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EPO, EUIPO and UK IPO Advice in Relation to Coronavirus Outbreak

3 April 2020

The European Patent Office (EPO), European Union Intellectual Property Office (EUIPO) and the UK Intellectual Property Office (IPO) have published advice on measures being taken in view of the world-wide coronavirus outbreak.

The EPO’s “continually updated” information can be found here, and the current position is summarised below.

The disruptions due to COVID-19 in Germany qualify as a “general dislocation” under Rule 134(2) EPC in a country where the EPO is located, and so the EPO has issued a notice stating that “periods” expiring on or after 15 March 2020 are extended until 17 April 2020 for all parties and their representatives. In accordance with Article 150(2) EPC, this extension applies also for international applications under the PCT.

The EPO has also indicated that if the dislocation continues, then the periods in question may be extended beyond 17 April 2020.

The EPO also recognises that being in a high-risk area (as listed below) counts as 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).

All oral proceedings before the opposition divisions and examining divisions up until 17 April 2020 have been postponed, except for those oral proceedings which had already been rescheduled to take place by videoconference. All new oral proceedings before examining divisions arranged from 2 April 2020 will take place by videoconference (see our news item here). No Board of Appeal oral proceedings will take place until 30 April 2020. 

The Executive Director of the EUIPO published, on 16 March 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 1 May 2020 (in practice 4 May 2020 due to non-working days) of all deadlines expiring between 9 March 2020 and 30 April 2020. This Order has been clarified by way of a subsequent Presidential communication of 19 March 2020 to confirm 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.

The UK IPO has announced that it will be declaring 24 March 2020 and subsequent days to be “interrupted days”, until further notice. This means that all UK patent, SPC, trade mark and design deadlines falling in the period of interruption will be extended to the next non-interrupted day. The UK IPO will be reviewing the situation on 17 April 2020, in line with the EPO’s declaration of a general dislocation until that date. The interruption will then either be continued or be announced as ending after a further two weeks. Accordingly, all March/April UK deadlines from 24 March onwards will effectively be extended until the beginning of May.

The UK IPO has also previously 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.

Importantly, the interruption only applies 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.

Notwithstanding the interruption, the UK IPO remains operational, will allocate filing dates for newly filed cases as normal and encourages meeting original deadlines where possible. 

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, for example in relation to upcoming oral proceedings. If you have any questions regarding impact of the coronavirus outbreak on a specific matter, please speak to your usual J A Kemp contact.

List of high-risk areas according to the EPO

  • Austria
  • Egypt
  • France
  • Germany
  • Iran
  • Italy
  • In Republic of Korea: Daegue and the province of Gyeongsangbuk-do (North-Gyeongsang)
  • Spain
  • In Switzerland: the cantons of Geneva, Tessin and Waadt
  • In the United States: the states of California, New Jersey, New York and Washington

Please note that the definition of areas affected by the spread of the coronavirus may be subject to change.

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