be deemed timely if filed on or before 1 June 2020.
However, the filing must be accompanied by a statement that the COVID-19 outbreak ‘materially interfered’ with timely filing or payment.
The statement needn’t be certified or verified, nor in affidavit or declaration form, but should be either included in the document when filed or provided in the relevant TEAS or ESTAA form.
The USPTO has advised that circumstances that qualify as materially interfering with timely filing or payment include, without limitation, “office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances”.
The USPTO has advised that the following filings (amongst others) are eligible for the extension:
response to an Office action, including a notice of appeal from a final refusal;
statement of use or request for extension of time to file a statement of use;
some priority filing bases;
some affidavits of use or excusable non-use; and
The USPTO has also waived the petition fee to revive applications/registrations which are abandoned or cancelled/expired as a result of an applicant being unable to submit a timely response or payment in response to a USPTO communication with a deadline of 31 May 2020 (or earlier) as a result of the effects of the COVID-19 outbreak.
A petition to revive the application can be submitted (not later than two months after the issue date of the notice of abandonment or cancellation) but must be accompanied by a statement explaining how the failure to respond to the communication was due to the COVID-19 outbreak.
All of the above offices have warned users to expect delays in processing applications and responding to communications.
If you have any questions or are experience difficulties with any trademark applications, oppositions, or other filing or procedural requirements, please contact Blueprint Law via our website or give Tania Loiseau or Karina Vasili a call on +61 (2) 9300 3100.