Alex Bajjon

April 2020

The information in this article is believed to be correct at the time of writing (1 May 2020). Please visit the EPO, UKIPO and EUIPO websites that are being continually updated for the most up-to-date information:

EPO: https://www.epo.org/news-issues/covid-19.html

UKIPO: https://www.gov.uk/government/news/coronavirus-important-update-on-ipo-services

EUIPO: https://euipo.europa.eu/ohimportal/en

EPO

On 1 May 2020, the EPO published an updated Notice concerning disruptions due to the COVID-19 outbreak. (https://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20200501.html)

In summary, the Notice states that periods expiring on or after 15 March 2020 are extended for all parties and their representatives to 2 June 2020. This applies to both European applications and International applications under the PCT. The Notice makes clear that the 2 June 2020 deadline may be extended further.

In addition to this general extension, in the case of non-observance of a time limit as a result of a dislocation in the delivery or transmission of mail caused by an exceptional occurrence affecting the locality where an applicant, a party or their representative resides or has his place of business, other case specific extensions may also be granted.

Which deadlines are affected?

A previous Notice by the EPO ( https://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20200330.html ) clarified which deadlines are extended by the EPO provisions and which are not.

The Notice states:

The extension of time limits under these provisions applies to all periods provided for under the EPC and the PCT, including those specified by the Office under Rule 132 EPC. According to established principles of procedural law, a time limit involves a period of a fixed length for accomplishing a procedural act.

This therefore covers:

✔ The deadline for responding to an Examination Report

✔ The deadline for requesting further processing of an application

✔ The deadline for requesting examination

✔ The deadline for paying a fee (including a renewal fee)

✔ The deadline for filing a new application claiming priority from an earlier application

✔ The deadline for entering the European regional phase from a PCT application

✔ The deadline for filing an Opposition or for a patentee to respond to a Notice of Opposition (under Rule 79)

✔ The deadline for filing a Notice of Appeal/Grounds of Appeal

The extension of the Opposition period is not only important for opponents to note, but also for patentees. Patentees should be cautious that even though 9-months may have passed since grant of their European patent, it may still be possible for oppositions to be filed and therefore patentees should be cautious in taking any action which may cause a third party to oppose their patent until the extended opposition deadline has definitely passed.

The Notice explicitly clarifies certain deadlines that are not extended until 2 June 2020:

✖ The deadline for filing a divisional application under Art 76 EPC (1 day before the date of grant of the parent patent)

✖ Procedural acts that must be performed by a specific date (rather than within a specific period) – e.g. the final date for making written submissions in preparation for oral proceedings

Oral Proceedings

Apart from in exceptional circumstances, all oral proceedings before Examining Divisions are to be held by video conferences. This applies to all cases where the summons to oral proceedings is issued after 17 April 2020.

In addition, all oral proceedings before Opposition Divisions after 4 May 2020 are to be held by video conference – again, other than in exceptional circumstances.

UKIPO

The UKIPO has declared 24 March 2020 and subsequent days until further notice interrupted days.

This means that any all deadlines which fall on an interrupted day will be extended until the UKIPO notifies the end of the interrupted days period. The UKIPO has confirmed that they will provide a minimum of 2 weeks’ notice before ending the interrupted days period.

Trade mark applicants may experience a delay in receiving registration certificates due to an extension of the 2-month opposition period. This may also mean that oppositions can be filed even following 2-months from the publication date. Trade mark applicants should therefore be cautious when taking any action which may trigger a third-party to file an opposition until expiry of the UKIPO interrupted period.

EUIPO

The EUIPO has also announced that all time limits expiring between 9 March and 17 May that affect all parties before the Office are extended to 18 May 2020.

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