News

COVID-19 Update

Posted:

Forresters is fully operational and working remotely.

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 has announced the end of the blanket extensions of time due to COVID-19. The present extensions expire on 2 June 2020 and after that date due dates will 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 14 September 2020 (previously until 2 June 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. No further extension will be granted and provided that the original deadline between 9 March 2020 – 17 May 2020 has not been met, you will now have to file the corresponding request/submission on 18 May 2020.

For users who still face difficulties due to the COVID-19 outbreak and cannot meet the deadline on 18 May 2020, 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 have declared that 24 March 2020 and all subsequent days until further notice are “interrupted days”. Any deadlines for: UK patents; UK supplementary protection certificates; UK trade marks; and UK designs and applications for these rights, which fall on an interrupted day will be extended until the UK IPO notifies the end of the interrupted days period.

The UK IPO reviewed the situation (again) on 29 May 2020, deciding to continue further with the period of interruption. The situation will be reviewed again on 22 June when the UK IPO will either continue further with the period of interruption or announce that the period will end after a further two weeks.

Filings: We 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.

Hearings: No further physical hearings will be booked or take place until 1 June 2020 (this date will be kept under review).

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 Federal patent court is working in emergency mode until 19 April 2020. Oral hearings scheduled during this time have been cancelled.