The World Health Organisation has recently categorised the outbreak of COVID-19 as a pandemic. In addition, the outbreak of the virus has significantly affected worldwide communications. In response to this, the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO) have recently made announcements that official office deadlines are to be extended as a response to the inevitable disruptions caused by the pandemic. The Intellectual Property Office of Ireland has also made a similar announcement in line with relevant Irish legislation.
The EPO has confirmed that Oral proceedings will not be held in the premises of the Boards of Appeal until, at least, 2 June 2020. The EPO has also decided to postpone until further notice all oral proceedings in opposition scheduled until 2 June 2020 (previously until 30 April 2020) which have not either already been confirmed to take place by videoconference or will be held by videoconference with the parties' consent.
The most recent Notice published by the EPO in the Official Journal has confirmed that many official deadlines expiring on or after 15 March 2020 have been extended until 2 June 2020. This extension also applies to many deadlines for international applications. Applicants and patent holders can check here with the EPO to find it which deadlines are affected (updates are regularly posted). The Notice recognises that Germany, in which the headquarters of the EPO are situated, “is experiencing restrictions on the movement and circulation of persons as well as certain services, exchanges and public life in general, which can be qualified as general dislocation within the meaning of Rule 134(2) EPC”. Rule 134(2) EPC provides that should a deadline expire on “a day on which there is a general dislocation in the delivery or transmission of mail in a Contracting State, the period shall extend to the first day following the end of the interval of dislocation for parties which are resident in the State”. In addition, as the State is one in which the EPO is located, the provision extends to all parties and their representatives.
A similar announcement has been made by EUIPO, which is headquartered in Alicante, Spain. According to this announcement, any time limits which have, or will expire between 9 March and 30 April were extended to 4 May 2020, This deadline has now been further extended to 18 May 2020 for all time limits expiring between 1 May 2020 and 17 May 2020 in order to facilitate any disruptions caused by the outbreak of COVID-19. This extension only applies to trade mark and design matters.
The EUIPO has also clarified that the extension applies to “all time limits” which includes all procedural deadlines irrespective of whether they have been set by the EUIPO or are set down directly in the regulations. Statutory time limits which have been specifically included in the extension are time limits which apply to:
Payment of application fees
Rights of priority
Payment of opposition fees
Requests for renewal
The filing of an appeal and of the statement of grounds
Payment of the appeal fee
Deferment of publication of a design
It should be noted however, that the expression “proceedings before the Office” means that time limits relating to proceedings before other authorities will not be covered by the EUIPO extension. This will be particularly relevant for the bringing of an action before the General Court against decisions of the Boards of Appeal.
The effect of the extension is automatic and as a result there is no need to lodge a request for an extension.
Intellectual Property Office of Ireland annoucement
The Intellectual Property Office of Ireland, previously known as the Irish Patents Office, has made the decision to shut its doors to the public from Friday 13 March 2020 until Monday 18 May 2020 inclusive. As a result of this closure, these days are to be considered “excluded days”. While the official notice states that it is in accordance with the Patents Act and Rules, the Intellectual Property Office of Ireland have confirmed that these days are to be regarded as “excluded days” for all purposes. Therefore any official office deadlines which fall within these dates, shall now fall “on the first day which is not an excluded day next following such excluded day(s)”, i.e. Tuesday 19 May 2020.
The Intellectual Property Office of Ireland has confirmed that it will continue to maintain all of its online and e-services, including e-filing of applications, electronic fee payments and enquiries by telephone and email during normal opening hours.
These announcements provide some breathing space to deal with the practical issues and challenges we are all experiencing in dealing with COVID-19. However, as all portfolio managers are acutely aware, deadlines may move but they don’t go away! This is a welcome but short reprieve and all portfolio managers must continue to monitor and prepare to meet these fast approaching new deadlines.
If you have queries about these official changes or in relation to an upcoming patent, trade mark or design deadline please contact a member of our Intellectual Property team.
The content of this article is provided for information purposes only and does not constitute legal or other advice.