Covid-19: Update on procedures for patents, trade marks and designs

Date of last update: 23 June 2020

 

Like all organisations, intellectual property offices have had to make changes to the way they operate at the current time to limit the spread of Covid-19. Here, you will find the key changes you need to be aware of from the EPO, EUIPO, UKIPO, DKPTO, PRV and WIPO.

We are fully set up for remote working at Potter Clarkson and it is very much business as usual in terms of the services and support we can provide. Please see the FAQ below or get in touch with your usual attorney contact if you would like any more information.

EPO

What happens if I can’t meet a deadline that has already been set?

Currently, the EPO has indicated that all time limits expiring on or after 15 March 2020 are extended until 2 June 2020. Further legal remedies are available in limited circumstances for time limits that expired before 15 March 2020 for users located in areas directly affected by disruptions due to the COVID-19 outbreak. The extension of time limits also applies to periods for paying fees, including renewal fees.

To prevent building up a backlog of work for the end of the Covid-19 measures, we recommend working towards current deadlines as far as possible. Further, as not all deadlines are considered ‘time limits’, please speak with your usual attorney to check specific circumstances.

What is the position on patent search and examination at the EPO?

The EPO has indicated that the activities carried out by its search, examining and opposition divisions will continue.  Likewise, the Boards of Appeal will continue to issue written decisions, communications and summonses to oral proceedings. The EPO’s customer services helpdesk also remains fully operational. 

What is the position on oral proceedings in examination, opposition and appeal proceedings?

The European Patent Office (EPO) has postponed until further notice all oral proceedings in opposition proceedings scheduled until 14 September 2020, unless they have either already been confirmed to take place by videoconference or will be held by videoconference with the parties' consent. All oral proceedings in examination will be held by videoconference. Oral proceedings in the premises of the Boards of Appeal resumed, to a limited extent, on 18 May 2020.

Although efforts are being made to notify all parties by email, the EPO is encouraging affected parties to check the respective files online via the European Patent Register to look for any notice of postponement.

Will there be further changes?

The EPO will continue to monitor the situation and may take further measures as required. Your Potter Clarkson attorneys are keeping a close eye on this rapidly evolving situation and will provide regular updates. You can also find up to the minute information on the EPO website

EUIPO

What measures have been put in place around time limits?

The EUIPO has announced that all time limits expiring between 9 March 2020 and 17 May 2020 inclusive that affect all parties in proceedings before the Office are extended until 18 May 2020. This applies to 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 trade mark and design matters.

After 18 May 2020, should users still face operational difficulties, they will have to rely on the regular means of coping with time limits, for which the EUIPO has issued a new guidance note.

UKIPO

Is the UKIPO open?

Although the offices are closed, the UKIPO has confirmed that services will be largely unaffected. Most staff are working remotely and have moved to more digital forms of communication. All UKIPO related filings and prosecutions will continue, as normal. 

How can I send and receive documents?

The UKIPO has extended its services to provide all outgoing documents via email.

The UKIPO can no longer process incoming or outgoing correspondence by fax and it is only able to handle post in a limited capacity. Documents filed by post will take much longer than usual to process and may not be processed until normal services resume and the UKIPO’s offices re-open. At this point they will be given the date of receipt as a provisional filing date. Hence, we recommend filing all documents online, where possible, and the UKIPO has created a new email address paperformcontingency@ipo.gov.uk for services that are not available online (except services relating to secrecy provisions and permission to file abroad).

Will hearings take place?

The UKIPO Offices are closed to visitors, and physical hearings are not currently taking place or being booked. However, hearings are still possible by telephone or video conference, so any that are scheduled in the next few weeks will still go ahead.

What happens if I can’t meet a deadline that has already been set?

The UKIPO has declared 24 March to 29 July to be “interrupted days”, so any deadlines for patents, supplementary protection certificates, trade marks, designs, and applications for these rights, which fall in this period are extended until 30 July.

Additionally, any UKIPO patent examination reports will have a standard response period of four months from now on.

With the potential for a significant number of UKIPO actions expiring on 30 July, we will continue to work towards current deadlines as far as possible but will use the extensions wherever necessary.

What happens if we need something done urgently?

The seamless transition that the UKIPO has put in place and our capability to deliver services remotely means that we can work to our clients’ deadlines. Please contact us if you have an immediate need or concerns about future deadlines.

DKPTO

What happens if I can't meet a deadline that has already been set?

There are no automatic extensions of any deadlines set by the office. However, the office has indicated that it will be as ‘flexible as possible’ in relation to granting extensions of due dates. If a deadline is missed and no extension was requested, the office notes that the usual remedy of requesting reinstatement remains available.

What is the position on patent search and examination at the DKPTO?

The DKPTO remains operational so search and examination of pending applications should be unaffected. One notable change is that in person Examiner interviews are no longer possible. These can however be rearranged via Skype.

As visitors to the office are no longer allowed, it is no longer possible to file an application in person at the DKPTO. The application can however be filed using the physical post box in Taastrup, or alternatively using the online filing tools which are available.

Finally, the office has indicated that Dialogue Searches are not available at the moment.

Will there be further changes?

Further updates can be found on the DKPTO website (www.dkpto.dk, or www.dkpto.org for the English version).

PRV

What happens if I can’t meet a deadline that has already been set?

The office has announced that it is possible to request extensions of from two to four months for any time limits to respond to examination reports. Extensions can be requested in writing, or via the online platform.

What is the position on patent search and examination at the PRV?

Search and examination is proceeding as normal, though there have been some restrictions in the ability to visit the office in person.  The opening hours have been restricted, and the library facilities are closed. Moreover, any in person hearings with an Examiner will be done digitally.

As most of the staff is now working from home, the office has requested that the electronic filing systems are used though this has not yet been made mandatory.

Will there be further changes?

Further updates can be found on the PRV website (www.prv.se).

WIPO

What measures has the WIPO put in place?

The WIPO has activated its business continuity protocol and moved to an almost entirely virtual work presence.  Further information on specific services can be found here:

 

Further advice and extensions to deadlines issued by various worldwide IP offices can be found here.