World adapting to COVID-19

 

Editor’s Note: The team at Dilworth IP has been engaged in conversations with colleagues across the intellectual property community over the last month, including in-house counsel, corporate leaders and outside counsel across the United States and worldwide. As part of our commitment to the IP community, we occasionally publish updates on the state of the industry and our take on where the world of IP innovation is heading. We hope you find these insights from across the world of IP helpful during these exceedingly complex times.

 

International Perspectives on COVID-19 and Patent Practice:
On-the-Ground Insights from IP Counsel Around the World

On May 6th, Benjamin Lehberger, Partner with Dilworth IP, moderated a panel of worldwide IP counsel from Europe, Japan, India and Canada to learn how COVID-19 is impacting intellectual property filings and practices. Key themes the panel discussed included how patent offices in these specific jurisdictions are responding to the pandemic; recommendations for U.S. companies with international patent and trademark filings; and insights into how the current response to the pandemic may change patent and trademark practice going forward. The panelists included Erik Bolmsjö of Ström & Gulliksson in Sweden; Sungyup (Hans) Chung of SOEI Patent & Law Firm in Japan; Deepak Pawar of Stratjuris Law Partners in India; and Louis-Pierre Gravelle of ROBIC in Canada.

The following are selected highlights of the discussion.

Note: To view the webinar in its entirety, please visit the webinar recording here.

 

What official actions are the various IP offices in your jurisdictions taking in response to the pandemic?

In the United States, the U.S. Patent & Trademark Office (USPTO) has taken a phased approach and applied new policies consistently when announced. So far, there have been two major extensions applied to most (but not all) deadlines. The key requirement is to include a statement verifying that you or your business was impacted by COVID-19, but that is defined very broadly and may include situations as wide-ranging as office closure, inaccessibility of files, illness, cash flow interruptions, etc. However, the USPTO changes announced thus far do not apply to patent application filings. Another major shift is that most hearings with the PTO are now via phone or video.

 

The European Patent Office (EPO) has also executed a series of office-wide shifts, originally extending many deadlines to April 17th and now automatically extending them to June 2nd, both for applications and the payment of annuities, without the need to fileCOVID-19 impact statement like in the USPTO. Currently, there is discussion that the June 2nd deadline may also be extended. There are exceptions to the extensions, however, just as there are in the U.S. Generally speaking, the EPO is running smoothly and operations are operating at roughly the same pace they were pre-COVID in areas such as searches, office reports and other administrative activities.

 

The situation in Japan is considerably different. It may surprise some, but while Japan is a global leader in technology and innovation, the prevailing business and government culture of Japan is tightly intertwined with in-person presence and physical processes, which has found the Japan Patent Office (JPO) struggling to adapt. Presently, JPO personnel cannot access official email and networks from home, and some processes still must be performed manually or in-person. In addition, the Japanese system is structured to give far more discretion or flexibility in variable interpretations and decisions to the patent examiners. For example, instead of establishing an office-wide policy on revised deadlines or extensions, the JPO has generally taken the approach of authorizing individual examiners to extend deadlines on a case-by-case basis as they see fit. Therefore, it is essential to coordinate very closely with your Japanese associate in order to determine how best to proceed on each matter individually.

 

In Canada, there have been three different announcements so far, and changes are made office-wide, similar to the European and U.S. models. The three deadline extensions experienced so far have extended to March, April and now May. Any deadline that previously fell between the noted periods in the extensions were automatically pushed back to the first day the Canadian Patent Office (CPO) is open for business (which is currently May 19th since the 18th is a statutory holiday in Quebec, where the CPO is located). In essence, it’s like having a really long weekend — in other words, it’s an automatic change, not a petition-based change. The office will accept late responses automatically as if they were filed at the right time. It is advisable, however, to specify in the response the reason why it is being filed after the original due date so that, in the distant future, the delay will be readily apparent and documented in the file history.

 

Operationally speaking, the CPO took about two weeks to shift gears and adjust to the new environment, but the CPO already had some experience with examiners working from home. Patent appeal board hearings are now taking place online whereas they previously (usually) took place in person. Note that the overall deadlines like one-year grace periods for patent application filings are not extended (there are some other deadlines that are also not extended, so make sure to check with your Canadian patent counsel). Dies non juridicus applies under most conditions, and nearly anything can be filed electronically.

 

One interesting point discussed was that in most cases, clients are not waiting and taking advantage of the additional time. In fact, the general consensus among counsel is that there will be a backlog to be addressed once operations re-set back to something resembling prior models, and as a result it is better to be ahead of the pack, rather than behind it.

 

What else is impacting IP activities worldwide right now?

In the United States, the U.S. Court of Appeals for the Federal Circuit is operational but all hearings are being conducted by phone during this calendar period. District courts are pretty much stalled at this point. Federal courts have different rules by state or circuit, but in Connecticut all civil and criminal hearings through June 15th are off the calendar. Parties can request exceptions but doing so only really applies in time-critical criminal cases. Another thing impacting U.S. operations is notarization since that’s an in-person event. At this stage, some states such as Connecticut are allowing notarization by video as long as it’s a livestream and the notary witness in real time — but this is a state-by-state matter so the complexity of ensuring compliance can be quite high.

 

In Europe, the EPO used to authorize video proceedings only in special cases, but now all proceedings before the opposition can be on video as part of a pilot program. There have not been any infrastructure malfunctions (courier, notary, etc.) but courts vary by country. For example, in Italy the courts are closed and in other countries you may have to coordinate directly with the judge to verify that they can communicate effectively from home otherwise remotely. In addition, as is notable in the case of Sweden, lockdowns and other measures to contain COVID-19 vary dramatically from nation to nation, so it’s essential to stay aware of what is happening in each of the member states of the EPO.

 

In Japan, the court system cancelled all due dates before May 6th and then a second national emergency declaration extended that through May 31st so the courts again will cancel all due dates before then. All hearings are being conducted via video conference. Both parties are asked to approve a video conference for the hearing and as long as no one denies, it will be done that way (but keep in mind that the JPO official present may need to join the video conference from the JPO offices). Also, even though the JPO is open and doing business, they don’t accept documents at the physical counter in Tokyo so these have to be filed online or by mail only. This creates new challenges and potential delays as the various divisions of the JPO have modified their hours at regional and field offices differently.

 

How will the pandemic change patent activities and operations permanently?

In the U.S., it’s already clear that online filings and video communications will remain much more common, and travel may be much less frequent for patent appeal hearings compared to pre-COVID. For Europe, the transition is similar and the adoption of digital technologies is very smooth. One major change may be a loss in business for firms based in Munich since their physical proximity to the EPO offices may become far less critical. One open question is whether an EPO pilot project to authorize opposition proceedings by video will remain or not.

 

In the case of Japan, video conferencing is taking place but again, the JPO examiners have to be at their offices in order to participate so this is causing considerable challenges logistically speaking. In Canada, the digital transition has been underway for some time, and advocated for aggressively for years by the IP Institute of Canada. Pre-COVID, the CPO was not greatly interested in adopting policy changes to allow, for example, electronic signatures. This has now changed virtually overnight. The other major shift has been the transition from conference calls when in-person meetings were not possible, to the ubiquity of video conferencing. The general consensus is that these changes are certainly here to stay.

 

The other discussion point is the economic impact of COVID-19 on the patent practice field in general. One consideration of note is that there may be a six to twelve-month backlog that will sustain relatively consistent levels of activity but at some point, most are predicting a dip in practice or at least a greater emphasis on careful selection and financial returns before choosing how to proceed with filings. On the other hand, trademark filings may drop faster but should increase faster in the recovery as well, since companies will both cut and then rebound investments in product development and marketing faster by comparison.

 

In Japan, one major long-term change is that large firms are considering to shift from having single large offices in downtown Tokyo to, potentially establishing smaller, regional work centers both to reduce risk and to increase workforce flexibility and accessibility. This is a trend we may see more of in the coming years.

 

The patent practice in Europe is doing quite well still. In addition, it is notable that EPO extensions can be very useful as the fees for the EPO are quite high and filers now have the option of moving some of those payments forward. There are some exceptions and re-establishment in Europe is quite tricky and is not easy to win at all for lost cases, so the recommendation is to proceed with caution.

 

Closing Insights & Recommendations

For IP portfolio owners, the key is to stay on top of deadlines and stay in touch with your counsel. If you miss a deadline in the U.S. at least, you may be able to recover on the basis of a petition under the current conditions. So before you go ahead and abandon cases, it’s critical to talk to your counsel first, as there may be ways to get some flexibility and avoid short-term decisions now that a company may regret years later.

 

Footnote: The World Intellectual Property Organization (WIPO) has launched a global COVID-19 Policy Tracker which provides information on measures adopted by PTOs all over the world in response to the COVID-19 pandemic, such as the extension of deadlines. In addition, the site offers updates on legislative and regulatory measures for access and voluntary actions. For more information, please visit https://www.wipo.int/covid19-policy-tracker/#

This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.