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Intellectual Property Extensions Resulting from Coronavirus

By Todd Benni of McDonald Hopkins & Julia G. Radefeld of McDonald Hopkins on March 25, 2020
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United States Patent and Trademark Office-USPTO

Currently, the USPTO is not offering extensions to patent and trademark application deadlines. The USPTO is, however, offering fee waivers to those affected by the coronavirus in the following situations:

  • Petitions to Revive Patent Applications: applicants who were unable to timely reply to an Office communication due to the effects of the coronavirus outbreak, which resulted in the application being held abandoned or the reexamination prosecution terminated, may file a petition along with a statement to waive the fee.
  • Petitions to Revive Trademark Applications and Registrations: applicants or owners who were unable to timely respond to a trademark-related Office communication as a result of the effects of the coronavirus outbreak may file a petition along with a statement to waive the fee.

Canadian IP Office-CIPO

The CIPO is experiencing significant delays in all services. Further, all deadlines will be extended until March 31.

European Union IP Office-EUIPO

The EUIPO extended deadlines until May 1. The extension applies to all decisions falling within the timeframe of March 9-April 30.

European Patent Office-EPO

The EPO will grant parties an extension of all deadlines until April 17, noting that the extension may extend beyond that date.

UK Intellectual Property Office-UK IPO

The Office will extend time periods where national and international legislation allow, noting that it is willing to support local affected customers using discretionary powers available. The Office is willing to consider requests for extensions of time or revival of loss of rights on a case-by-case basis.

Intellectual Property Office of Ireland-IPOI

The Office is closed until March 29. Accordingly, the time between is deemed “excluded days” and all deadlines are extended until the Office opens on March 30.

Italian IP Office-UIBM

Any certificates and IP titles that expire between January 31 and April 15 will remain valid until June 15, not including international trademark applications.

Austrian IP Office

All office deadlines in proceedings before the registry (notice periods) are extended by two months without the need for users to request a further extension. However, all deadlines “directly resulting from the law” (deadlines for submitting appeals or for paying annual and protection fees) cannot be extended.

Australian IP Office

Requests for extensions can be made “in the normal way” and will be considered on a case-by-case basis.

New Zealand IP Office-IPONZ

All services are currently operating as usual, and users can request an extension of time should they be affected by the virus.

Norway IP Office-NIPO

Deadline extensions for at least two months will be granted for designs and trademarks. Further, if a user fails to meet a specific deadline or loses registered rights during this period, users may request re-establishment of those rights.

Malaysian IP Office

All priority deadlines for manual filings are extended until April 1, while deadlines relating to appeals, oppositions, and payments are extended until April 30.

Ecuador IP Office-SENADI

All deadlines that fall between March 16-March 22 are suspended.

Intellectual Property Office of the Philippines (IPOPHL)

All deadlines are extended until at least April 14th.

Spanish IP Office-OEPM

All deadlines for pending proceedings are suspended and will be resumed when the state of emergency or its extensions finish.

Argentina-National Intellectual Property Institute

The office has suspended all deadlines until April 3, noting that they may extend further.

Brazilian IP Office

All deadlines that fall between March 16 – April 14 are suspended.

Dominican Republic IP Office – ONAPI

All legal terms are extended until March 31.

Photo of Todd Benni of McDonald Hopkins Todd Benni of McDonald Hopkins

Todd is the chair of McDonald Hopkins’ Patent and IP Prosecution and Management Practice Groups, and has a wide range of experience in advising both domestic and international clients in all areas of intellectual property law. Todd focuses his practices on assisting clients…

Todd is the chair of McDonald Hopkins’ Patent and IP Prosecution and Management Practice Groups, and has a wide range of experience in advising both domestic and international clients in all areas of intellectual property law. Todd focuses his practices on assisting clients in obtaining, managing, and protecting all types of intellectual property rights. In particular, he assists clients in strategic client counseling and preparation of legal opinions on all intellectual property matters, domestic and foreign patent preparation and procurement in the mechanical, electro-mechanical, and business method arts, preparation and procurement of domestic and foreign trademarks, and acquiring and managing domestic and foreign domain names.

Todd also has extensive experience in providing legal advice and counseling to clients regarding a wide variety of advertising issues, such as CAN-SPAM, COPPA, sweepstakes, websites privacy policies, and terms of use of websites. Todd also works with e-commerce related clients in assisting them with their intellectual property and advertising issues.

Before joining McDonald Hopkins, Todd served as Senior Managing Counsel, IP, Advertising and Licensing for a leading global supplier of office products and services.

Todd earned a J.D., cum laude, from the University of Pittsburgh School of Law in 1998, where he served as business manager and editor of the Journal of Law and Commerce. He received a B.S. in industrial engineering from Purdue University in 1995.

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Photo of Julia G. Radefeld of McDonald Hopkins Julia G. Radefeld of McDonald Hopkins

Julia G. Radefeld is an associate in McDonald Hopkins’ Intellectual Property Department.

Julia worked previously as an associate attorney in the intellectual property group at a firm in Canton, Ohio, where she prepared and prosecuted domestic and foreign patents primarily in the electro-mechanical…

Julia G. Radefeld is an associate in McDonald Hopkins’ Intellectual Property Department.

Julia worked previously as an associate attorney in the intellectual property group at a firm in Canton, Ohio, where she prepared and prosecuted domestic and foreign patents primarily in the electro-mechanical fields, prepared and prosecuted trademark applications, supported intellectual property litigation, reviewed software licenses for use of open source software, and drafted and reviewed nondisclosure agreements, cease and desist letters, and IP license agreements.

Prior to pursuing a career in intellectual property law, Julia worked as a metallurgical engineer at The Timken Company and The TimkenSteel Corporation. Her roles included application development, failure analysis, quality, and advanced product and process development with a focus on automotive applications. Her corporate industry experiences as engineer equip her to both understand client needs and add value to their businesses.

Julia earned her J.D. from The University of Akron in 2017 with a certificate in Intellectual Property and the CALI Excellence Award for business planning law. She completed her BSE in Materials Science and Engineering at Case Western Reserve University in 2011.

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  • Posted in:
    Intellectual Property
  • Blog:
    ILN IP Insider
  • Organization:
    International Lawyers Network
  • Article: View Original Source

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