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COVID-19 – Effects on Intellectual Property (IP)

Keltie LLP

K2 IP Limited

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virus-4937553_1920IP Offices around the world have announced special measures to take account of likely business disruption, not only to their own operations but also to those of their customers, from the Coronavirus outbreak. Here we summarise the measures of the EUIPO, EPO, WIPO, UKIPO and IPOI.

If you feel that your ability to respond to an IP deadline is affected by the Coronavirus situation then please contact your normal IP representative who will be able to advise on the options that may be available. It is important to note that the various IP Offices are applying different special measures and the extent of such special measures may not be immediately be apparent. Please also note that the special measures across the various IP Offices mentioned below are changing constantly so please check with your representative for the latest news.

EU Offices

The EU Intellectual Property Office (EUIPO) has announced that all official time limits expiring between 9 March 2020 and 30 April 2020 will be automatically extended to Friday 1 May 2020. Accordingly, affected parties are not required to file a request to the Office for the extension of the time limit to take effect.

The decision of the EUIPO was published on 16 March 2020 in light of the announcement by the World Health Organisation that the outbreak of the coronavirus (COVID-19) has been characterised as a pandemic.

As Friday 1 May is a public holiday, the EUIPO will be closed, meaning that in practice the deadlines will be extended until Monday 4 May 2020.

The EUIPO has since clarified that the extension will affect all procedural deadlines for EU trade mark and design proceedings before the EUIPO, irrespective of whether they are set by the Office or are statutory in nature (i.e. are stipulated directly in the Regulations).

To confirm, the following time limits are covered:

  • Time limits set by the Office, in any proceeding before the EUIPO, including its Boards of Appeal
  • Time limits imposed directly by the EUTMR, the EUTMIR or the EUTMDR as well as CDR and CDIR, including those originating from the Paris Convention or other International Treaties
  • Payment of the Application Fee
  • Right of Priority
  • Exhibition Priority
  • Opposition Period
  • Payment of the Opposition Fee
  • Request for Renewal
  • Filing of an Appeal and of the Statement of Grounds, payment of the Appeal Fee
  • Conversion
  • Deferment of publication of design

Time limits that relate to proceedings before other authorities are not covered by the extension, even if mentioned in the Regulations, in particular, the time limit for bringing an action before the General Court against decisions of the Boards of Appeal. The full guidance published by the EUIPO can be found here.

Whilst normal time limits should be observed where possible to ensure that action is taken in good time before the extended deadline, it is reassuring that the extension can be utilised if COVID-19 causes any difficulties in obtaining instructions.

EPO

The European Patent Organisation (EPO) has provided advance notice of an intention to extend most deadlines falling on or after 15 March 2020 until 17 April 2020. It is noted that the provisions will not official come into effect until the March 2020 Official Journal has published. It is noted that not all EPO related deadlines will be covered by the EPO’s notice.

Oral proceedings before Examining and Opposition Divisions are postponed until further notice unless they are already taking place via videoconferencing. Oral proceedings before the Boards of Appeal will not be held before 17 April 2020 at the earliest. Unlike the Examining and Opposition Divisions there is no provisions allowing the Boards of Appeal to use videoconferencing.

The latest from the EPO on Coronavirus can be found on the EPO’s dedicated page.

UK Office

The UK Intellectual Property Office (UKIPO) has indicated that the majority of its services are unaffected and has asked rights holders and IP representatives to continue as normal where possible.

However, due to the disruption caused by the current situation the 24 March 2020 and subsequent days until further notice have been declared as “interrupted days” meaning that patent, design, trade mark and supplementary protection certificate deadlines falling due are extended until the end of the interrupted days period. The UKIPO has indicated that the situation will be reviewed on 17 April 2020 and either extended or an announcement will be made that the period is to end after a further two week period.

The formal notice from the UKIPO (issued 27 March 2020) makes it clear that the interruption applies to time periods set out in UK Acts and Rules and set by UKIPO staff but does not apply to time periods set out under the PCT, EPC or Madrid system where the UKIPO may be acting as a Receiving Office.

Intellectual Property Office of Ireland

The Intellectual Property Office of Ireland has indicated that they remain closed until at least Sunday 19 April 2020 and the days that they are closed are deemed “excluded days”. Deadlines falling on an excluded day are therefore moved on to the next day the office is open.

WIPO

According to a notice dated 20 March 2020 the World Intellectual Property Organisation (WIPO) has moved to an almost entirely virtual working set up. WIPO has issued a designs related notice and a trade marks related notice that highlight that any deadlines which expire on a day when the IP Office of a Contracting Party is not open will be extended to the first subsequent day on which the IP Office reopens. All time limits that concern that IP Office (e.g. the time limit to send a provisional refusal), including the time limit for the holder to respond to a notification sent by the IP Office (e.g. the time limit to respond to a notification of provisional refusal) will be extended accordingly.

WIPO strongly encourages applicants, holders, their representatives and IP Offices, to use electronic communication to mitigate the negative effects of possible disruptions in mail or delivery services.

Keltie

We would like to reassure you that Keltie remains fully operational through remote working capabilities and is able to deliver the same quality of service as you would expect under more normal circumstances.

We hope that you and your colleagues, your families and loved ones, stay safe over the coming weeks and months.

Amelia Skelding & Mark Richardson 30 March 2020


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