In a crisis, such as the current pandemic, people have an instinct to think fast, simplify and leap to conclusions. However, in such cases, people tend to rush, neglecting the all-important slow thinking, reflection and anticipation.
A well-thought-out plan is required to ensure that critical IP matters do not fall by the wayside against the backdrop of a global health crisis. As such, this article examines how to think slower to safeguard IP rights.
When people work from home they tend to work in a similar manner to when they are at their workplace, failing to recognise the risks inherent to the different setting.
Employees must remain vigilant in their standard IP practices, even while away from corporate headquarters. Once employees return to the office, they do not want to be surprised by lapsed protections on some of the organisation's intellectual property.
To avoid unintentional IP loss, employers should remind employees and contractors to be aware of protections to be observed when using and disposing of confidential information. In addition, employers can ask that employees:
- save information only on company storage systems;
- use only company computers, if available, to perform work;
- avoid unsecured sites while sharing documents; and
- refrain from using their personal email to transmit work-related data.
Employees should ensure that any royalty or minimum payments continue to be made or consider alternate payment arrangements to avoid termination of agreement and loss of licensed-in IP rights.
Companies may enter bankruptcy during the pandemic or thereafter. If a company is struggling financially and does not have the financial resources to maintain its rights when fees are due to be paid, it should seek legal advice.
This is especially true if a company has the rights to many marks in many countries and cannot afford to maintain all rights in all countries. Registered rights should not be allowed to lapse, and third parties should not be given the chance to take advantage of the situation by infringing on these rights or trying to register a mark themselves.
Many companies have contacted their lawyers, requesting a reprieve from invoices for a certain period and for all but critical work to be placed on hold. In addition, there have been requests for special discounts from companies that are struggling. Many lawyers are willing to assist clients with such requests, although a well-established relationship with the client will help in this respect.
Companies should review all IP agreements (including licences and joint ownership, joint development and research agreements) to maintain their obligations to keep agreements in force. During the review, it should be determined which obligations can be delayed due to force majeure and what the requirements are – both during and after the force majeure period.
With remote working and perhaps a reduced staff for in-house lawyers and IP teams, leaders should commit personnel and financial resources to meeting deadlines.
Many companies and trademark registries are not working at optimal capacity or are closed for long periods. As such, deadlines may be missed, including:
- filing renewals of patents or trademarks;
- filing statements of use of a trademark;
- filing an application to claim convention priority based on a file of the same mark in another country;
- responding to office actions rendered by the patent or trademark office; and
- filing documents at courts where litigation is involved.
In many cases, registries will grant automatic extensions without request, but each will have its own rules depending on the situation in the specific country at the time. The World Intellectual Property Office's website provides information on what measures and deadline extensions have been adopted by various IP offices worldwide to deal with COVID-19-related issues.
Different countries offer different deadlines. Companies should not count on every IP office being willing to grant an extension and should not assume an automatic extension just because another country has granted one.
Most IP offices operate on a first-to-file basis. As such, hesitating now could lead to someone else filing first. The first to file usually has the senior rights, unless the rights are in a country that recognises common law rights through use.
If a company intends to file for IP protection but is unsure of when it will do so, it should consider the impact of a deferral. By hesitating, the company may lose not only priority over a competing party, but also any costs, effort and time already invested in developing the intellectual property.
It is a good idea to file at least the first application now, or as soon as possible. This will allow a company to delay filing for the same mark in other countries for up to six months and still preserve the filing date of the first application – provided that it claims convention priority through the Paris Convention when filing in other countries.
With regard to hearings before a registrar or enforcement matters before a court, it is important to be aware that, in light of the pandemic, some matters will likely not be heard for some time. Alternatively, if a matter is urgent, it may be heard on a virtual basis rather than in person.
Whenever IP rights are on the table, a plan must be in place. Now more than ever, what is needed is slow thinking, reflection and anticipation (and not haste) if a company seeking to protect or gain IP rights is to yield a well-thought-out IP protection plan that contains clear priorities.
