The European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO), the UK Intellectual Property Office (IPO) and the International Bureau (IB) of WIPO all remain operational and will allocate filing dates for newly filed cases and accept other submissions/fee payments as normal. However, a number of measures have been adopted by the offices to assist applicants in view of the ongoing COVID-19 pandemic. The current position at each office is discussed below.
The EPO is no longer applying a blanket extension of “periods”, as it did between 15 March 2020 and 2 June 2020, but nevertheless recognises that the pandemic remains an “exceptional occurrence”. As such, 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 remains due to the pandemic. 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.
The EPO has also taken a number of steps in relation to oral proceedings. The Boards of Appeal resumed in person oral proceedings in Munich to a limited extent on 18 May 2020. The Boards of Appeal have also introduced the possibility of oral proceedings by videoconference. All oral proceedings before oppositions divisions up until 31 January 2022 will take place by videoconference. The EPO intends for all oral proceedings before examining divisions to take place, at least in principle, by videoconference. Our briefing on conducting oral proceedings at the EPO by videoconference can be found here.
On 15 May 2020 the Executive Director of the EUIPO published an Order informing interested parties that their earlier Orders extending all deadlines to 18 May 2020 would not be extended further. The EUIPO 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 here) 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 indicated that it will be open to extensions of time in view of the pandemic on a discretionary basis, 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. Reinstatement and restoration in relation to missed deadlines may also be available.
In relation to patents, the IB continues to treat favourably requests to extend a PCT time limit under PCT Rule 82quater.1 where COVID-19 is cited. As explained in its 9 April 2020 announcement, the IB will not require the applicant to provide evidence that the virus affected the locality in which the interested party resides (see point 3). However point 4 of the 9 April announcement no longer applies; as explained here, the IB is no longer delaying issuance of notifications that declare PCT applications to be withdrawn for failure to pay PCT fees. In addition, Rule 82quater.1 PCT does not apply to the priority period or the time limit for entering the national phase.
In relation to trade marks, the IB has updated its response to the pandemic and has reminded users of practice in relation to remedies and extensions of time limits. The current position is that users of the system who have failed to meet a deadline as a result of an 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 to 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, to 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 in 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.