Update 19 May 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 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. However, this interpretation does not apply to international patent applications. To mitigate the consequences thereof, the WIPO has postponed until 31 May 2020 the issuance of notifications that an international patent application is considered withdrawn for failing to meet a prescribed time limit.
4. The International Bureau of the WIPO has announced that users of the Hague System (industrial designs) will be excused from failure to meet a time limit due to the COVID-19 pandemic, provided they make a request for relief within six months from the expiry of the time limit concerned. This measure applies to time limits for the transmission of a communication, the submission of information to correct an irregularity and the payment of fees. However, this measure does not apply to the payment of the second part of the individual designation fee through the International Bureau.
5. 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 receive and 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.
6. 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 2 June 2020.
2. All oral proceedings scheduled until 2 June 2020 before the EPO Examining and Opposition Divisions are postponed until further notice unless they have been confirmed to take place by videoconferencing.
3. The EPO Boards of Appeal have resumed the holding of oral proceedings to a limited extent from Monday 18 May 2020. Concerned parties will be contacted accordingly. They will be requested to confirm as soon as possible their ability to attend in person and the absence of travel restrictions.
4. 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.
5. Professional representatives and users are encouraged to make use of the EPO online services.
Measures taken by the EUIPO
1. All time limits expiring between 9 March 2020 and 17 May 2020 inclusive are automatically and with immediate effect extended until 18 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. This does not apply to time limits before other authorities, such as the time limit to bring an action before the General Court against decisions of the EUIPO Boards of Appeal.
Procedural time limits for lodging appeals with the General Court remain unchanged. However, parties are reminded that, in the event of unforeseeable circumstances or force majeure, they may request an extension to the General Court on the basis of Article 45 of the Protocol on the Statute of the Court of Justice. By contrast, in ongoing proceedings, the CJEU has specified that time limits are automatically extended by one month. However, this does not apply to time limits for instituting proceedings before the CJEU.
2. As of 18 May 2020, extensions come to an end. Nevertheless, parties are reminded that they may request a six months extension of a time limit set by the EUIPO before that time limit expires and if exceptional circumstances justify it. Exceptional circumstances include (1) difficulties arising from measures taken by public authorities against the pandemic and (2) sickness of the party or its representative. The EUIPO may subject the extension to the agreement of the other party. Additional extensions may also be granted upon request.
Parties may also request a six months suspension of the proceedings before the EUIPO if exceptional circumstances justify it. In that case, exceptional circumstances also include the financial difficulties preventing the party from obtaining or securing continued professional representation before the EUIPO that are caused by the pandemic. In trademark proceedings, the suspension may be extended upon joint request for a total maximum of two years. In design invalidity proceedings, the suspension will be granted for periods of six months regardless of the period requested by the parties.
Any party that missed a time limit can seek the continuation of proceedings within two months of the expiry of the unobserved time limit even without giving any justification, provided that the omitted act is carried out in the meantime and a fee of 400 euros is paid. However, this option is not available in design proceedings and does not apply to certain time limits, including the time limit to file an appeal against a decision of the Boards of Appeal before the General Court.
Last but not least, a party may request the reinstatement of rights when it has missed a time limit to perform a procedural act despite taking all due care required by the circumstances. A request must be submitted within two months of the removal of the cause of non-compliance and no later than one year after the expiry of the missed time limit. Evidence must be provided that all due care was taken, that the omitted act was carried out in the meantime and that a 200 euros fee was paid. However, this is not applicable to certain time limits, including the time limit to file an appeal against a decision of the Boards of Appeal before the General Court.
3. All meetings and events taking place in March have been postponed until further notice. The participants having incurred expenses will be fully reimbursed by the EUIPO.
4. 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.
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”).
On 11 May 2020, the BOIP has proposed 25 May 2020 for the BAU date. However, this date will only be officially adopted as the BAU date after the publication of a confirmation by the BOIP Director General. This will only be the case if the current circumstances do not deteriorate again, in a way that the work of all stakeholders could be negatively affected. In the meantime, no right can be derived from that proposal.
2. 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.
If 25 May 2020 is confirmed as the BAU date, the BOIP has specified that:
All time limits that were set to expire between 16 March 2020 and 24 June 2020 will expire on 25 June 2020, including time limits for payments and time limits to file an opposition against a trademark application;
All time limits that expire on or after 25 June 2020 remain unchanged;
All time limits set from 25 May 2020 onwards will remain unchanged, even if they expire before 25 June 2020.
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.
4. The telephone accessibility of the BOIP was restored on 15 May 2020. Its staff will nevertheless continue to work from home as much as possible.
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 31 May 2020 concerning the filing of certain patent and trademark-related documents and the payment of certain required fees to the USPTO are extended until 1 June 2020, 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”.
5. The filing of plant patent applications and follow-on documents is temporarily permitted via the USPTO patent electronic filing systems until further notice. Filers are reminded that only registered users may benefit from that option.
6. Under the new COVID-19 Prioritized Examination Pilot Program, small or micro entities may file a request for prioritized examination, without payment of the typical fees, in relation to patent applications covering a product or process that is subject to U.S. Food and Drug Administration approval for use in the prevention and/or treatment of COVID-19. The USPTO will undertake to reach a final decision within six months if applicants respond promptly to the USPTO communications. Up to 500 qualifying patent applications will be accepted for prioritised examination and exempted from the usual fees.
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 are cancelled ex officio until 30 June 2020. Summons to these proceedings will no longer be issued. The situation will be reviewed on 1 July 2020. Furthermore, 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 has been reviewed on 7 May 2020 and the UKIPO has decided to extend the interrupted days period until 28 May 2020, when the situation will be reviewed again by the UKIPO.
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. The time limit for responding to examination reports has been automatically extended to four months for all UK trademark applications. However, that time limit remains two months for UK design applications, although extensions may be requested by applicants.
4. 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. Forms should be sent in separate e-mails, accompanied with a fee-sheet if a fee is due. Electronic signatures on forms and other documents will be accepted.
Measures taken by the INPI
The INPI buildings will remain closed to the public at least until 2 June 2020. In the meantime, its staff remains available by phone and e-mail. Its online services remain fully functional, whereas official copies of documents may only be provided by the INPI in a pdf format signed electronically. Finally, its trainings will remain suspended, with the exception of online webinars.
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 (as consolidated on 15 May 2020) that extends all time limits expiring between 12 March 2020 and 23 June 2020 to:
23 July 2020 if the initial time limit was one month; or
23 August 2020 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 2020 and 31 July 2020 remain valid until the 90th day following the end of the state of emergency. The UIBM will promptly inform users about that date. 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: mirella.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. The OPRI will resume sending such notifications on 25 May 2020. As far as possible, the OPRI will undertake to send an e-mail copy of such notifications until 30 June 2020 as a measure of courtesy to its users. The situation will be reassessed on that date.
2. After announcing that it was prepared to accept, as far as possible and on a case by case basis, individual requests for extension of time limits, the OPRI has stated that it does not currently have a legal basis to grant time limits extensions before the Office in the event of a crisis.
3. The search service “EPOQUE” provided by the OPRI Information Section will remain suspended until 25 May 2020. After that date, searches may only be conducted through that service in limited amounts as a first step.
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
