DCC COVID-19 Resource Centre

DCC COVID-19 Resource Centre 

Our thoughts are with everyone whose lives and businesses have been affected by COVID-19.

In accordance with government recommendations and to support the health and wellbeing of our people, clients and the community around us, we have implemented working from home for all of our staff with only a small team in our Australian offices.

All of our offices in Australia, New Zealand and Singapore continue to operate as normal providing the same high standards of service our clients have experienced for the last 140 years.

Our COVID-19 Resource Centre aims to assist you in providing legal updates as they arise.

Helpful links on this page:

IP Office Updates

Latest edition of the DCCL COVID-19 Resource Centre

Legal Updates and resources 

IP Office Updates

This resource is provided as a guide only as to the measures being taken by national IP offices to deal with the COVID-19 pandemic. Before making any decisions that may have a material effect on your, or your client’s, IP portfolio we strongly recommend that you seek advice from an IP specialist in each jurisdiction regarding extensions of due dates or savings measures that may be provided for.

Australia

The Australian IP Office (IP Australia) announced on 22 April 2020 that three month extensions of time in order to complete necessary actions for patents, trade marks, designs and plant breeders rights can be secured free of charge and through a streamlined process using the IP Australia eServices online platform, which does not require the provision of any written explanation. Such extension of time applications will be automatically granted between at least 22 April and 30 September 2020, but will not be applicable to the payment of renewal fees, where the normal six month grace period for payment applies.

The Australian Federal Court initially vacated every Court listing for FY20 that requires in person attendance, including mediations and listings relying on video link from court premises, unless specifically exempted by the Court. However, on 7 April 2020 the Court published special measures for appeals and full court hearings and on 16 June 2020 the Court published special measures to be taken to facilitate court attendance in response to COVID-19.

Bangladesh  The Bangladesh Department of Patents, Designs and Trademarks (DPDT) and the Bangladesh Copyright Office, as well as all Government and private offices, will remain shut from March 26 to April 14. All deadlines within the period March 26 to April 14 are extended automatically to April 15, 2020.
China

According to the official interpretation issued on March 27, 2020, the force majeure relief under the Announcement No. 350 of The Chinese Intellectual Property Office (CNIPA) applies to all foreign parties, including patent applicants, patentees, or their patent attorneys. Under Announcement No. 350 of CNIPA, all the official deadlines before CNIPA, except for the time limit for claiming priority, for grace period of not losing novelty, for bringing a law suit for patent infringement and the expired term of patent rights, could be restored if they have been missed due to the COVID-19 outbreak occurred in the applicant’s, patentee’s or his patent attorney’s location.

Importantly, the time limit for claiming priority cannot be restored. If you have a patent application to be filed in China via Paris Convention route, it shall be filed in China before 12 months (for patent and utility model application) or 6 months (for design application) from the earliest priority date. While for a patent application to be filed in China via PCT route, the missed deadline for entering Chinese national phase can be restored, even after the expiration of 32-month from the earliest priority date.

For seeking the force majeure relief, the patent applicant or patentee needs to make a restoration request and complete the relevant formalities without paying official fees. Meanwhile, the patent applicant or patentee needs to state the reason and provide the related evidence produced in his jurisdiction.

Germany 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. Time limits on pending cases set by the P and TM office extended to 4 May 2020. DPMA will take the circumstances surrounding the COVID-19 pandemic into consideration when considering requests for extensions of time.   Arbitration Board hearings have been extended to May 15.  Although the German courts have not responded uniformly to the pandemic, several hearings before various courts have been postponed.
India The Indian Government has extended a complete nationwide shutdown until 17 May, 2020, during which time the Indian Patent and Trade Marks Offices will be closed. The Controller General has announced that all deadlines will be automatically extended or extended with petitions upon re-opening to 1 June 2020. However, the Indian Supreme Court has ruled that the extension notification by the IP Office is ultra vires to an earlier Supreme Court order and that as a result all deadlines would be extended until a further order or notice from the Court, which is yet to be provided, but won’t be earlier than 30 July 2020. The Indian Patent and Trade Mark Office has now confirmed that all deadlines falling due after 15 March 2020 are currently suspended. All online services of the trade marks office are open during the shutdown period. Trademark searches can be conducted, trademark applications and replies to examination reports can be filed online. All notices of opposition and counter statements can be filed after executing them in-house and filing them on-line. For meeting all evidence affidavits deadlines, unsigned affidavit or affidavit with electronic signature can be filed. Notarization is not mandatory during this period. Electronic signature in all documents are valid and will be recognized.
Indonesia The Indonesian Directorate General of Intellectual Property has decided to temporarily close the office and restrict their services until 29 May, 2020. To facilitate this discretion, all deadlines from 23 March to 21 May 2020 for proceedings which only available through manual system will be extended until after 21 May 2020. The deadline for payment of excess claims fees on patent cases filed after 19 August 2019 is extended until 29 May 2020 when the office re-opens as these fees cannot be paid online. Despite the restriction of services by the Directorate General of Intellectual Property, all proceedings which are available through online system will be handled as usual and all other deadlines will continue to be carefully monitored.
Japan The Japanese Patent Office (JPO) announced on 3 April that extension of due dates are available in relation to patents, trade marks, utility models and designs. A detailed outline of the complex provisions governing the deadlines that can be extended, the nature of action that must be taken and in what timeframe, is provided here.
Laos  On March 29, the Prime Minister’s office initiated sweeping lockdown measures across the whole country of non-essential services, nominally until April 12 (which in practice extends through April 19, due to upcoming public holidays). The Ministry of Science and Technology has confirmed that the Department of Intellectual Property is not deemed essential work, and will be closed from April 1, currently scheduled to reopen on April 20 subject to any further extensions.
Malaysia The Malaysian IP Office is closed until 9 June 2020, although e-filing for new trademark filings is still available. All priority deadlines for manual filings can be made by appointment, while all appeals, oppositions and payment deadlines are extended until after 9 June 2020. 
New Zealand 

The Intellectual Property Office of New Zealand (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.
Deadlines on patent and trade mark matters with falling up until 31 July 2020 are subject to automatic extension. For deadlines falling after 31 July extensions of time can be requested and will be favourably considered if the owner is impacted by COVID-19.

Until further notice, and subject to certain conditions, the Hearings Office will accept unsworn evidence in trade mark matters in order to meet an evidence deadline in a proceeding.

Papua New Guinea The IP Office of Papua New Guinea (IPPNG) will be temporarily shut for 14 days from 28 July. During this time IPPNG will be closed for business and any documents submitted will remain pending until the office resumes operations on 8 August 2020.
Philippines IPOPHL will resume limited operations from 25 May 2020 and will then accept electronic filings and payments. Deadlines falling from 16 March 2020 to 31 March 2020 initially extended until 31 May 2020, are further extended until 30 June 2020. Deadlines falling from 01 April 2020 to 30 April 2020, initially extended for sixty (60) days, are further extended until 30 June 2020 and deadlines falling from 01 May 2020 to 30 June 2020 will be extended until 30 July 2020. 
Singapore  All deadlines stipulated by IPOS falling between 7 April to 4 June 4 2020 inclusive will be extended to 5 June 5 2020, regardless of whether such responses or documents are filed electronically or in paper. This will include deadlines to respond to deficiency letters or examination reports, deadlines to file for renewal, deadlines to submit requests for reinstatement, and deadlines to file notices of opposition or requests for extensions of time to file an opposition.
South Korea Although the Korean Intellectual Property Office (KIPO) continues to work at full capacity, as of March 31, 2020, it has announced that it will be extending designated deadlines falling in the period between March 31 – April 29 to April 30, to accommodate applicants who may have difficulty in meeting KIPO’s deadlines.  It has further announced that deadlines falling in the period 30 April 2020 to 30 May 2020 will be automatically extended until 1 June 2020 (as 31 May 2020 is a Sunday). However, these ex officio extensions are not applicable to the statutory periods prescribed by patent/trademark laws or treaties, such as the 31-month time limit for a PCT national phase entry in Korea, the deadline for requesting a substantive examination for patent applications, the deadline for responding to a final rejection, the deadline for responding to a preliminary rejection against an international trademark application, a deadline to file an opposition in a trademark matter, etc.
United Kingdom  The United Kingdom IP Office (UKIPO) has previously advised that all days from 24 March onwards are “interrupted days” that are automatically extended until the next non-interrupted day and that the extension applies at least until 6 July 2020. The UKIPO has now confirmed that the disruption period will come to an end on 29 July 2020 such that action will need to be taken by 30 July 2020. The interruption only applies to deadlines set out in UK Acts and Rules and non-statutory UK deadlines. The interruption does not apply to time periods set out under international IP treaties (PCT, EPC, Madrid) where the UKIPO acts as receiving office. Notwithstanding the interruption, the UK IPO remains operational, will allocate filing dates for newly filed cases as normal and encourages meeting original deadlines where possible.
USA

The United States Patent and Trademarks Office (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. For patents and trademarks, a due date that falls between and includes March 27 and May 31 will be extended to 1 July 2020. To obtain the extension, the filing must be accompanied by a statement that the delay in filing or payment was due to the COVID19 outbreak. Although these extensions apply to most USPTO due dates, the extensions do not apply to all due dates. A delay is due to COVID19 if the attorney, applicant, patent owner, petitioner, inventor, or other person associated with the filing or fee payment was personally affected by the COVID19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment. The list specifically calls out the interruption of cash flow as a legitimate cause for requesting a delay.

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 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 USPTO also announced on 8 May 2020 a pilot program to assist small and medium sized businesses to innovate in response to COVID-19 in the development of treatment or prevention of the disease. For patent applications that cover a product or process that is subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19, the USPTO will grant requests for prioritized examination to patent applicants that qualify for small or micro entity status, without the need for payment of the typical fees associated with other prioritized examination. In addition, the USPTO will endeavor to reach final disposition of applications in this program within six months if applicants respond promptly to communications from the USPTO.

Vietnam Due to the Covid-19 pandemic, the IP Office of Vietnam has issued a notice extending deadlines for IP acquisition procedures. In particular, all deadlines falling in the period from March 30, 2020 through April 30,2020 will be extended to May 30, 2020. This applies to IP procedures like claiming priorities, submission of documents, response to Office Actions/Notices, renewals and annuities, payment of fees, and appeals. From 26 May 2020 to the end of 31 December 2020, the official fees for a number of fee items are being reduced by 50%.
WIPO (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. 

 

Click here to view the complete World IP Office Updates. 

DCC Resource Centre: Issue 11

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