The consequences of the measures intended to limit the spread of Covid-19 present serious challenges for the business community. Many have already decided and implemented significant cost cuts, and liquidity will be a major challenge in the time to come. It affects all investments over time, including those associated with the company’s most important values and competitive advantage: the intellectual property rights.
It is important to recognize that it is strategically crucial for companies to maintain active protection around the IP portfolio. Therefore, we have the following advice for companies in temporary need of reducing costs associated with this important work.
Establishment of new patent rights
Normally, many companies want to signal the establishment of patent rights to market participants as quickly and as widely as possible. This often involves submitting patent applications directly to the European Patent Office (EPO) or the US Patent Office (USPTO). Such a strategy entails high costs early in the process. However, there are alternative strategies for securing patent rights that offset the total cost over time and are favorable in the current market situation. One possibility, for example, is to make a first filing through the Norwegian Patent Office before establishing rights in other markets you wish to cover.
Cost effective establishment of priority date for technical solutions
In some cases, it may be crucial to establish an early filing date (so-called «priority date») for a technical solution at a patent office, before following up with a more detailed and complete patent application. This can be important, for example, when the company needs to share information with outsiders for various reasons, or in the case secrecy may prove challenging. In both cases, such a priority date can be secured almost free of charge, such that the effective priority date for the later patent application can provide protection back in time.
Deferral of costs for current portfolios
Currently, no plans have been communicated for reducing fees at the various patent offices as result of the Covid-19 situation. However, there are opportunities to defer deadlines that trigger costs both at the Norwegian Patent Office and at the EPO. For example, EPO allows for response deadlines to be postponed for 2-6 months free of charge upon written request.
In an internal instruction of March 13, 2020, due to the unparalleled circumstances, the Norwegian Patent Office also acknowledges that unforeseen events may lead to missed deadlines. It is signaled that incidents caused by the Covid-19 situation in the individual company may give provide sufficient reason to reinstate cases with missed deadlines.
To identify possible cost-saving measures tailored to the individual company, Onsagers consultants are available for a review. We are available for video consultations and to make contact for an appointment if you fill out the form below.
Further information regarding regulations and advice concerning IPR in bankruptcy is given here.