UPDATED 28 MAY 2020
Although, at HMC-IP we continue to work towards meeting all deadlines as normal, for information and as a back-up, HMC-IP attorneys Anna Hally, Marie Walsh and Laurence Bibow have summarized below, the exceptional extensions that are now in place at the EPO, EUIPO, UKIPO, IPOI and INPI for this time period.
- Oral proceedings before the Boards of Appeal scheduled until 15 May 2020 are postponed.
- The EPO has 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. The EPO will inform parties in affected cases as soon as possible.
- Most (but not all) deadlines are extended to 2 June 2020. New notice dated 27 May 2020 - extensions come to an end on 2 June. There continue to be extensions available under the normal EPO provisions, but the exceptional extensions now end - https://bit.ly/2Xam2VA
- Deadlines extended to 18 May 2020. Thus, as of 18 May 2020, those extensions have come to an end.
- UKIPO declares "period of interruption" to be reviewed on 7 May 2020. The UKIPO confirmed on 7 May that they have decided to continue with the period of interruption and will review again on 28 May. The UKIPO has said it will provide a minimum of two-weeks' notice (i.e. until at least 11 June 2020 at present) before ending the interrupted days period.
- Deadlines extended to 2 June 2020.
- Deadlines before the INPI occurring in the period between 12 March 2020 and 23 June 2020 inclusive are postponed to 23 July 2020 if the initial deadline was one month and 23 August 23 2020 if the initial deadline was two months or more.
DETAILED COMMENTARY OF EXTENSIONS BY EACH OFFICE
The EPO announced that all “periods” are extended until 2 June 2020. New notice dated 27 May 2020 - extensions come to an end on 2 June. There continue to be extensions available under the normal EPO provisions, but the exceptional extensions now end.
The announcement takes the form of a Notice in the Official Journal. In accordance with this notice periods expiring on or after the date of the publication of this notice are thus extended for all parties and their representatives to 2 June 2020. The extension also applies to PCT applications handled by the EPO (Article 150(2) EPC).
The EPO notice therefore applies to all deadlines at the EPO (including those for 31-month deadline for entry to EPO Regional phase for international applications under the PCT) due after the date of the notice on 15 March 2020 until 2 June 2020.
The notice also states: “The above period may be further extended by the publication of another Notice in case the dislocation extends beyond the aforementioned date”.
While this is certainly a welcome development in these increasingly uncertain times, it should NOT be regarded as covering ALL deadlines at the EPO.
Rule 134 EPC refers to “extension of periods”, and, unfortunately, not all deadlines are covered by this reference to “periods”.
In almost all cases, “periods” (e.g., for taking action) are set by the European Patent Convention (EPC) or by the EPO itself (e.g., by way of a formal communication, e.g., an examination report); these “periods” are automatically extended by the EPO COVID-19 extension. This will apply to the vast majority of deadlines that you might have. However, some notable deadlines are NOT “periods”, and so, some deadlines are NOT covered by the COVID-19 extension. For example, the deadline for filing a divisional patent application is not covered and must be timely filed whilst the parent application remains pending.
Accordingly, care is needed before deciding to rely on the EPO’s exceptional extension due to COVID-19. If in doubt, ask your usual HMC attorney.
The EUIPO has taken a similar measure. A decision of the Executive Director has been published extending “all time limits expiring between 9 March and 30 April, that affect all parties before the Office to 1 May 2020”. On 29 April, the Executive Director of the EUIPO has today published Decision No EX-20-4, extending until 18 May 2020 all time limits expiring between 1 May 2020 and 17 May 2020, to further support and assist users during the COVID-19 pandemic.
It is important to note that extension at EUIPO does NOT apply to claiming priority under the Paris Convention for filing EU trade marks and/or Design applications.
Thus, as of 18 May 2020, those extensions have come to an end.
3. UK Intellectual Property Office (UKIPO)
The UKIPO has declared 24 March, and subsequent days until further notice, to be interrupted days.
Accordingly, any deadlines for patents, supplementary protection certificates, trade marks and designs, designs, and applications for them, which fall on an interrupted day will be extended until the UKIPO states that it will be ending the period of interrupted days. This decision applies to all statutory time periods set out in UK legislation, and to all non-statutory periods set by the UKIPO.
Importantly, this decision does NOT apply to time periods set out under the various international IP treaties, for example, the Patent Cooperation Treaty, European Patent Convention, or the Madrid system, where the UKIPO may be acting as a receiving office.
The UKIPO has said it will provide a minimum of two-weeks' notice before ending the interrupted days period. The situation will be reviewed on 7 May 2020, at which point a decision will be made to either continue with the period of interruption or end the period after a further two weeks. In practice, this means that UKIPO deadlines are extended for a minimum of five weeks. The UKIPO confirmed on 7 May that they have decided to continue with the period of interruption and will review again on 28 May.
4. Intellectual Property Office of Ireland (IPOI)
The IPOI has been closed to the public since 13 March 2020 and will remain closed until at least 18 May 2020.
The Intellectual Property Office of Ireland (IPOI) confirmed that on 18 May 2020, marking the start of Phase 1 of the easing of restrictions in Ireland, they intend to continue to the Covid-19 extensions until 2 June. Therefore, unless circumstances dictate otherwise, the period from 18 May until 2 June will be the last extension of the “excluded days” provision.
The IPOI continues to be operational with staff remote working and dealing with communications by email or post and this will likely continue after 2 June.
5. INPI (France)
Deadlines before the INPI occurring in the period between 12 March 2020 and 23 June 2020 inclusive are postponed to 23 July 2020 if the initial deadline was one month and 23 August 23 2020 if the initial deadline was two months or more..
This applies to all deadlines before the INPI, but not to deadlines issued from international treaties. In particular, this does not apply to the priority deadline.
Contact your usual HMC-IP attorney for advice specific advice.