IP Law Bulletin

Updated August 3, 2020

The coronavirus seems to be exerting itself upon all phases of life, and your intellectual property is not immune.  While you, your families, your friends, and your colleagues are getting comfortable with the new normal of social-distancing, intellectual property (IP) offices worldwide have also been grappling with how to handle the impact of coronavirus (also referred to as COVID-19).  Responses from IP offices around the world are varied and evolving, as the landscape changes in each individual country and on a global scale.  For example, some offices, such as the European Patent Office (EPO), India, and the United Kingdom, have automatically extended deadlines, while others have refrained from any extensions but permit, under certain circumstances, remedial action for rights lost due to effects of the coronavirus.  While the U.S. Patent and Trademark Office (USPTO) has not provided for automatic extensions, certain deadlines associated with patent and trademark filings and fees may be extended for small and micro entities provided the delay in filing or payment was due to the COVID-19 outbreak.  Additionally, the USPTO will waive the petition fee to revive certain lost rights resulting from a failure to take action due to effects of the coronavirus. 

Building upon our recent note concerning general international intellectual property protection considerations, this article describes how foreign IP expansion efforts might play out in a case study format. The company, a hair restoration lotion manufacturer named WonderFlo Tonight, is fictional, but the fact pattern is derived from real world situations encountered by businesses as they seek to establish and protect their intellectual property in foreign markets.

Foreign filing licenses do not typically require much attention in daily practice since the license is routinely applied for and granted as a matter of course in new application filings. However, in certain situations ignoring the license may cause severe damage. 35 U.S.C. § 184 states that a person shall not file or cause or authorize to be filed a patent application (among other things) in any foreign country unless six months have passed since the United States application was filed unless otherwise authorized by a license obtained from the Commissioner of Patents, i.e., unless a foreign filing license is received from the United States Patent and Trademark Office (USPTO). A purpose for this rule is that it allows the U.S. government to protect national security by approving or disapproving the export of sensitive technologies, such as technology associated with warfare, nuclear, or security-related measures.