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Patent Deadlines in the Shadow of COVID-19

For the past few days, I have been discussing urgent deadlines with my clients. One client had planned to file his US provisional abroad in a few countries and had given me instructions and payment in December for an early April deadline. A second client had a national phase filing from his Patent Cooperation Treaty (PCT) application. And a third client had a Chapter II demand in his PCT application. All of them were working towards their deadlines, amending the application where necessary, allocating budgets, etc.

And then came COVID-19 with its ever-tightening quarantines and the serious disruptions to everyone’s home and work lives. Suddenly budgets disappeared, clients were distracted, and inventors vanished, all while the deadlines came closer and closer. All our smooth planning for how to reach the deadlines before our Passover vacation went out the door.

Various countries have responded to the pandemic. You can read the notices on each patent office’s website. The first notice is always generic – we are concerned with the health of our employees, but we are still functional, our employees are working from home and our websites are still active.

The next notice is about extending deadlines. Each country has responded differently. Most have given a one-month extension from the day that country entered quarantine. This will have everyone scrambling to file all on the last day of the extension, especially since most of the quarantines are likely to last more than a month.

Note that not all countries have settled on a one-month extension. Israel, for instance, is considering offering a three-month extension of deadlines that fall within the quarantine period.

Yet none of the notices directly answered my key concerns, nor those of my clients. They all talk about extending deadlines within the relevant country. However, the deadlines of great concern and of great expense are the filing deadlines – the 12 -month priority deadline, the 30 -month national phase deadline, the regional/validation filings from the European Patent Office and other regional offices, etc.

After discussing this with colleagues and with people from the Israel Patent Office, I realized that these deadlines, which so govern our lives as patent attorneys and are so important to our clients and their budgets, are treaty deadlines and not per-country deadlines. The national patent offices cannot change these deadlines nor extend them. So, they are not discussing how applicants should handle them.

We won’t find national answers. We need to look to the international treaties for solutions.

The Paris Convention, upon which the right of priority is based, was originally conceived in 1883 and merely mentions that each office may provide for “the restoration of patents which have lapsed by reason of non-payment of fees”. The mechanism for doing this is determined by each country. While this section of the Treaty deals with missed maintenance fees, most countries have some mechanism, usually a special petition, with which applicants may state their unusual case and have their rights restored.

COVID-19 and its upheaval would certainly qualify as an unusual case. Given the large number of applicants that are likely to be filing such requests, I think it would behoove the national patent offices to prepare a simple online request for the restoration of rights lost due to the COVID-19 pandemic. Given that we still do not know how long the pandemic will last in each country, given that each country is going into quarantine at different times, and given the global nature of many companies’ income and activity, the need for restoration of rights may be with us for a significant length of time.

The PCT treaty is much younger, dating from 1970. It includes in the regulations a section entitled “Excuse of Delay in Meeting Time Limits”. This excuse may be utilized when a PCT deadline “was not met due to war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communications services or other like reason” anywhere the applicant is (lives, has a business, stays). The excuse is for up to 6 months from the original deadline but requires a petition with evidence.

So, how should my clients proceed?

My first client, for whom we were preparing to file in a few countries, needed to change his filing strategy, due to the budgetary considerations forced upon his company due to COVID-19. As we discussed the situation, it became clear that the best strategy for these very uncertain times is to file under the Paris Convention to the PCT. Why? Because this stops his foreign filing clock. He will have filed within his deadline, have kept all his options open, and given his company some much-needed breathing room. He will have gained 18 months before having to decide where to file. We can hope that COVID-19 will no longer be causing such disruptions well before the 18 months are over.

My second client had significant budget issues due to COVID-19 and couldn’t file any national phase applications from the PCT. However, when she does finally have the budget, we will determine which countries will allow her to petition for restoration of rights.

And the PCT solved my third client’s issue – we can reduce his stress levels and let him have a few months (no more than 6) before finalizing the response to his Search Report and Written Opinion that we were working on for the PCT.

The issue for all my clients is to find ways to reduce their current high levels of worry about their businesses. While intellectual property (IP) is important to a business, it is not essential at this time; just surviving this period is more important. We need to think of new strategies to enable our clients to keep their IP alive, even if on a back burner.

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