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22 June, 2020

Due to the COVID-19 outbreak in Europe special measures have been implemented by the European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO), the United Kingdom Intellectual Property Office (UKIPO), the German Trade Mark and Patent Office (DPMA) and the World Intellectual Property Organization (WIPO).

This page summarises the information we have available about these special measures. We intend to continue to work to existing deadlines and due dates. However if you wish to use any of the extensions detailed below then please contact your usual adviser at Boult Wade Tennant LLP to ensure that they are available for your matter.

The European Patent Office (EPO)
The EPO extended all time limits expiring on or after 15 March 2020 to 2 June 2020, but has provided no further general extension.

The EPO announced that from 2 April 2020 all oral proceedings before examining divisions will be held by videoconference.

The EPO has postponed all oral proceedings before opposition divisions scheduled until 14 September 2020 unless they are already taking place by videoconference. Under a pilot project they are offering oral proceedings in opposition by videoconference provided that all parties consent.

The Boards of Appeal are also attempting to hold oral proceedings in person from 18 May 2020 whilst also offering for them to be held by videoconference upon the consent of the parties.

We also understand that most EPO staff are working from home.

For further information the EPO has a dedicated COVID-19 update page available here.

The European Union Intellectual Property Office (EUIPO)
The EUIPO previously extended all time limits expiring between 9 March 2020 and 17 May 2020 inclusive until 18 May 2020. They have not provided any further general extension of time, but have issued the Guidance Note here providing further details on the other remedies available, such as extensions of time, suspension of proceedings and reinstatement.

The United Kingdom Intellectual Property Office (UKIPO)
The UKIPO has extended until 30 July 2020 all time periods expiring from 24 March 2020 set out in the various relevant UK Acts and Rules and all non-statutory periods that have been specified by them for patents, trade marks, SPCs and designs. The UKIPO has indicated that they will not provide a further general extension of time.

The UKIPO, however, encourages users to work to existing deadlines if possible “to keep work moving, and to avoid a surge of work once the interruption period ends”.

The UKIPO has also shut its physical offices, although staff will continue to work remotely. As a result, they cannot receive faxes or paper documents and have instead put in place measures for users to email or otherwise electronically file documents with them.

They have issued various notices: a general notice, a formal certification of the interruption of normal operation, a notice on the interruption of days, a notice on patents, a notice on trade marks and designs and a notice on tribunals and hearings.

The German Trade Mark and Patent Office (DPMA)
The DPMA previously extended all time limits granted by them from after 18 March 2020 until 4 May 2020. No further extension has been announced.

The DPMA cannot extend any time limits provided for by law such as the opposition deadline for patents. The DPMA is reasonably generous in granting requests for extensions of time limits that they are able to set.

For further information the DPMA has a dedicated COVID-19 update page available here.

The World Intellectual Property Organization (WIPO)
For PCT patent applications, the WIPO has issued advice here regarding the actions that can be taken if a Receiving Office, other PCT Authority (e.g. the EPO as International Searching Authority) or the WIPO is closed. The WIPO has also announced here that in it capacity as Receiving Office and as the International Bureau it will excuse a delay in meeting a PCT time limit if the reason is the COVID-19 outbreak. It is important to note that the 12 month priority period for filing a PCT application cannot be extended and protection is only available if the Receiving Office is not open for filing of applications.

For Madrid System trade mark applications, the WIPO has issued some advice here. The advice covers situations in which a user fails to meet a time limit for a communication addressed to WIPO, continued processing and closure of IP Offices of contracting parties. WIPO strongly encourages users to submit documents using electronic services rather than mail services to avoid any potential disruption.

For Hague Agreement design applications, the WIPO has issued the advice here.

From 17 March 2020 they have put in place remote working arrangements for all of their members of staff other than those whose work is premises-dependent.

Further information is likely to be published here.

 

Author

Matthew Ridley Partner

Matthew Ridley
Partner

Phone this number +44 (0)20 7430 7500

Email this address MRidley@boult.com

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