On May 4, 2020, the Taiwan Intellectual Property Office (TIPO) issued on its website an announcement clarifying how patent or trademark applicants may seek COVID-19 related deadline relief. This is the second announcement TIPO made for this purpose since January 2020.
The gist of the May 4 Announcement is as follows.
1. Regarding Statutory Deadlines
In the May 4 Announcement, TIPO reiterates that “a request for restoration (reinstatement) of right/claim is to be reviewed leniently yet on a case-by-case basis if the delay of statutory deadline is caused by the COVID-19 pandemic.” However, merely filing a statement asserting the delay is caused by the pandemic is not enough. The applicant needs to “submit supporting document” showing the cause of the delay, as well as fulfilling any and all actions that should have been fulfilled within the delayed deadline.
The said restoration relief is also obtainable where “the delay occurs because the pandemic has affected the timely communication between the applicant and his/her attorney.” Likewise, submission of evidence is required. However, a restoration request of this sort may be reviewed less leniently.
2. Regarding Deadlines Designated by TIPO
According to the May 4 Announcement, a COVID-19 related delay of designated deadline will be deemed as being cured if the applicant fulfills, before the TIPO renders a formal ruling, the action that should have been fulfilled within the delayed deadline.
Further, if the applicant anticipates a COVID-19 related delay of the designated deadline, he/she is allowed to request for extension with submission of supporting evidence. Again, TIPO will review such a request “leniently yet on a case-by-case basis.” While the length of extension is one month as a rule of thumb, a longer extension is possible upon a showing of necessity supported by evidence.
3. The Following Statutory Deadlines Cannot be Restored
As stipulated in the Patent Act and Trademark Act, the following statutory deadlines cannot be restored once having been delayed.
- The statutory deadline set in Article 29.4 of the Patent Act, which reads: “Where an applicant unintentionally fails to claim priority claim at the time of filing, or where the priority claim is deemed not to have been made …, the applicant may, within sixteen (16) months after the earliest priority date, apply for reinstatement of priority claim, pay the required fees and undertake the actions [i.e. claiming priority].”
- The statutory deadline for late payment of patent issue fee and first annuity.
- The statutory deadline for late payment of the second or any subsequent patent annuity.
- The statutory deadline for late payment of trademark registration fee.