News

COVID-19 Update

Posted:

Please note: Information highlighted in orange text, reflects changes made during the last 7 days.

Forresters is fully operational and the majority of our staff continue to work remotely. We are beginning to see the limited reoccupation of some of our offices: Liverpool and Munich office are operating with some staff on site, whilst Birmingham, London and Southampton all continue to work remotely until further notice.

Our practice teams for EPO, EUIPO, DPMA, UKIPO & WIPO prosecution, oppositions and appeals have the resources and support they need to fully service our clients.

We continue to follow the advice from the UK and German governments to support the measures being taken to reduce the impact of the COVID-19 pandemic.

The respective IPOs have put in place various COVID measures.  Below is a summary of the primary measures but please consult with your normal Forresters contact regarding any scheduled filings or upcoming deadlines due in the COVID period as not all deadlines are being extended – please use email communication.

Bookmark this page for the latest COVID measures from the IPOs.

Forresters’ practice teams are working to meet all current deadlines and will only make use of the additional time provided by the IPOs’ COVID measures if the situation requires that.

EPO (European Patent Office)

EPO Filings and submissions: Forresters’ EPO online filing resources and back-ups are operational and we are filing as normal.  The EPO’s search, examining and opposition divisions are continuing with their activities.

EPO – end of blanket COVID-19 extensions of time

With its notice of 27 May 2020 the EPO announced the end of the blanket extensions of time due to COVID-19. The present extensions expired on 2 June 2020 and due dates now have to be observed as normal. This is due to the end of the general disruption in Germany, where the EPO is based.

Despite this, further exceptional extensions of time may be available on a case-by-case basis, if the applicant or representative is based in an EPO contracting state where there is still a general dislocation in mail delivery or transmission or if there is dislocation in mail delivery or transmission in a party’s location due to the pandemic. However these extensions are not automatically granted and it would be necessary to prove to the EPO that the dislocations existed.

Renewals: The EPO has decided to waive the additional fee for late payment of renewal fees during the period of 1 June 2020 to 31 August 2020, for renewal fees due on or after 15 March 2020 which are not paid in due time. For example: the renewal fee was due for an application on 30 April 2020 but was not paid. It can still be paid late within 6 months of the due date i.e. by 31 October 2020 and if it is paid by 31 August 2020 the usual 50% late payment surcharge is waived. This measure does not change the 6 month late payment deadline but removes the late payment fee for a limited period.

Hearings: The EPO decided to postpone until further notice all oral proceedings in opposition scheduled until 31 December 2020 (previously until 14 September 2020) which have not either already been confirmed to take place by videoconference or will be held by videoconference with the parties’ consent under the pilot project.

Change of practice: Examining Division OPs are to be held by videoconference and no longer on EPO premises unless there are serious reasons against holding the oral proceedings by videoconference such as, in particular, the need to take evidence directly. The President of the EPO’s decision looks set to persist post-COVID. The decision entered into force on 2 April 2020 and applies to oral proceedings before examining divisions where the summons is dated on or after 2 April 2020.

The EPO has announced that opposition division oral proceedings may be held by videoconference at the discretion of the opposition division and with the agreement of all parties.

Boards of Appeal: The Boards of Appeal have resumed the holding of oral proceedings, to a limited extent, at their premises in Haar with effect from Monday, 18 May 2020. Parties will be contacted accordingly by communication. They will be requested to confirm that they expect to be able to attend in person and that they do not anticipate being affected by travel restrictions. To facilitate the arrangement of oral proceedings, parties and their representatives will be asked to inform the registry as soon as possible whether they plan to attend.

EUIPO (European Union Intellectual Property Office)

EUIPO is responsible for EU trade marks and designs

Time limits: an official communication (available here, with guidance and clarifications here) was issued, extending ‘all time limits’ between 9 March 2020 and 17 May 2020 to 18 May 2020. This automatic extension applied to all procedural deadlines, irrespective of whether they have been set by the EUIPO or are statutory in nature.

If any users faced COVID-19 related difficulties in meeting the 18 May 2020 deadline, the EUIPO has provided further guidance here.

Hearings: these are extremely rare at the EUIPO (both at first instance and on appeal), and no specific COVID guidance was issued. In the unlikely event that you have a hearing scheduled, but have not yet heard from your usual Forresters attorney, please contact them as soon as possible for an update.

UK IPO (UK Intellectual Property Office)

Time limits: The UK IPO declared that 24 March 2020 and all subsequent days until 29 July 2020 were “interrupted days”. Most deadlines for: UK patents; UK supplementary protection certificates; UK trade marks; and UK designs and applications for these rights, which fell on an interrupted day, were extended until 30 July 2020.

As a result, after 30 July 2020, deadlines are no longer extended automatically under these provisions, but some temporary fee changes will apply from 30 July 2020 to 31 March 2021 in relation to patents, supplementary protection certificates (SPCs), trade marks and registered designs, to help support businesses. Please get in touch with your usual contact for more information.

We still have access to all the usual UK IPO online filing facilities so we continue filing new applications and submissions. We also have access to a communication channel with the UK IPO which substitutes for paper or fax-filing documents.

WIPO – World Intellectual Property Organisation

WIPO remains operational. All WIPO’s IP services are now transmitting documents for users and IP Offices through electronic communication only until further notice.

Further information regarding WIPO’s response to COVID in their three main services areas can be found here for the PCT system (patents), here for the Madrid system (trade marks), and here for the Hague system (designs).

Although the PCT Rules do not provide for extensions of time per se, the Rules do allow delays in meeting a time limit to be excused, in certain situations. The International Bureau (IB) of WIPO has now confirmed that the current Covid-19 pandemic represents a suitable excuse in accordance with Rule 82quater.1. Also, the IB has confirmed that applicants seeking an excuse will not need to provide any evidence to support their request.

Also, in the light of the current financial challenges facing applicants, the IB has relaxed their procedures for dealing with new International PCT applications filed without paying official fees. As these fees represent a large portion of the total filing cost, the option to delay their payment for a couple of months may help to keep your foreign filing options open beyond the twelve month priority period.

Although the IB has urged the other PCT patent offices to adopt this approach too, it is unclear at this time whether those offices that act as PCT receiving offices will comply. As such, in view of the clear guidance provided by the IB, applicants may wish to consider using the IB as their receiving office for any new International PCT applications filed at this time.

If you are interested in filing a new International PCT application, please get in touch with your usual contact at Forresters for more information.

DPMA – German Patent and Trade Mark Office

Time limits: The DPMA covid-extensions ended 04 May 2020 so current time-limits apply.

Hearings: Summons to hearings (in examination and opposition proceedings) will no longer be issued until 30 June 2020. Hearings that have been scheduled before 30 June 2020 will not take place until further notice and are cancelled ex officio. Parties will be notified about the cancellation in writing.

Federal patent court (BPatG)

The BPatG has returned to normal operation. Oral proceedings are resumed and preventive hygiene measures have been implemented for the court’s and parties’ safety.