The COVID-19 pandemic has affected working conditions at numerous Intellectual Property Offices around the world resulting in the World Intellectual Property Office (WIPO) initiating the adoption of epidemic containment measures. During a recent WIPO-initiated videoconference, the heads of 16 leading IP Offices discussed intellectual property trends related to mitigating the consequences of the pandemic and controlling the spread of COVID-19.
Attendees were in agreement that patent documents are a very important source of information and data for companies and researchers. Consequently, the main focus of the discussion related to how individual patent offices can assist the medical community by granting rapid access to relevant information. WIPO is, therefore, playing a central role in the international fight against COVID-19 by facilitating such data exchange.
Additionally, many IP Offices are considering inventions aimed at fighting the viral infection and related diseases under specific accelerated examination procedures. The videoconference participants highlighted the role of intellectual property in promoting innovative approaches to challenge the pandemic. Other IP forums are speculating that the recent pandemic may eventually lead to a re-evaluation or challenge to the patentability of diagnostic kits in the US – which are currently regarded as ineligible subject matter under the provisions defined in U.S.C. § 101. Diagnostic kits and/or methods are considered as eligible subject matter in numerous countries, including China, Japan, Australia, Russia, Canada and Europe.
The heads of offices exchanged information on how their country’s offices were handling the provision of services during the outbreak including extending patent and trademark deadlines and providing a grace period for payment of certain categories of fees. Offices were in general agreement that applicants should not lose their rights to receive public services if the term has expired due to the high-alert regime implemented within the IP Offices.
Certain countries, including the US, have implemented measures whereby applicants can request a waiver if any person associated with a filing or fee payment was personally affected by the COVID-19 outbreak which materially interfered with timely filing or fee payment. We would, however, always caution against applying for such waivers unless you can prove that the circumstances that led to the delay were unavoidable as this procedure could always provide grounds for a third-party challenge.
About the author – Elaine Johnson, Intellectual Property Strategist for Stratford Intellectual Property
Elaine gained practical in-house experience within a major pharmaceutical company, initially as a research scientist involved in various aspects of product development, and later in the area of clinical research and regulatory affairs. Elaine also has extensive experience working within an intellectual property law firm, where she focused on the protection of chemical and biochemical patents. Her practice involved the drafting and subsequent prosecution of patent applications for various portfolios in the pharmaceutical, chemical manufacturing, CleanTech medical devices, and consumer goods sectors. With the experience gained working in a large pharmaceutical company, and the legal expertise acquired through her many years working as a Partner and Patent Agent within an Intellectual Property law firm, Elaine is well-positioned to assist Stratford Intellectual Property clients with the management of their intellectual property portfolios.