Update 27 March 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).
3. The processing of applications and other IP and related systems has not been affected by the pandemic. Applicants, holders and their representatives are strongly encouraged to provide an e-mail address and use electronic communication services.
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 17 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 and April 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. 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.
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) and the Italian IP Office (UIBM).
Measures taken by the USPTO
The USPTO has declared that it would not extend any patent or trademark-related time limit applicable before its instances. It has nevertheless taken the following measures due to the pandemic:
1. 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.
2. 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.
3. 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. 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
On its website, the UKIPO has merely stated that it is willing to consider requests for time limit extensions on a “case-by-case basis”. Rights lost due to failure to meet a time limit may be restored “in certain circumstances” that are not specified. For more information, the UKIPO advises customers to contact its Information centre by e-mail (Information@ipo.gov.uk) or by phone (0300 300 2000).
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. 18 of 17 March 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 (article 103, §1). This does not apply to time limits applicable to appeals before the Board of Appeal.
2. All IP rights expiring between 31 January and 15 April 2020 remain valid until 15 June 2020 (article 103, §2). After that date, it is the responsibility of the interested party to take action in order to obtain their maintenance or renewal.
CONCLUSION
In the last two 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
