The European Patent Office (EPO), European Union Intellectual Property Office (EUIPO) and the UK Intellectual Property Office (IPO) have published advice on measures being taken in view of the world-wide coronavirus outbreak.
The EPO’s “continually updated” information can be found here, and the current position is summarised below.
The disruptions due to COVID-19 in Germany qualify as a “general dislocation” under Rule 134(2) EPC in a country where the EPO is located, and so the EPO has issued a notice stating that “periods” expiring on or after 15 March 2020 are extended until 17 April 2020 for all parties and their representatives. In accordance with Article 150(2) EPC, this extension applies also for international applications under the PCT.
The EPO has also indicated that if the dislocation continues, then the periods in question may be extended beyond 17 April 2020.
The EPO also recognises that being in a high-risk area (as listed below) counts as an “exceptional occurrence” such that retrospective extensions of missed deadlines may be available under the EPC (Rule 134(5) EPC) and PCT (Rule 82quater.1 PCT).
All oral proceedings before the Boards of Appeal, opposition divisions and examining divisions up until 17 April 2020 have been postponed, except for those oral proceedings which had already been rescheduled to take place by video conference.
The Executive Director of the EUIPO published, on 16 March 2020,
an Order under Article 101(4) of the EU Trade
Mark Regulation and Article 100 of the Community Designs Regulation
applying an automatic extension to 1 May 2020 (in practice 4 May
2020 due to non-working days) of all deadlines expiring between 9
March 2020 and 30 April 2020. This Order has been clarified by way
of a subsequent Presidential communication of 19 March 2020 to
confirm that “all deadlines” means all time limits for
all proceedings before the EUIPO including payment of fees,
priority claims, opposition periods, opposition fees, renewals,
appeals, conversion and deferment of publication in respect of
Community Designs. The Order does not apply to appeals to the
General Court. Nothing will be provided by the Office to confirm
these extensions on an individual basis.
The UK IPO has also published advice on measures being taken in view of the coronavirus outbreak. They indicate they will be open to extensions of time in view of the outbreak on a discretionary basis. Reinstatement and restoration in relation to missed deadlines may also be available. In situations where the coronavirus outbreak is likely to delay or prevent applicants meeting deadlines for pending UK patent, design or trade mark matters, the possibility of a discretionary extension is therefore available.
The situation is of course evolving on a daily basis and it is expected that further announcements will be made by the EPO, EUIPO and UK IPO, for example in relation to upcoming oral proceedings. If you have any questions regarding impact of the coronavirus outbreak on a specific matter, please speak to your usual J A Kemp contact.
List of high-risk areas according to the EPO
- In China: Hubei province (incl. the city of Wuhan)
- In Republic of Korea: Gyeongsangbuk-do province (north Gyeongsang)
- In France: region of Grand Est (this region includes Alsace, Lorraine and Champagne-Ardenne)
- In Austria: state of Tirol
- In Spain: Madrid
- In USA: states of California, Washington and New York
- In Germany: Landkreis Heinsberg in North Rhine-Westphalia
Please note that the definition of areas affected by the spread of the coronavirus may be subject to change.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.