Update 14 April 2020 | The COVID-19 pandemic is progressing worldwide. In an effort to control its expansion, public authorities have taken restrictive measures that impact both people and companies on their territory. In this context, IP Offices have adopted decisions to secure their users’ rights and the safety of their staff. Here are the key takeaways from these recent decisions.
I. COVID-19 MEASURES TAKEN BY INTERNATIONAL AND REGIONAL IP OFFICES
This section focuses on the main International and Regional IP Offices in Europe, namely the World Intellectual Property Office (WIPO), the European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO) and the Benelux Office for Intellectual Property (BOIP).
Measures taken by the WIPO
1. All time limits under the Madrid System that concern the IP Office of a Contracting Party that is closed due to the COVID-19 pandemic are automatically extended to the first subsequent day on which that Office reopens.
2. Holders and applicants who have failed to meet a time limit may request the WIPO to continue processing the international application, subsequent designation, payment or request concerned, by presenting the official form MM20 within two months from the expiry of the time limit, without any reason or evidence needed (the form is available here). In that regard, the International Bureau of the WIPO has provided an interpretation of the COVID-19 pandemic as an excuse for delays in meeting PCT time limits which relate either to the submission of documents or to the payment of fees.
3. The processing of applications and other IP and related systems has not been affected by the pandemic. However, the International Bureau of the WIPO will only transmit PCT documents via email until further notice. Therefore, applicants, holders and their representatives are strongly encouraged to provide an email address and use electronic communication services.
4. All events and meetings organized or co-organised by WIPO until the end of May will be postponed and, should that not be possible, cancelled.
Measures taken by the EPO
1. All time limits expiring on or after 15 March 2020 in proceedings under the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT) are extended until 17 April 2020.
2. All oral proceedings scheduled until 30 April 2020 before the EPO Divisions and Boards of Appeal are postponed until further notice unless they have been confirmed to take place by videoconferencing.
3. All EPO organised events in March, April and May have been postponed until further notice. The EPO will otherwise continue its other activities without interruption.
Measures taken by the EUIPO
1. All time limits expiring between 9 March 2020 and 30 April 2020 inclusive are automatically and with immediate effect extended until 1 May 2020 (in practice Monday 4 May 2020, as Friday 1 May 2020 is a public holiday). This applies to time limits set by the EUIPO and those imposed to the EUIPO by the EU framework on trademarks and designs
2. All meetings and events taking place in March are postponed until further notice. The participants having incurred expenses will be fully reimbursed by the EUIPO.
3. The EUIPO has guaranteed that it is “business as usual” for all its activities, thanks to its digital tools and its teams working from home. It has put in place a dedicated monitoring committee to follow the situation and take further measures where necessary.
Measures taken by the BOIP
1. From 16 March 2020 and until further notice, the BOIP will not withdraw any requests or procedures for not meeting a given deadline.
2. The BOIP will set a date when it is considered reasonable for IP professionals and other entrepreneurs in the Benelux countries to be able to work normally again (“BAU date”). An additional period of one month calculated from the BAU date will be given for all requests and procedures whose deadlines (1) will have expired between the 16 March 2020 and the BAU date, or (2) are less than one month from the BAU date. It is important to note that this extension does not cover time limits to bring an action before the Benelux Court of Justice.
3. In the meantime, the register may not reflect the accurate status of certain trademarks. This is because the IT system of the BOIP applies the provisions of the Benelux Convention on Intellectual Property automatically.
II. COVID-19 MEASURES TAKEN BY NATIONAL IP OFFICES
This section focuses on the measures adopted by several national IP Offices, namely the US IP Office (USPTO), the German IP Office (DPMA), the UK IP Office (UKIPO), the French IP Office (INPI), the Italian IP Office (UIBM) and the Belgian IP Office (OPRI).
Measures taken by the USPTO
1. Time limits expiring between 27 March 2020 and 30 April 2020 concerning the filing of certain patent and trademark-related documents and the payment of certain required fees to the USPTO may benefit from a 30 days extension, provided that the filing or payment is accompanied by a statement that the delay was due to the COVID-19 outbreak.
2. Oral hearings at the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB), interviews of patent examiner and trademark examining attorneys and meetings will be solely conducted by phone or videoconference until further notice. Although the USPTO offices will remain closed to the public until further notice, its activities will nevertheless continue without interruption.
3. The USPTO is waiving petition fees in certain situations for customers impacted by the COVID-19. This applies to all applicants and holders that were unable to timely reply to a USPTO communication due to the COVID-19 outbreak, provided they attach to their reply a copy of a petition to waive the fee (“petition to revive”) not later than two months after the issue date of the USPTO communication.
4. The USPTO will accept copies of handwritten signatures (instead of originals) for correspondence relating to “registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings” and payments by credit card “where the payment is not being made via the USPTO electronic filing systems”.
Measures taken by the DPMA
The DPMA has confirmed its ability to perform its activities, but its services should come with delays. During the COVID-19 crisis, the following measures will be applicable:
1. All time limits prescribed by the DPMA with regard to all pending IP procedures are extended until 4 May 2020. However, this extension does not apply to time limits provided by German law, as the DPMA competence does not extend to those time limits, nor to time limits in connection with applications or requests concerning the international registration of trademarks. Any person who has failed to meet a time limit imposed by law due to the current situation may request to benefit from the option of re-establishment of rights. The unit in charge will check these requests on an individual basis.
2. Hearings and oral proceedings will no longer take place, and summons to these proceedings will no longer be issued until further notice. There will be no on-site consultations and no initial inventor consultations at the DPMA.
3. The DPMA can no longer guarantee the immediate transfer of international design applications to the WIPO. Applicants are advised to file such applications directly to the WIPO.
Measures taken by the UKIPO
1. The UKIPO has declared that from 24 March 2020 and until further notice, all days are considered “interrupted days”. All time limits that expire on an interrupted day are automatically extended to the next day. A minimum of 2 weeks’ notice will be notified to users before ending the “interrupted days period”. This extension applies to all time limits set out by the UKIPO or by UK statutory rules. The situation will be reviewed on 17 April 2020.
2. No physical hearings will be booked or take place until 1 June 2020. These hearings will be operated via telephone, Skype or other virtual methods.
3. With its staff currently working from home, the UKIPO is currently unable to process paper forms, faxes and paper correspondence. The address paperformcontingency@ipo.gov.uk can be used instead of faxing, posting or delivering documents by hand at the UKIPO. Electronic signatures on forms and other documents will be accepted.
Measures taken by the INPI
The INPI has announced it had closed its buildings to the public and suspended its trainings until further notice.
(Update 27 March) After the first measures taken by the INPI on 16 March 2020, the French Government has adopted an ordinance n°2020-306 on 25 March 2020 that extends all time limits expiring between 12 March 2020 and one month after the end of the state of health emergency by:
one month after that date if the initial time limit was one month; or
two months after that date if the initial time limit was two months or more.
The INPI has communicated that this extension applies to all time limits prescribed by the French Code of Intellectual Property, including time limits applicable to trademark opposition proceedings and to the renewal of IP rights. However, this extension does not apply to time limits prescribed by International and European legal texts such as priority deadlines for an international extension, time limits applicable to the payment for the filing of a patent and time limits for the filing of a supplementary protection certificate.
This information replaces the INPI communication of 16 March 2020.
Measures taken by the UIBM
The Italian Decree-Law No. 23 of 8 April 2020 provides for the following measures:
1. All time limits relating to administrative proceedings at UIBM pending on 23 February 2020 or commenced after that date are suspended until 15 May 2020. This does not apply to time limits applicable to appeals before the Board of Appeal, nor to time limits applicable to international patent and trademark applications (first filings and renewals).
2. All IP rights expiring between 31 January and 15 May 2020 remain valid until 15 June 2020. After that date, it is the responsibility of the interested party to take action in order to obtain their maintenance or renewal.
The UIBM has also taken its own internal measures to face the pandemic :
1. The UIBM offices have been closed from 12 March 2020 and until further notice, but its staff remains active. The processing of paper documents forwarded by post will only be possible upon the reopening of the UIBM offices. Applicants and holders are advised to use the electronic filing system.
2. The release of authenticated copies has been temporarily suspended. Applicants and holders may only receive simple copies by email. All requests in that regard must be addressed to the following address : smecca@mise.gov.it.
3. The filing of international patent applications may still be made through the ePCT platform on which the UIBM is fully operational. The filing of international trademark applications should be made via a dedicated certified legal e-mail address : dglcuibm.div08@pec.mise.gov.it. In addition, applications in paper format have to be sent to the UIBM as soon as possible.
Measures taken by the OPRI (Belgium)
1. The OPRI has decided to stop sending legal notifications to its users, that would have the effect of setting a new binding time limit sanctioned by a loss of rights in the event of non-compliance.
2. However, when the failure to send a legal notification could have a negative impact on a user, the OPRI will still notify the user and send an email copy of that legal notification.
3. Where the legislation allows it to do so, the OPRI is prepared to accept, as far as possible and on a case by case basis, individual requests for extension of time limits.
4. With its staff working from home, the OPRI has urged users to give preference, where possible, to electronic channels of communications. Applicants and holders are advised to use the OPRI online filing tool (eOLF) or its fax number (+32 2 277 52 62). The use of emails is recommended as well, except for the filing of formal acts.
CONCLUSION
In the last weeks, IP Offices around the globe have taken measures to secure their users’ rights in the midst of the COVID-19 outbreak. Although most Offices have announced the extension of procedural time limits, these announcements call for caution: depending on the case, those extensions may be limited to some instances of the Office concerned, or to some provisions of the legal texts applicable. Therefore, we advise IP professionals and companies to take extreme care in the way they handle IP assets in these troubled times.
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For any question, please contact the authors:
Emmanuel Cornu: emmanuel.cornu@simontbraun.eu
Romain Meys: romain.meys@simontbraun.eu
