News

As the COVID-19 pandemic spreads across the globe and many governments are restricting the economic activities on their territories, the IP offices have decided to adopt measures in order to ensure the continuity of their services in the public interest as well as measures to preserve the IP holders’ rights. Since 16 March 2020, most of the IP offices have closed their offices to the public and ordered their staff to work from home. Most events are cancelled and many procedural deadlines have been extended in order to avoid the loss of IP rights. 

These measures will not all be notified to individual users of the IP Offices’ services. It is therefore important to remain well informed. Here is an overview of the measures adopted by some IP offices. 

WIPO (World Intellectual Property Organization)

Although its offices are physically closed for non-essential staff and all events are postponed or canceled through the end of April, WIPO is continuing its operations. WIPO strongly encourages applicants, owners, their agents and intellectual property offices to use electronic communications to mitigate the effects of possible disruptions in postal or mail delivery services.

According to the WIPO rules, time limits which expire on a day on which an IP office is not open to the public expire on the first day after that IP office reopens. All time limits under the Madrid system which relate to that IP office are also extended accordingly.

Failure by users of the Madrid system to observe a time limit for a communication addressed to WIPO may be excused if the communication was sent within five days of the resumption of postal, mail delivery or electronic communication services. Users must provide sufficient evidence (e.g.: an official announcement or a certificate issued by a registered medical practitioner) of the reason to excuse the failure to comply with the time limit. WIPO must receive the communication no later than six months after the expiry of the relevant time limit.

IP holders or applicants who have failed to comply with the time limits prescribed for the processing of international applications may request the continuation of the procedure without giving any reason or providing any evidence by submitting a request to that effect to WIPO on the official form MM20. The request must be submitted within two months from the date of expiration of the above-mentioned time limits and must meet all the requirements in that respect.

EUIPO (European Union Intellectual Property Office)

As a result of the measures adopted by the Spanish government on 14 March, the Executive Director of the EUIPO authorised the activation of the Office’s business continuity protocol and all EUIPO staff works from home since 16 March 2020.

The Executive Director of the EUIPO has adopted a Decision No EX-20-3 extending time limits expiring between 9 March 2020 and 30 April 2020 in the context of the coronavirus outbreak. This concerns all procedural deadlines, irrespective of whether they have been set by the Office or result from the application of the EUTMR or other Regulations.

The effect of this extension of time limits is to prevent the deadlines concerned from lapsing when they were originally due by setting a new expiry date applicable to all, namely the 1 May 2020. This effect is automatic : users are not required to file a request to the Office in this regard.

EPO (European Patent Office)

In accordance with the measures decided by the Austrian government, the staff of the EPO’s Vienna office have been instructed to work from home. Staff at all other sites are being provided with the means to work from home and working from home is encouraged. 

The EPO has published a notice to inform the public that all deadlines expiring on or after the date of 15 March 2020 are extended for all parties and their representatives to 17 April 2020.

The EPO has also decided to postpone until further notice all oral proceedings in examination and opposition proceedings scheduled until 17 April 2020 unless they have already been confirmed to take place by means of videoconferencing.

BOIP (Benelux Office for Intellectual Property)

On 20 March 2020, the Director General of the BOIP has issued a notice in order to inform the IP holders of different measures. Concerning the deadlines, the notice provides that from 16 March 2020 and until such time as it is reasonably possible for IP professionals and companies in the Benelux countries to work normally again, BOIP will not withdraw any requests or procedures because a given deadline has not been met. This applies to all deadlines, including deadlines for opposition proceedings or payments.

BOIP will determine the date when it is reasonable for IP professionals and other companies in the Benelux countries to be able to work normally again (the “BAU date”) and will communicate it via a new communication from the Director General. An extension period of one month from this BAU date will be given for all deadlines which have expired between 16 March 2020 and BAU date, or for which deadlines are less than one month on BAU date. 

INPI (French Industrial Property Office)

The French government has adopted an Ordinance No. 2020-306 on 25 March 2020 providing that all deadlines occurring in the period between 12 March and one month after the end of the state of health emergency shall be postponed to one month after the end of this period if the initial deadline was one month and to two months after the end of this period if the initial deadline was two months or more.

This applies to all time limits provided for in the intellectual property code, except those resulting from international agreements or European texts. It does therefore not apply to deadlines for claiming the priority for an international extension, the payment for the filing of a patent or the filing a supplementary protection certificate, which are all subject to supra-national provisions.

The Director of the INPI has also decided to extend to 4 months the deadlines set by the INPI for patent, trademark and design procedures, with the exception of deadlines for trademark opposition proceedings.

DPMA (German Patent and Trademark Office)

The German Patent and Trade Mark Office continues to provide its services and performs the procedures regarding patent, utility model, trade mark and design by using electronic means. However, due to the reduced presence of staff, delays are likely and all communications with the office must be made by email.

By decision of 18 March 2020, time limits granted by the German Patent and Trade Mark Office are extended until 4th May 2020, and no decision will be made because of the expiration of any time limit until this date. The German Patent and Trade Mark Office is however not authorized to extend time limits provided for by law. The general procedure of reinstatement of rights remains nevertheless open to those who would have failed to meet such a deadline.

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The measures detailed above provide a welcome relief for the IP holders and their agents whose activities have been affected by the COVID-19 pandemic by offering in most cases an extension of the deadlines in order to avoid unintentional loss of rights. However, the extent of these measures varies greatly from office to office and depends on the nature of the deadline. The IP holders and their agents ought therefore to remain very careful, especially since these measures are likely to be adapted quickly based on the evolution of the situation and of the authorities’ response to this crisis.

Charles Bernard