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COVID-19 Patent & Trademark Office Updates

Because of COVID-19, patent and trademark offices worldwide are extending application deadlines, waiving fees for late payments, and suspending hearings and proceedings. We are closely monitoring these changes and will post regular updates to this page.

 

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Patent & Trademark Office Updates

Last updated September 16, 2021

Australia

August 24, 2021: Hearings are being conducted by video conference, telephone, or written submission. If you believe that an in-person hearing is essential, please contact IP Australia.

April 1, 2021: Until March 31, 2021, we had a streamlined process available to request extensions of time. Applicants now have to provide a reason in writing to request an extension. To assist you to prepare your declaration, a sample declaration is available.

February 15, 2021: Extensions of time will remain available after 31 March for those impacted by the COVID-19 outbreak. Subject to any further developments in the pandemic, however, requests will then be considered on a case-by-case basis.

February 15, 2021: Where legislation requires it, we must give the other party in an opposition matter an opportunity to comment on the request for an extension of time. The comments must be made by way of written submissions only and must be submitted to IP Australia in seven business days.

April 1, 2020: Starting April 1, IP Australia’s staff will no longer be able to accept documents or payments in person. Please use the eServices platform available 24-7 for filing and payments. 

 

Canada

March 28, 2021: Whenever CIPO is closed for business, including closures due to extraordinary circumstances, CIPO considers all time limits to be extended until the next day that it is open for business. In such situations, mail delivered to CIPO or to the designated regional offices will be considered to be received on the date that CIPO reopens for business.

August 19, 2020: Deadlines set in the Trademarks Act, Trademarks Regulations or by the Registrar in a proceeding before the Trademarks Opposition Board that fell between March 16 and August 28 now fall on August 31.

April 27, 2020: Orders for intellectual property documents have resumed on April 27. Clients should expect delays in the processing of their requests as CIPO works to fulfill orders in the backlog.

 

China

June 30, 2020: The EPO and CNIPA have built a strategic partnership to support the fight against COVID-19 by enriching public patent databases and making sources of patent information available. CNIPA has restored rights, reduced requested certification materials and waived fees for overdue patent annual fee payment.

April 20, 2020: CNIPA will properly handle the extension of time limit on international Patent Cooperation Treaty (PCT) applications by reference to relevant interpretations and suggestions released by WIPO.

April 7, 2020: CNIPA is clarifying relief measures for parties exceeding the time limits for handling affairs in relation to patents, trademarks and layout-designs of integrated circuits as a result of the epidemic. 

March 26, 2020: The National Intellectual Property Administration rejected 328 applications for novel coronavirus-related trademarks and allowed the withdrawal of 866 filings. The administration issued a new rule to tighten the censorship of such trademark applications. 

 

European Patent Office (EPO)

August 2, 2021: EPO has adopted revised measures for oral proceedings before the Boards of Appeal due to COVID-19:

  • Visitors are strongly recommended to self-test for COVID-19 before visiting the premises of the Boards of Appeal in Haar or the Isar building.
  • Attendance is generally restricted to a maximum of two people per party. Parties wishing to attend with more than two people should submit a reasoned request to that effect in advance of the oral proceedings. It will be for the board to decide on their request.
  • Visitors wishing to enter the buildings must complete a simple self-declaration form, which they should do in advance of their arrival.

June 17, 2021: Due to the recent increase in disruptions caused by the COVID-19 outbreak, attention is drawn anew to the legal remedies provided for under the EPC and under the PCT in cases of non-observance of time limits:

  • Any document received late will be deemed to have been received in due time if the person concerned offers evidence that on any of the ten days preceding the day of expiry of a period, it was not possible to observe the time limit due to this exceptional occurrence and that the mailing or the transmission was effected at the latest on the fifth day after the end of the disruption.
  • As for time limits and conditions applicable under the PCT, where the interested party offers satisfactory evidence that a time limit under the PCT was not met due to natural calamity where the interested party resides, has his place of business or is staying, and that the relevant action was taken as soon as reasonably possible (and no later than six months after expiry of the time limit in question), the delay in meeting the time limit is excused. This provision applies to international applications pending in the international phase, but not to the priority period.

May 21, 2021: The EPO has decided to hold oral proceedings before opposition divisions by videoconference starting January 4, 2021. Where there are serious reasons preventing the use of VICO in opposition, oral proceedings will be postponed until after January 31, 2022. As of March 24, 2021, the President of the EPO has decided that in order to guarantee access to justice and ensure the functioning of the EPO, oral proceedings before examining and opposition divisions will continue to be held by videoconference without requiring the agreement of the parties.

April 1, 2021: As of April 1, 2021, the Boards of Appeal have again reassessed some of their measures for the arrangement and conduct of oral proceedings:

  • The Board may decide to hold oral proceedings by videoconference if the Board considers it appropriate to do so, either upon request by a party or of its own motion.
  • Where oral proceedings are scheduled to be held on the premises of the European Patent Office, a party, representative or accompanying person may, upon request, be allowed to attend by videoconference.
  • The Chair in the particular appeal and, with the agreement of that Chair, any other member of the Board in the particular appeal may participate in the oral proceedings by videoconference.

March 22, 2021: The EPO is asking all visitors from abroad to abstain from visiting the EPO if they have recently visited a high risk area, unless they confirm they had a negative result from a test that was taken at the earliest on the fifth day after they left the high-risk area. Earlier tests cannot be accepted. Visitors will be required to sign a declaration of the areas visited in the two weeks prior to their planned visit to the Office.

November 11, 2020: Regarding expiration of time limits for fee payment, including renewal fees, any document received late will be excused if the person offers evidence that on any of the ten days preceding the day of expiration of a period, it was not possible to observe the time limit due to an exceptional occurrence and that the mailing or transmission was effected, at the latest, on the fifth day after the end of the disruption.

October 1, 2020: In most cases, the filing of a priority document in paper form is not required. Many of these services are free of charge. Moreover, if a priority document is not issued in an electronic form accepted by the EPO and has to be filed in paper form, applicants may file a scan of the paper priority document first.

October 1, 2020: The EPO issues priority documents and certified copies of European patent applications or European patent specifications as well as other documents from the files of European applications and patents in paper format only. This service is being maintained during the ongoing COVID-19 crisis and documents are continuing to be sent to applicants via the postal service.

July 30, 2020: The EPO has postponed all oral proceedings in examination and opposition proceedings scheduled until December 31 unless they have already been confirmed to take place by means of videoconferencing.

July 16, 2020: The EPO has built strategic partnerships with the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO) and the China National Intellectual Property Administration (CNIPA) to support the fight against COVID-19 by enriching public patent databases and making sources of patent information available.

April 1, 2020: European applications, international applications under the PCT and subsequent submissions can be filed using one of the EPO's electronic filing tools or by fax. The use of email to perform procedural acts is restricted (the EPO only allows email submissions during telephone consultations and interviews and oral proceedings held as a video conference).

March 27, 2020: Decisions, summonses, notices and communications from EPO must be signed by, and state the name of, the employee responsible. The signature can be replaced by an EPO seal if the document concerned is produced using a computer. As of April 1, the EPO will implement a mechanism to electronically authenticate decisions and other documents relevant to the decision-making process.

March 27, 2020: For health and safety reasons, all our customer service agents have been fully equipped to work from home. Our customer services helpdesk remains fully operational and available to answer your questions.

 

India

September 7, 2021: See the withdrawal of patent applications (form 29) and fees refunded during January-March 2021 here.

June 30, 2021: ln Pursuance of the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance 2021, the Intellectual Property Appellate Board stands dissolved with effect from April 4, 2021. Please find additional details on the ordinance here.

May 21, 2021: India’s Office of the Controller General of Patents, Designs and Trademarks will remain closed to the public until May 17. The due dates for various acts/proceedings, filing of any reply/document, payment of fees, etc. after March 25 will be decided/ordered by the Honorable High Court of Delhi. E-filing will remain unaffected and be available 24-7.


February 11, 2021: India’s Office of the Controller General of Patents, Designs and Trademarks has released Patents (Amendment) Rules 2021.

 

Mexico

December 7, 2020: IMPI and USPTO announced the launch of the Parallel Patent Grant (PPG) initiative. Under this new worksharing arrangement, IMPI will expedite the grant of a Mexican patent for businesses and individuals already granted a corresponding U.S. patent.

July 3, 2020: Starting July 6, IMPI is resuming services in all offices. From July 6-10, IMPI will receive all documents, which will be considered submitted on July 13. Standard procedural deadlines will be resumed on July 13.

June 8, 2020: IMPI has created an online portal that allows patent, utility model and industrial design files to be managed electronically. This new service is available in Online Patent on the IMPI portal.

New Zealand

April 12, 2021: If COVID-19 has affected your ability to respond to a request for information or make a fee or annual renewal payment for Plant Variety Rights, please contact the PVRO directly. Each situation will be considered separately and any requests will be treated with due consideration. Should you wish to contact the PVRO regarding an application, we recommend that you use the IPONZ online system to identify the Examiner responsible for that variety and then communicate directly with that person. PVRO will continue to closely monitor system and email queries. All Examiners are currently working as normal. DUS testing and establishment of growing trials are also currently proceeding as normal. 

July 16, 2020: IPONZ will no longer provide automatic extensions for cases and tasks whose due dates take place after July 31. IPONZ will still accept requests for extension of time, but on a case-by-case basis. In cases where circumstances related to COVID-19 have affected the ability to respond by a given deadline, we recommend that the request provides specific details of these circumstances. Such requests will be treated favorably by IPONZ.

July 16, 2020: IPONZ will no longer provide automatic extensions for proceedings tasks that require the submission of evidence. Extensions of time may be requested if the owner is impacted by COVID-19.

April 15, 2020: If you have corresponded in relation to a time-sensitive matter within the prescribed time, you may not receive a response within the typical time period. Rest assured that any deadline will be treated as having been conditionally met and our delay in processing will be taken into account.

 

South Africa

August 30, 2021: CIPC is transitioning approximately 7.2 million Companies, Close Corporations, Patents, Trade Marks, Copyright, Cooperatives and Designs files to a new bulk storage facility, which is slated to take four months. As a result, various CIPC business units impacted by this transition will continue to experience delays in file retrievals, which will negatively influence external service delivery standards and turnaround times.

August 30, 2021: The Protection of Personal Information Act, 4 of 2013 (“POPIA”) came into operation on the 1st of July 2021, with various requirements applicable to both public and private bodies.

August 24, 2021: In order to improve the efficiency of processing External Company Registration applications, the CIPC has re-confirmed the documentary requirements for such process as well as highlighting some general guidance to the content of such applications. Please view this notice.

August 23, 2021: In order to minimize delay in the registration of applications submitted via mailboxes moiamendments@cipc.co.za or JSEapplications@cipc.co.za, CIPC will require, in addition to the supporting documents for the current application, copies of the recent registered application with proof of the current shares, if such application was submitted before June 1, 2014.

July 23, 2021: The CIPC is currently managing a File Transition Project during which +/- 7.2 million Company, Close Corporation, Patents, Trade Marks, Copyrights, Cooperatives and Designs etc. files will be moved to a new bulk storage facility, over a period of 4 months, starting Monday, July 26, 2021. Due to handover of files between current service provider and new service provider, files requested by CIPC on daily/weekly basis will be retrieved but will take a bit longer to be submitted to CIPC. Customers must please not resubmit a request previously submitted as this will result in billing duplication. Customers who have previously enquired about the status of their disclosure requests, are urged to be patient.

July 16, 2021: CIPC will be closed to the public from 10am on Friday, December 24, 2021 through Friday, December 31, 2021.

July 13, 2021: Kindly be advised that the Enterprise Search on e-Services will be discontinued from July 13, 2021. Due to the POPI Act, CIPC needs to be able to determine who is conducting searches on the CIPC database. Customers will be able to do searches on BizPortal once they have logged in. The number of searches will be limited to 20 per day to prevent abuse of the systems and data. Kindly note that CIPC will soon be introducing a subscription service for customers who require to do high volumes of searches per day.

July 12, 2021: In May 2011 the Companies Act came into effect, which came with many new provisions which were not part of the 1973 Act. Amongst the new provisions is the rotation of auditors after the expiration of five years.

June 29, 2021: On June 27, 2021, South Africa will move to an adjusted level 4 lockdown with effect from Monday, June 28, 2021 until July 11, 2021, after which the status quo of the country regarding the delta variant of COVID-19 will be assessed and the lockdown level reviewed.

May 25, 2021: As of June 7, 2021, CIPC will be launching the automation of Business Rescue Proceedings, Business Rescue Practitioner Licensing, and Business Rescue Practitioner Appointments. The New E-Services will be the only available channel for submission of such applications. From June 7, 2021, CIPC will no longer accept the submission of such applications via email.

February 25, 2021: Effective from April 1, 2021, CIPC will no longer be accepting manually completed primary Co-operative registrations submitted through email or post. Primary Co-operative registration applications completed and submitted via these channels will on or after this date be automatically rejected without further communication to the customer.

February 24, 2021: CIPC will be introducing a new registration system called K2 (automated processes) to simplify the processes across its service provision on March 1, 2021. This includes Name Reservation, Co-operative and Private company registration in a fully automated environment as a first phase. Customers will enjoy a seamless registration process that will allow the quickest processing of applications with faster turnaround times. The current registration process will run concurrently with the new process until further communication is issued.

February 5, 2021: CIPC has been informed that the Department of Public Works are receiving high volume of requests for “no objection letters” where the company or close corporation does not have immovable property. The Department of Public Works should only be contacted for such "no objection letter" when the company or close corporation has immovable property registered in its name, as reflected on the Multiple Deed Search (for all 10 regional deeds offices).

February 4, 2021: CIPC has noted that the volume of non-application documents and e-mails to the various business rescue processing mailboxes have increased, which is hampering the ability of CIPC to process the relevant applications in a timely matter. Specific applications and documents must be submitted to the indicated mailboxes. Lastly, all enquiries and follow-ups must be submitted via the CIPC online ticketing system, not to email mailboxes.

December 9, 2020: CIPC’s Cape Town Office will be closed to the public until further notice in compliance with Covid-19 regulations.

November 13, 2020: All new cooperatives applications lodged directly or by the third party on behalf of the cooperatives are required to upload only the signed pages of the Co-op1; Constitution and certified id copies (certification date to be within 3 months, smart id to be copied both side in the same page). The only exception applies to financial services cooperatives where permission must be obtained from CBDA (Co-operative Bank Development Agency). The entire financial service constitution must be uploaded.

October 30, 2020: With the move of South Africa to lockdown level 1 and the restart of the economy, it is imperative that all entities recommence with their regulatory compliance obligations
as of December 1, 2020. CIPC will enforce penalties for late filings of Annual Returns starting December 1, 2020.

October 9, 2020: CIPC has developed a functionality to register Co-operatives online in order to provide excellent service and faster turnaround times.

September 28, 2020: To improve CIPC’s service turnaround times, we have created dedicated emails for submission of applications relating to amendments. This will enable us to shorten the process and thereby directing the applications to the relevant teams.

July 15, 2020: CIPC will change the method of issuing confirmation of business rescue proceedings matters. A letter will be issued confirming that the application was received and processed. Thus, the CIPC will no longer issue a stamped copy of the submitted application as confirmation for such applications.

July 15, 2020: CIPC will change the method of issuing confirmation of business rescue proceedings matters. A letter will be issued confirming that the application was received and processed. Thus, the CIPC will no longer issue a stamped copy of the submitted application as confirmation for such applications.

June 2, 2020: CIPC walk-in centers plan to reopen offices to the public by June 8 but the Cape Town office will remain closed until further notice.

May 19, 2020: The CIPC call center is now open to the public. The current system does not allow for call waiting, therefore if all call center agents are busy, your call may be cut. Please redial to be assisted.

 

South Korea

June 16, 2020: KIPO and the EPO have built a strategic partnership to support the fight against COVID-19 by enriching public patent databases and making sources of patent information available.

April 28, 2020: If the designated periods for patents, utility models, designs and/or trademarks ends between April 30 and May 30, the deadline will be extended until May 31.

March 24, 2020: KIPO announced a grant of deadline extension for applicants who have failed to comply with the statutory time limits for submitting documents or paying fees to KIPO, for reasons relating to the coronavirus.

 

Taiwan

July 20, 2021: In response to the revision of the Nice Classification, TIPO has amended its own list of Designated Names of Goods and Services for Trademark Registration. Recent changes have been implemented as of July 1, 2021. Applicants are advised to download the updated list featuring all incorporated changes. Filling out an application with names of goods and services not found on the system’s current list means missing out on a fee reduction of NT$300.

March 24, 2021: For the “Program for Hearing Patent Invalidation Cases” to proceed smoothly and to prevent continuous submission of litigant documents that change the reason(s) for the allegation or combination of the evidence—which may lead to disputes during the hearing process—TIPO has decided to modify this point of the program. This took effect on February 8, 2021.

January 21, 2021: To help small and medium-sized enterprises (SMEs) expand their repertoire of foreign patents, TIPO has introduced a new service that offers consultations specifically aimed at SMEs applying for patents overseas. This measure will hopefully allow such businesses to gain a foothold in foreign markets and boost their competitiveness globally.

January 15, 2021: We have now reverted to two-month time periods to respond to first examination reports where the first examination report is issued 3½ years or more after the earliest date of the application. This will apply to reports issued from November 9, 2020 onwards. We will be flexible when it comes to allowing extensions if COVID-19 has caused you difficulties. There is no fee for requesting more time.

January 5, 2021: In order to expedite the patent acquisition process for startups, TIPO has implemented the “Positive Patent Examination Pilot Program for Startup Companies” on January 5. This will give priority to invention patent applications filed by newly established companies. Where there are grounds for rejecting an invention patent application, TIPO will subsequently inform the filing applicant of those grounds and provide advice on application amendments via so-called “positive interviews.”

November 27, 2020: To promote a more widespread use of copyrighted works whose authors are unknown, TIPO has started offering a free “copyright holder search notice” publication service. This service will allow applicants to more conveniently and efficiently meet the requirements for the use of works whose authors are unknown.

September 1, 2020: TIPO has introduced the Operational Directions for the Processing of Third-Party Observations on Invention Patent Applications, which came into effect on September 1. This will encourage third parties to submit prior art concerning the patentability of an invention after the publishing of patent applications 18 months following the earliest effective filing date. TIPO will also provide convenient access to third-party observation application forms via Taiwan’s Patent Search System.

June 17, 2020: An applicant filing a written request for reinstatement should state the delay of statutory time period is due to the Covid-19 pandemic and provide evidence thereof. While requesting for reinstatement, the applicant shall concurrently fulfill all obligations that should have been fulfilled within the concerned time period. These cases will be determined leniently on a case-by-case basis.

May 28, 2020: As a response to the spread of COVID-19 around the world, TIPO offers the following services:

  • A pandemic prevention section has been established in TIPO’s Global Patent Search System to help the industry quickly learn key information about pandemic prevention technologies globally.
  • TIPO consultation hotlines will help applicants conduct trademark searches and make recommendations on their applications. The service is available from now until May 31, and may be extended.
  • TIPO has released drug approval status and patent information of 52 potential medications in the limelight around the globe for combating COVID-19.
  • If patent or trademark applicants fail to comply within a statutory time period for application and other procedures due to COVID-19, the applicants may ask TIPO for reinstatement upon presenting documents as evidence. In principle, such cases will be determined leniently.
  • TIPO still provides patent and trademark consultation services via phone during the outbreak. Applicants also may file patent and trademark applications online with reduced fees.

March 2, 2020: Patent and trademark applicants may ask for reinstatement accompanied by the documents of proof if failing to comply within a statutory time period due to COVID-19. Such cases will be determined leniently on a case-by-case basis.

United Kingdom

August 17, 2021: From August 23, 2021, all fees paid online to the IPO using a credit or debit card will be made using the GOV.UK Pay service. Deposit account holders’ payment options will not change.

July 14, 2021: A new digital renewals service that slashes bulk renewal time for IP rights from 5 days to 5 minutes has now been opened up to all customers by the IPO. The service is the first example of the Intellectual Property Office’s ‘One IPO’ service’, providing a single, integrated renewal service across all registered IP rights. For the first time, customers who need to renew a registered design can do so online. Customers can also renew up to 1,500 IP rights, including combinations of patents, trademarks and designs in a single digital transaction.

June 16, 2021: Customers with EU trademarks and design applications that were pending on January 1, 2021 can file for a UK right and claim the earlier filing date. This service is only available until September 30, 2021. The usual fees for trademarks and designs apply.

June 7, 2021: The UK government has launched a consultation to collect views on the UK’s future regime for exhaustion of IP rights. See the UK’s future exhaustion of intellectual property rights regime consultation for further information and how to respond.

April 1, 2021: The Patent Cooperation Treaty (PCT) fee structure is changing on May 1, 2021. Please see the IPO website for the updated fee structure.

April 1, 2021: There is no change in practice in relation to the lapsing of rights. For example, where the renewal period has ended in relation to a trade mark or design, then it will be marked as expired on the register. Note that the proprietor may still renew the right late within the six-month surcharge period following the end of the renewal period. There is no change to the periods in which intellectual property rights can be restored or the safeguards which may be available to third parties when rights are restored.

April 1, 2021: If you renew your IP right on or after April 1, 2021 and this is after the renewal date then you may need to pay a late payment surcharge. For patent and design renewals the late payment surcharge is calculated based on the renewal date.

April 1, 2021: Where reasons are required to support a request for an extension of time or a late payment, the Office will try to support those applicants who have been affected by the Covid-19 pandemic. This will continue to be the case after the temporary fee changes have ended.

April 1, 2021: From July 30, 2020 to March 31, 2021, the temporary fee changes were in place for patents, trademarks and registered designs in order help ease the financial burden caused by COVID-19. Any actions taken on or after April 1, 2021 will require the usual fee. Please see the IPO’s forms and fees pages for full details.

March 2, 2021: To support customers affected by the pandemic, the IPO will extend time periods where national and international legislation allows. The IPO is willing to consider requests for extensions of time as favorably as possible on a case-by-case basis. Where a failure to meet a time period has resulted in a loss of rights, those rights may be reinstated or restored in certain circumstances; IPO staff can explain the options available and how reinstatement or restoration procedures work.

January 31, 2021: UKIPO is now issuing paper certified office copies (COCs) by post. The e-mailing of COCs was temporary to ensure customers were able to receive these documents when access to workplaces was limited by the pandemic. If you still cannot access documents delivered by post, we can provide your COCs digitally if you request it. Please be aware that some IP Offices are no longer accepting priority documents in this format. We will not be issuing duplicated copies (in both paper and digital formats) as a matter of course. For patent COCs we encourage customers to use WIPO’s online Priority Document Access Service (PDAS) where possible.

January 15, 2021: We have now reverted to two-month time periods to respond to first examination reports where the first examination report is issued 3½ years or more after the earliest date of the application. This will apply to reports issued from November 9, 2020 onwards. We will be flexible when it comes to allowing extensions if COVID-19 has caused you difficulties. There is no fee for requesting more time.

January 7, 2021: Following the introduction of new restrictions, as part of the national lockdown in England, the IPO’s London office has been closed to all but critical workers with immediate effect. Customers are unable to gain access to file in person. It also means that the London post room is not operating so no paperwork will be processed after January 7, 2021. The London office will remain closed at least until February 18, 2021 when current restrictions will be reviewed.

January 4, 2021: With the transition period relating to the UK’s exit from the EU ending on December 31, 2020, we have created a UK specific database and classification system to specify the goods and/or services you are seeking protection for. This service will allow you to search for the goods and services you intend to use your trademark on before you apply.


IPO Changes After January 1, 2021

The transition period ends on December 31, 2020. On January 1, 2021 there will be changes to UK intellectual property law to ensure the smooth departure from EU IP systems:

  • From January 1, 2021, UK attorneys will be unable to represent clients on new applications or new proceedings at the EU Intellectual Property Office (EUIPO). UK trade mark owners will need to appoint an EEA attorney to represent them on new applications and proceedings before the EUIPO.
  • The IPO are considering making changes to the rules on correspondence addresses (‘address for service’ - AfS) at the end of the transition period.

TRADEMARKS

On January 1, 2021, the IPO will create a comparable UK trademark for every registered EU trademark (EUTM). Each of these UK rights will:

  • be recorded on the UK trade mark register
  • have the same legal status as if you had applied for and registered it under UK law
  • keep the original EUTM filing date
  • keep the original priority or UK seniority dates
  • be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM

You will not:

  • need to file an application for this right or pay an application fee.
  • receive a UK registration certificate.

DESIGNS

On January 1, 2021, the IPO will create a re-registered design for every Registered Community design (RCD). Each of these rights will:

  • be recorded on the UK designs register
  • have the same legal status as if you had applied for and registered it under UK law
  • keep the original RCD filing date
  • keep the original priority date
  • be a fully independent UK design that can be challenged, assigned, licensed or renewed separately from the original RCD.

You will not:

  • need to file an application for this right or pay an application fee.
  • receive a UK registration certificate.

INTERNATIONAL TRADEMARKS & DESIGNS

International designs designating the EU will continue to have protection in the UK under the terms of the Withdrawal Agreement.

On January 1, 2021, the IPO will create:

  • ‘a comparable UK trademark for every international trademark (EU) that is protected at the end of the transition period’
  • a re-registered UK design for every international design (EU) that is protected at the end of the transition period

Where an international trademark or design designating the EU has been applied for, but is not yet protected, the holder will have a period of nine months to apply for the same right as a UK trademark or design. UK application fees will be payable, and the application will be subject to UK examination requirements and for trademarks publication requirements.

UNREGISTERED DESIGNS

Unregistered community designs that arise before the end of the transition period will continue to be protected in the UK for the remainder of their three year term through continuing unregistered designs. From January 1, 2021, a supplementary unregistered design (SUD) will become available in UK law.

The SUD will provide similar protection to that conferred by the unregistered Community design, but for the UK only.

PATENTS

You can apply for a European patent through us or direct to the European Patent Office (EPO) to protect your patent in more than 30 countries in Europe, using the (non-EU) European Patent Convention (EPC).


SUPPLEMENTARY PROTECTION CERTIFICATES (SPCs)

SPCs are granted as national rather than EU-wide rights. It was not necessary for the UK and the EU to agree the creation of a comparable right to ensure continued protection of existing SPCs in the UK at the end of the transition period.

The Withdrawal Agreement ensures that SPC applications which are pending at the end of the transition period will be examined under the current framework.

Any SPC which is granted based on those applications will provide the same protection as existing SPCs.

Changes affecting SPCs due to the Northern Ireland Protocol: Due to regulatory changes for marketing authorizations, there are some changes to the SPC application process which will come into effect from January 1. You will need to check whether your marketing authorization is valid for the whole of the UK, or just Northern Ireland or Great Britain. An application for an SPC must still be filed with the IPO within six months of your first authorization.

PARALLEL TRADE BETWEEN THE UK AND THE EEA

The IP rights in goods placed on the UK market by, or with the consent of the right holder after the transition period may no longer be considered exhausted in the EEA. This means that businesses parallel exporting these IP-protected goods from the UK to the EEA might need the right holder’s consent.

ACTIONS FOR PARALLEL EXPORTERS OF IP-PROTECTED GOOD TO THE EEA

Check whether you currently export legitimate, IP-protected goods to the EEA. These could be goods branded with a trade mark that have already been placed on the UK market. The rights holder’s permission to export those goods may not currently be required. You may need to contact the rights holder to get permission to continue exporting these goods after January 1, 2021.

COPYRIGHT

Most UK copyright works will still be protected in the EU and the UK. This is because of the UK’s continued participation in the international treaties on copyright.

For the same reason, EU copyright works will continue to be protected in the UK. This applies to works made before and after January 1, 2021. Current cross-border copyright arrangements unique to EU member states will stop at end of the transition period.

GEOGRAPHICAL INDICATIONS

The Department for Environment, Food and Rural Affairs (Defra) leads on agricultural and food Geographical Indications (GIs) in the UK. They have published guidance, including the new UK GI schemes which will come into force on January 1, 2021.

October 28, 2020: Today, IPO has launched its new trade mark pre-application service. It is a new online tool to help individuals and businesses improve their chances of successfully registering a trade mark. It is aimed at people who have not applied for a trade mark before, and have little or no knowledge of the application process.

Customers can use the tool before they apply for a trade mark to:

  • check if anyone already has a trade mark too similar to the one they want
  • identify whether aspects of their proposed trade mark are not appropriate, such as offensive words or protected symbols (for example, geographical indications)
  • identify the right groups of goods and services for their proposed trade mark
  • see an estimate of their application costs

The tool is designed around customer feedback and features artificial intelligence (AI) powered checks and searches to produce meaningful, tailored and helpful results.

July 30, 2020: We are now working to our usual deadlines. For parties who are currently involved in proceedings with the tribunal, they should adhere to the timetable advised. Further correspondence will be issued when they get to the next evidential round. Extensions of time should be filed in the normal manner (Form TM9 and accompanying reasons). 

July 30, 2020: From August 3, UKIPO will start issuing patent renewal letters. Where we have agreement to do so from the addressee we will do this by email; all other patent renewal letters will be posted. Please proactively manage renewals rather than relying on these letters. 

May 4, 2020: If you have filed or are thinking of filing a new PCT international application, we are doing the following to help:

  • waiving the late surcharge fee if you do not pay your fees when filing your PCT application.
  • using existing PCT regulations to excuse delays in meeting deadlines due to the impact of COVID-19.
  • corresponding digitally where possible as we know that many of you are working from home. WIPO are also no longer using postal services during this period.
  • we are speaking to WIPO and other IP Offices about ways we can help customers during this difficult time.

April 2: While we have limited access to our sites, we are not able to hold hearings in person. This will be kept under review. In the meantime, we will continue to operate hearings via telephone, Skype or other virtual methods.

We have contacted parties if their current hearing arrangements need to change. Some hearings, such as cross-examination, may not be suitable for telephone, Skype or other virtual methods and may need to be postponed.

United States of America

July 1, 2021: USPTO announces final rule to eliminate handwritten signature requirement for registration to practice before the Office and other matters within the purview of the Office of Enrollment and Discipline (OED), and payments by credit card.

May 13, 2021: USPTO is offering relief for applications on appeal or involved in an opposition before the Trademark Trial and Appeal Board (TTAB) if the applications were examined under the USPTO’s COVID-19 Prioritized Trademark Examination Program. There are no additional fees or requirements for applicants to meet to be involved in the relief offered.

April 14, 2021: USPTO announced that the Patent Trial and Appeal Board (PTAB) will soon accept petitions for expedited resolution of ex parte appeals for COVID-related inventions. There is no cost for appeals related to COVID-19 in this pilot program, which starts on April 15, 2021.

April 12, 2021: USPTO will accept circumstances related to COVID-19 as excusable nonuse in trademark maintenance filings. If you think this applies to you, when you file your section 8 or section 71 declaration, you must provide a statement that includes the following:

  • An explanation of how COVID-19 has affected you or your business and caused you to temporarily stop using your trademark for the products and services covered by your registration
  • The date your trademark was last used
  • The steps you're taking to resume use, and
  • The approximate date you expect to resume using your trademark.

February 1, 2021: USPTO has published an Official Gazette Notice setting forth conditions under which the USPTO will suspend the requirement for filing the certified copy of the foreign application. The application must have been filed in a foreign IP office that does not participate in a bilateral or multilateral priority document exchange program with the USPTO that would cover the application and thus permit retrieval through the program.

December 7, 2020: The USPTO and the Mexican Institute of Industrial Property (IMPI) today announced the launch of the Parallel Patent Grant (PPG) initiative. Under this new worksharing arrangement, IMPI will expedite the grant of a Mexican patent for businesses and individuals already granted a corresponding U.S. patent.

November 30, 2020: USPTO encourages customers to submit requests for copies of certified and uncertified patents and trademarks using the Certified Copy Center (CCC) storefront on the USPTO website. Beginning January 1, 2021, the USPTO will direct all email and fax requests to its CCC storefront.

September 16, 2020: USPTO announced a collaborative deferred-fee provisional patent application pilot program for inventions that combat COVID-19. The program is scheduled to accept applications for 12 months beginning on September 17, 2020.

June 15, 2020: USPTO announced a new COVID-19 prioritized examination program for certain trademark and service mark applications. The USPTO will accept petitions to advance the initial examination of applications for marks used to identify qualifying COVID-19 medical products and services. Additionally, the USPTO will waive the fee for such petitions. To qualify for the new program, the application must cover a product that is subject to U.S. FDA approval for use in the prevention and/or treatment of COVID-19 or a medical or medical research service for the prevention and/or treatment of COVID-19.

June 3, 2020: USPTO launched the COVID-19 Response Resource Center to provide stakeholders with improved access to USPTO initiatives, programs, and other helpful intellectual property (IP)-related information regarding the COVID-19 outbreak.

May 8, 2020: USPTO announced a new COVID-19 Prioritized Examination Pilot Program, where grant requests for prioritized examination will be given to patent applicants that qualify for small or micro entity status without payment of the typical fees associated with other prioritized examination. The USPTO will try to reach final disposition of applications in this program within six months. To qualify for the new program, the claims of an application must 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.

May 6, 2020: USPTO will temporarily permit the filing of plant patent applications and follow-on documents via the USPTO patent electronic filing systems further notice. 

March 19, 2020: The USPTO is waiving the requirements for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.

March 19, 2020: The USPTO is waiving petition fees in certain situations for customers impacted by COVID-19.

 

World Intellectual Property Organization (WIPO)

September 22, 2020: The WIPO Pearl terminology database has added some 1,500 new COVID-19-related terms in 10 languages, helping innovators targeting new coronavirus treatments and diagnostics with a baseline set of terms and their multilingual equivalents. This advancement will foster international collaboration and promote easier access to information in patent documents and other public resources produced around the world.

May 5, 2020: WIPO has launched a COVID-19 Policy Tracker, which provides information on measures adopted by IP offices around the world in response to the COVID-19 pandemic, such as the extension of deadlines. 

April 9, 2020: WIPO offices are physically closed for non-essential staff and all meetings are postponed or canceled through the end of May, with updates to follow.

 


Disclaimer: These are general guidelines and are changing daily. If you have questions on specific cases or upcoming deadlines, please reach out to us immediately:

Steven Prewitt 
sprewitt@schwabe.com
503.796.2844