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Patent Deadlines in the shadow of COVID-19 - Part 2

In a previous article, I talked about how the various patent offices around the world are helping inventors, by providing extensions to deadlines. This allows businesses and inventors to put their patent portfolios on the back burner and focus on surviving the lockdowns.

As I pointed out, the one extension that the patent offices aren’t giving is an extension to the one-year deadline for filing their original patent applications “abroad” That’s because this deadline is not a national deadline but an international deadline. It is derived from the Paris Convention.

The Paris Convention, upon which the right of priority is based, was originally conceived in 1883 and merely mentions, in the section about maintenance fees, 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.

Unfortunately, this restoration of rights is not sufficient for the those whose lives have been significantly disrupted by war, strikes, earthquakes, tsunamis, epidemics or pandemics. While inventors and businesses can often recover, sometimes they do so by reducing their budgets and this often means giving up on the inventions which were ready to be continued when the disruption occurred.

Historically, most disruptions have been localized to a particular country or region. But COVID19 has changed that. The ENTIRE world is in trouble. Businesses are shrinking and investors are not investing. Still, the patent offices insist that the one-year deadline for foreign filing is immovable. They are stuck. Their laws won’t allow them to give extensions to this deadline and correctly so. The Paris Convention didn’t envision these situations and therefore does not allow for it.

It seems to me that now is the time TO DO SOMETHING. Given that COVID19 has affected all the countries of the world, there should be a large consensus that we should be helping our inventors. Our economies need it. Our health systems need the inventions that our inventors can bring forward.

Inventors need the opportunity to say “I just can’t file now. My business would die if I did”. I can’t say that an extension of a few months is always enough. But it is certainly better than no extension.

This relief will have to extend over a few months, given that inventors file globally and COVID19 has attacked each country with a different timing.

Now is the time for the patent offices of the world to insist that we update the Paris Convention to provide extensions of the foreign filing deadlines in “force majeure” situations. Possibly we could just copy what is in the Patent Cooperation Treaty (PCT), which already has a mechanism for force majeure situations.

The mechanism could be per country – an announcement from the patent office that the deadlines are extended until a particular date or for a fixed amount of time.

Or, the mechanism could be via WIPO; maybe by enabling it to announce when a region is in an emergency situation and therefore, applicants from the region are given relief for a predefined period of time.

Whatever the mechanism, now is the time to update the Paris Convention to enable relief of the foreign filing deadline for force majeure situations.


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