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Coronavirus - Intellectual Property office protocols and key challenges in light of COVID-19 - Global

  • Global
  • Coronavirus - Country overview
  • Intellectual property

03-04-2020

The coronavirus outbreak and various responses by authorities across the globe have prompted several amendments to government Intellectual Property Offices (“IPOs”), courts, and in some cases filing deadline extensions. These special measures are meant to offer some level of flexibility to IP rights-holders whilst they are working under unprecedented conditions, but can also present new challenges for managing IP portfolios.

Latest IP office protocols

The World Intellectual Property Organization (“WIPO”), the body responsible for the International Registration system, has released communications relating to trademark and registered design matters. These communications address existing remedies available for extending a response deadline which otherwise fall on a day when either the WIPO or an IPO of a contracting party is not open to the public. So far, no set extensions of time have yet been issued by WIPO.

Individual IPOs are making their own announcements regarding the developing situation via their websites. To help you identify and keep track of IPO updates, we have compiled local information from across our global IP team into one useful resource. While we will be updating this information frequently, be sure to check directly with your government entity to ensure you have the most current information regarding deadlines and requirements.

Key challenges for trademark/IP owners

Proactive portfolio/upcoming deadline reviews

Owners of pending (or even registered) trademarks, designs, and patentsare likely to face official deadlines relating to their applications over the next few months. Automatic extensions of deadlines falling during the Covid-19 outbreak are not available at all IPOs. As a result, appointed representatives should now be proactively reviewing their client’s trademark portfolios and requesting extensions (where necessary) for any deadlines falling over the new few months whilst businesses may not be fully operational due to current working arrangements.

Impact on business decisions and budget commitments for businesses

The financial uncertainty and impact on businesses as a result of the Covid-19 outbreak will undoubtedly impact business decisions and prioritisation of legal spend. While financial spend on IP portfolios may be deemed low priority as businesses face many other challenges stemming from the Covid-19 outbreak, IP portfolios still need maintenance and attention, even in these times, as the consequence of missing deadlines or other requirements could have a devastating impact on the protection of a company’s valuable intellectual properties once COVID-19 is behind us.

Impact on collation of evidence

Supporting evidence is often required in support of actions, including examination responses, oppositions and cancellation actions, and trademark owners may face deadlines for filing such evidence, depending on the country and the approach adopted by the local registry.  Again, the current remote working arrangements that most businesses have implemented makes the collation of evidence (particularly across jurisdictions) extremely difficult and impact timings.

Administrative issues with a new remote workforce

The current remote working arrangements that most businesses have implemented as a result of the Covid-19 outbreak can result in some administrative difficulties and vulnerabilities. Examples include retrieving original signed documents, obtaining signatures from authorised officers within the business in relation to documents such as witness statements, as well as agreements and Power of Attorney documents.