IP Cases & Articles

Coronavirus: IP offices in Europe – changed practice

As a response to the new coronavirus disease (Covid-19) outbreak, intellectual property offices in Europe have implemented special measures to offer some level of flexibility to rights holders whilst Europe is working under new and uncertain conditions. Full details of these measures can be found below (first published on this web page on 19 March 2020 and regularly updated). Whilst this flexibility is welcomed we are not intending to make use of these provisions but will continue to work to the original deadlines.

Coronavirus (Covid-19) client update

In view of the spread of the new coronavirus disease, Covid-19, in the UK and Germany, we have implemented a number of measures to ensure that our staff are safe and well and that we maintain our high levels of client service.

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European Patent Office (EPO)

The EPO's blanket provisions for extending deadlines in response to Covid-19 ended on 02 June 2020. Requests for missed deadlines to be excused will now be considered on a case-by-case basis in accordance with the EPO's normal provisions for excusing missed deadlines due to circumstances beyond the applicant's control.

The EPO has postponed oral proceedings before the opposition divisions that are scheduled until 31 December 2020 unless already confirmed to take place by video conference (ViCo) or the parties agree for them to be held by videoconference. From 04 January 2021 oral proceedings before the opposition divisions will be held by video conference as the default unless there are serious reasons for holding them in person. Importantly, after 04 January the EPO will no longer require the consent of the parties to hold the proceedings via video conference.

It is not yet clear what the EPO will consider as a “serious reason” for holding opposition oral proceedings in person. The EPO has issued a notice providing some limited examples of “serious reasons” justifying in-person hearings, namely “reasons relating to a participant to the oral proceedings as an individual (e.g. a proven visual impairment that prevents a representative from following oral proceedings on screen)” and “reasons related to the nature and subject matter of the proceedings (e.g. where they involve the demonstration or inspection of an object…).” Objections against the reliability of video conferencing technology or the non-availability of video conferencing equipment will, as a rule, not qualify as serious reasons in this regard. The EPO guidance does not mention a large number of parties as being a serious reason for holding the proceedings in person, although from our experience the EPO generally does take the number of parties into consideration. Where there are serious reasons preventing the use of videoconferencing in opposition, oral proceedings will be postponed until after 15 September 2021.

Oral proceedings before the examination divisions will continue to be held by video conference as the default in accordance with the EPO's previous notice. Where there are serious reasons preventing the use of videoconference proceedings in examination, the oral proceedings will similarly be postponed until after 15 September 2021.

The Board of Appeal is continuing to hold oral proceedings. The Board of Appeal will no longer contact parties to enquire whether they are able to attend oral proceedings. If parties cannot attend oral proceedings for which they have been summoned, they will now have to request a change of date (see Article 15(2) RPBA 2020).

To assist with distancing some appeal oral proceedings will be held in the Isar building in Munich in addition to the main appeal building in Haar, there may be staggered start times, and attendance is generally restricted to a maximum of two people per party. Importantly, as a general rule, parties will not be sent a communication informing them of a change of venue or starting time. As such changes may take place at short notice. It is up to the parties to consult the EPO online oral proceedings calendar approximately three days before their oral proceedings to check whether they will take place on the Haar premises or in the Isar building and when exactly they are scheduled to start. D Young and Co representatives will of course monitor any changes of location and time and advise clients accordingly. Parties wishing to attend with more than two people should submit a reasoned request to that effect in advance of the oral proceedings. It will be for the Board of Appeal to decide on their request.

Currently, Board of Appeal hearings can be held via videoconference but only with the consent of all parties. We understand that the Board of Appeal is currently considering amendments to the Rules of Procedure of the Boards of Appeal to specifically refer to videoconference appeal proceedings, and to allow videoconference hearings even in the absence of the consent of the parties. We shall keep you updated on developments at the Board of Appeal.

More information can be found here (decision of the EPO President 10 November 2020) and here (notice from the EPO 10 November 2020).

Future announcements are likely to be found here (EPO Covid-19 news).

Last updated 11 November 2020.

Guide to Vico at the EPO

The EPO is moving towards the use of video conferencing (ViCo) as the “new normal” for oral proceedings. We have produced a guide drawing from our experience of ex parte and inter partes oral proceedings before the EPO by video conference to aid participants of such proceedings in what they might expect and how best to prepare. Our “Client Checklist for ViCo” is included for clients attending a ViCo hearing.

EPO ViCo Guide

European Union Intellectual Property Office (EUIPO)

All staff at the EUIPO have been working at home since 16 March 2020 with the intention that it will be business as usual.

Exceptional extensions to time limits covering all procedural deadlines, to support users during the Covid-19 pandemic, came to an end on 18 May 2020. All deadlines at the EUIPO are now operating as usual. However, provision to extend deadlines due to a party's inability to meet deadlines will exist in the usual way. Further information can be found here (EUIPO Covid-19 information).

Last updated 19 May 2020.

UK Intellectual Property Office (UKIPO)

The UKIPO declared 24 March 2020, and subsequent days until 29 July 2020, to be interrupted days. Any deadlines and applications for patents, supplementary protection certificates, trade marks and designs which fell on an interrupted day were extended until 30 July 2020. This decision applied to all statutory time periods set out in UK legislation, and to all non-statutory periods set by the UKIPO. The decision did not apply to time periods set out under the various international IP treaties, such as the Patent Cooperation Treaty, European Patent Convention, or the Madrid system, where the UKIPO may be acting as a receiving office.

The first normal day of operation when all interrupted days deadlines expire was 30 July 2020. All deadlines falling after 30 July 2020 will be treated as usual.

The UKIPO has announced some temporary fee changes from 30 July 2020 until 31 March 2021 to provide increased flexibility and support following the end of the period of interrupted days. The fee changes are:

  • Fees for extensions of time will be zero.
  • No surcharge for payment of a patent application fee after the date of filing.
  • Fees to apply for reinstatement and restoration will be zero.
  • For patents and designs, there will be no surcharge for late payment of a renewal fee.
  • For trade marks, the surcharge for late payment of a renewal fee will be £1.

Further information can be found here (UKIPO Coronavirus news updates).

Last updated 30 July 2020.

The German Patent and Trade Mark Office (DPMA)

During March 2020 the DPMA automatically extended all time limits to 04 May 2020. Separate notifications about the amended deadline expiry dates were not issued. The DPMA has not issued any further automatic extensions and further extensions are not expected to be issued at this time.

The DPMA has a dedicated page for Covid-19 updates found here (DPMA Covid-19 news).

Last updated 05 May 2020.

The World Intellectual Property Organization (WIPO)

Since 17 March 2020, the majority of WIPO staff have been working remotely. WIPO has also since released communications here (Madrid System - PDF) and here (Hague System - PDF), relating to trademark and registered design matters respectively, concerning the existing remedies available for extending a response deadline which otherwise falls on a day when either WIPO or an IP Office of a contracting party is not open to the public. To date however, unlike the EPO and the EUIPO, no blanket extensions of time have yet been issued by WIPO. We are expecting any further announcements relating to Covid-19 to be issued here (WIPO press room).

Last updated 19 March 2020.

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