COVID-19: SUSPENSION OF IP SERVICES AND FUNCTIONS

By Brian Kalule,Heidi Taylor,John Syekei Friday, April 03, 2020
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COVID-19 has had an impact on the registration of intellectual property (IP) across the globe. We highlight the impacts in three of the jurisdictions in which we have offices.

Kenya

On 19 March 2020, our IP Practice in Kenya published a newsflash regarding the effects of COVID-19 on technology and IP in that country.

Since then, the Kenyan Trade Marks Office remains operational; however, the Companies Registry has closed and cannot process documents, such as deeds of assignment.

The Kenya Industrial Property Institute (KIPI) issued a notice on 23 March 2020 confirming that the following essential services will continue to be offered by the KIPI: receiving applications, processing applications, and issuing certificates.

Applicants are requested to file their applications and documents electronically (via email) to info@kipi.go.ke.  

South Africa

The Companies and Intellectual Properties Commission (CIPC) has suspended its key functions in respect of registered IP following the announcement of the national lockdown for the period of 27 March to 16 April 2020 by President Cyril Ramaphosa.

On 23 March 2020, the commissioner of CIPC issued Notice 19 of 2020 regarding the effects of the national lockdown on the operation of the patents, designs, copyright and trade mark divisions of CIPC and further clarification notices thereafter.

CIPC offers a number of electronic and physical IP-related services and facilities, including: electronic and physical filing of registered IP (trade marks, patents designs and registered copyright) applications, electronic searches of trade marks and patents, and an online IP trade portal.

Following the issue of the notice, CIPC’s offices have closed, resulting in a suspension of both its online and physical operations. Limited electronic services and facilities became operational from 1 April 2020, while all other services and facilities will remain suspended for the duration of the lockdown.

Suspension of time periods

The days between 25 March and 30 April 2020 (both inclusive) will not count when calculating the number of days elapsed (dies non) in terms of the Trade Marks Act, 1993, Patents Act, 1978, Designs Act, 1993, Copyright Act, 1978 and the Registration of Copyright in Cinematograph Film Act, 1977. This may be subject to further extensions, depending on developments during the national lockdown. 

Suspended services and facilities

The following key functions (among others) have been suspended:

  • all internal and external CIPC IP systems;
  • manual lodgments of any documents (for example, trade mark applications, assignments of registered IP, and registration of IP licences);
  • the CIPC call centre;
  • the query resolution system for the resolution of any customer queries; and
  • responses to, or processing of, requests and emails.

Practical consequences of the lockdown

  • The suspension of time periods under certain IP-related legislation presents delays in the registration of registered IP applications, assignments, licences, oppositions and related matters that are conducted through CIPC.
  • Written assignments of certain categories of IP concluded during the lockdown period remain effective.
  • While IP licences cannot be registered with CIPC during the national lockdown, licence agreements that are concluded in respect of registered IP will be effective.
  • The registration of IP will be suspended for the period of the lockdown. Where such registration is an obligation subject to a deadline or is a condition precedent to a transaction that is currently underway, consideration must be given to the terms of the transaction documents and whether the agreement contemplates suspension of the lapse of time due to the occurrence of events beyond the control of the parties to the agreement.
  • CIPC intends for the following portals to remain operational: http://bizportal.gov.za/ (where domain names may be registered), http://eservices.cipc.co.za, and http://cipc.co.za/index.php/ip-e-services. As at the date of writing, not all are operational.
  • The .za central registry is operational. All websites ending in .za domain must have a landing page with a visible link to www.sacoronavirus.co.za.

Practical implications

Registered IP is a valuable asset, which may form a key component of a transaction, and it is important to adopt a practical approach to guard your interests during this time and to minimise the practical effects of the suspension of services during the lockdown and thereafter. 

  • Clients should consider their commercial and strategic interests – for example, how warranties, indemnities and undertakings, time-bound obligations, and force majeure provisions, may best be negotiated in respect of transactions that are underway.
  • We have access to certain limited functionality on CIPC’s IP portal, helping us to remain abreast of key developments.
  • The World Intellectual Property Organisation’s (WIPO’s) online registration and search functionality, relating to worldwide IP registries, remains operational. However, information relating to South African registered IP may not be up to date, in view of CIPC’s lockdown measures.

Uganda

On 31 March 2020, all Government offices in Uganda were shut down for 14 days. Accordingly, the Uganda Registration of Services Bureau will be closed until 14 April, and all applications must be sent to the Uganda Registration of Services Bureau electronically (by email), rather than submitting physical lodgments.