The European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO), the UK Intellectual Property Office (IPO), the International Bureau (IB) of WIPO and other intellectual property offices are taking measures in view of the world-wide COVID-19 pandemic.
The EPO has adopted a number of measures in view of the disruption caused by the COVID-19 pandemic.
First, the EPO initially extended all “periods” expiring on or after 15 March 2020 until 2 June 2020 for all parties and their representatives, under the provisions of Rule 134(2) EPC, second sentence. In accordance with Article 150(2) EPC, this extension also applied to international applications under the PCT. The justification for the extension was that disruption in Germany, a country in which the EPO is located, constituted “general dislocation” as specified in Rule 134(2) EPC, second sentence. However, since the disruption in Germany ceased in late May 2020, the blanket extension of all deadlines under Rule 134(2) EPC, second sentence, was not extended beyond 2 June 2020. Despite that, the EPO recognises that the pandemic remains an “exceptional occurrence”, such that retrospective extensions of missed deadlines may be available under the EPC (Rule 134(5) EPC) and PCT (Rule 82quater.1 PCT). Deadlines may also in principle be extended under Rule 134(2) EPC, first sentence, if a party or its representative is based in a country where disruption continues beyond 2 June 2020. However, in that instance, the extension would not be automatic and it would be necessary to convince the EPO that there was indeed disruption in the country in question.
Second, the EPO has decided to introduce a temporary waiver of the additional fee payable when a renewal fee is paid late. The additional fee will be waived from 1 June 2020 until 31 August 2020 in respect of European patent applications where a renewal fee fell due on or after 15 March 2020 and the renewal fee was not paid by the due date. For more details see our news item here.
Third, the EPO has taken a number of steps in relation to oral proceedings. Specifically, all oral proceedings before the Boards of Appeal up until 15 May 2020 were cancelled, and the Boards of Appeal resumed in person oral proceedings in Munich to a limited extent from 18 May 2020. The Boards of Appeal have also introduced the possibility of oral proceedings by videoconference, if all parties agree. All oral proceedings before opposition divisions up until 31 December 2020 have been postponed, except for those opposition division oral proceedings which have been, or are, rescheduled to take place by videoconference under the EPO’s pilot project (see our news item here). The EPO is aiming to resume in person oral proceedings before the opposition divisions from 4 January 2021. The EPO intends for all oral proceedings before examining divisions to take place, at least in principle, by videoconference (see our news item here).
The Executive Director of the EUIPO published, on 29 April 2020, an Order under Article 101(4) of the EU Trade Mark Regulation and Article 100 of the Community Designs Regulation applying an automatic extension to 18 May 2020 of all deadlines expiring between 9 March 2020 and 17 May 2020. The earlier Presidential communication of 19 March 2020 confirms that “all deadlines” means all time limits for all proceedings before the EUIPO including payment of fees, priority claims, opposition periods, opposition fees, renewals, appeals, conversion and deferment of publication in respect of Community Designs. The Order does not apply to appeals to the General Court. Nothing will be provided by the Office to confirm these extensions on an individual basis.
On 15 May 2020 the Executive Director published a further Order informing interested parties that the earlier Orders extending all deadlines to 18 May will come to an end on 18 May 2020. The Office has provided users with further guidance on the regular means of coping with time limits stipulated in the applicable Regulations, in case they still face operational difficulties in view of the pandemic arising from measures taken by public authorities against the pandemic, or sickness of the party and / or their representative, etc. The Note (found at https://euipo.europa.eu/ohimportal/en/covid-19-information#15_may_1) gives guidance on the following:
The EUIPO Guidelines, and the Rules of Procedure of the Boards of Appeal of EUIPO shall be interpreted in the light of this communication in so far as they relate to the exceptional circumstances caused by the COVID-19 pandemic.
The UK IPO has declared 24 March 2020 and subsequent days until 29 July 2020 to be “interrupted days”. The first working day of the UKIPO will be 30 July 2020. This means that all UK patent, SPC, trade mark and design deadlines falling in the period of interruption will be extended to 30 July 2020. Note that any trade mark oppositions which could have been filed during this period must be filed on 30 July 2020 together with any notice of threatened opposition if not already filed.
Importantly, the interruption applies only to time periods set out in UK Acts and Rules, and non-statutory UK deadlines. The interruption does not apply to time periods set out under international IP treaties (PCT, EPC, Madrid) where the UK IPO acts as receiving office. The interruption applies when claiming Paris Convention priority in a patent application, but not when claiming Paris Convention priority in a registered design or trade mark filing. The interruption also applies to periods for paying renewal fees, except for the six month grace period for late payment of renewal fees on registered designs.
Following the end of the period of interruption, the UK IPO will also be temporarily reducing or eliminating fees applicable for late actions/extensions of time during the period from 30 July 2020-31 March 2021. For example, surcharges for late payment of patent and design renewal fees will be eliminated during this period. The surcharge for late payment of a trademark renewal fee will be reduced to £1. No fees will be applicable for extensions of time. No fees will be applicable for requests for reinstatement or restoration. A full list of fees that are being reduced or eliminated is available here.
The UK IPO has also indicated that it will be open to extensions of time in view of the outbreak on a discretionary basis. Reinstatement and restoration in relation to missed deadlines may also be available. In situations where the coronavirus outbreak is likely to delay or prevent applicants meeting deadlines for pending UK patent, SPC, design or trade mark matters which fall outside the period of interruption, the possibility of a discretionary extension is therefore also available.
As with the EPO, the UK IPO remains operational, and will also allocate filing dates for newly filed cases and accept other submissions/fee payments as normal.
The IB has announced that the pandemic counts as a “natural calamity … or other like reason”, within the meaning of Rule 82quater.1 PCT, such that retrospective extensions of missed PCT time limits (which may relate to the submission of documents and/or the payment of fees during the international phase of a PCT application) may be available under that Rule.
The IB has indicated that requests to extend a PCT time limit under that Rule will be treated favourably where COVID-19 is cited, and the IB will not require the applicant to provide evidence that the virus affected the locality in which the interested party resides.
Please note that Rule 82quater.1 PCT does not apply to the priority period or the time limit for entering the national phase.
The IB has made similar provisions in relation to Hague (International) Designs – failure to meet a time limit of the IB (as governed by Rule 5 of the Common Regulations) in relation to correction of irregularities will be excused if the user cites COVID-19 as the reason, without need to show evidence. This also applies to deadlines for payment of fees, except where a second part fee is payable under Rule 5(5) of the Common Regulations. Users are reminded that they have six months to apply for this relief from the date of expiry of the time limit concerned.
As of 29 April 2020, a different approach is being applied by the IB for users of the Madrid System for the International Registration of Trade Marks (though it is possible that this will be changed soon). The current position is that users of the system who have failed to meet a deadline as a result of its inability to access electronic communication or mail and delivery services due to COVID-19 may be excused from failure to meet a time limit for communication with WIPO, but only if they send the missed communication within 5 days after regaining access to electronic communication or mail and delivery services, and in any event no later than 6 months after the time limit has expired. Evidence will need to be provided to support the request for failure to be excused. However, users also have recourse to request continued processing by WIPO in relation deadlines to correct specified irregularities (e.g. to an International Application or subsequent designation, to request recording of changes to the International Registration), to pay fees for an International Application, pay the second part of an individual fee for a national designation, or to request that an International Registration continues to have effect in a successor State and pay fees for same. This is done by filing a WIPO Form MM20 within 2 months of expiry of the relevant time limit, and paying a CHF 200 fee.
Deadlines of the IP Offices for designated countries in an International Trade Mark Registration will be automatically extended in circumstances where the IP Office is closed, or where the IP Office is question has granted further flexibility or remedies in relation to deadlines due.
The IP attorney membership organisation FICPI has produced a guide on changes to deadlines and arrangements for national, regional and international IP offices as a consequence of coronavirus. Here you will find a regularly updated spreadsheet (see here) of information updated frequently by members of FICPI's global community.
The situation is of course evolving on a daily basis and it is expected that further announcements will be made by the EPO, EUIPO and UK IPO. If you have any questions regarding impact of the coronavirus outbreak on a specific matter, please speak to your usual J A Kemp contact.