Briefings

EXTENSION OF DEADLINES ON IP CASES IN VIEW OF THE COVID-19 PANDEMIC

A number of IP Offices around the world have put in place special measures for handling official deadlines during the COVID-19 pandemic. 

We summarise below the provisions in place for extension of deadlines at the European Patent Office, as well as the UK and EU Intellectual Property Offices. 

It is important to note that not all deadlines will benefit from such extensions; please get in touch with your usual Greaves Brewster attorney to discuss your particular circumstances. 

European Patent Office (EPO) 

In a Notice dated 16 April 2020, the EPO announced a ‘general dislocation’ within the meaning of Rule 134(2) EPC. In particular, the Notice sets out that “Periods expiring on or after 15 March 2020 are extended for all parties and their representatives to 4 May 2020” and “In accordance with Article 150(2) EPC this applies also for international applications under the PCT”. Due to the ongoing disruptions, a further notice has been issued and the periods mentioned are now extended to 2 June 2020.

The general extension set out above applies to the majority of EPO deadlines, including fee payment deadlines, but not all deadlines. Notable exceptions include the deadline for filing divisional applications, and filing written submissions ahead of scheduled oral proceedings. Please seek advice from your usual Greaves Brewster contact if you are unsure whether a deadline is extended or not.

The Notice also refers to the safeguard provided by Rule 135(5) EPC, which may be relied on in cases where the failure to observe time limits is the result of exceptional circumstances in the country where the applicant or his representative is located.

Inevitably, scheduled EPO oral proceedings have also been affected by COVID-19, with some being postponed and others being held via video conference where possible. In particular, oral proceedings before an Examination Division will be conducted via video conference unless there are good reasons why this is not possible. The EPO has also indicated it will be trialing some oral proceedings before the Oppositions Divisions, providing the parties agree. 

All of the EPO’s notices and related guidance can be found on its website, here.

European Intellectual Property Office (EUIPO)

On 16 March 2020, the EUIPO published the decision of its Executive Director to automatically extend certain deadlines falling between 9 March 2020 – 3 May 2020 up to 4 May 2020.  This has now also been revised to extend all deadlines falling between 9 March 2020 – 17 May 2020 up to 18 May 2020.

The EUIPO has since issued clarification that decision affects all procedural deadlines on trade mark and design cases before the EUIPO, including deadlines for filing applications with priority, renewal, opposition, responses to office actions, and appeals to the EUIPO’s Boards of Appeal.

However, it is important to note that the decision does not cover deadlines relating to proceedings before other authorities (such as the General Court). These may arise, for example, when a party wishes to challenge a decision of one of the EUIPO’s Boards of Appeal up to the General Court. 

The full text of the EUIPO’s decision and related guidance can be found on its website, here.

UK Intellectual Property Office (UKIPO)

The UKIPO has announced a period of “interruption” of usual business from 24 March 2020 onwards until further notice.

Most official deadlines at the UKIPO relating to patents, trade marks, designs and supplementary protection certificates will be automatically extended until the period of interruption ends. 

The UKIPO has indicated that it will provide a minimum of two weeks’ notice of its intention to end the period of interruption, to allow stakeholders sufficient time to plan ahead.

The UKIPO will review its practice again on 28 May 2020, and is expected to issue further guidance on its website shortly after that date.

The full text of the UKIPO’s decision can be found on its website, here.

Although the EPO, EUIPO and UKIPO buildings are officially closed, and some delays are understandable, the offices continue to operate remotely more or less as normal. Where possible, we recommend that applicants and rights holders continue to respect original deadlines and progress cases as usual. 

This update is for general information and does not constitute legal advice. Please get in touch with your usual Greaves Brewster contact for advice about how deadlines on specific cases will be affected.