Covid-19 IP Update: Intellectual Property Office developments (UPDATED)

Hogan Lovells

The Hogan Lovells IP & Media Technology team remains fully operative. We are tracking the changes being made by intellectual property offices around the world in response to the coronavirus so we can keep you informed on the key developments.

China

On 28 January 2020, CNIPA (China's National Intellectual Property Administration) published its Notice 350 (see here, in Chinese), which is applicable to both trademark and patent matters. According to the Notice, the CNIPA remains open during the coronavirus epidemic, and as a general rule, deadlines can be suspended starting from the day of the 'appearance of an obstacle' (e.g. local epidemic control restrictions) and resume after the day of the 'elimination of an obstacle' (e.g. after the epidemic control restrictions have been lifted). As to patents, the Notice also specifies that if an applicant misses a deadline because of epidemic control measures, such applicant can invoke force majeure (Art. 6 of the Implementation Regulations under the Patent Law), which means that it can apply for a reinstatement of its rights within 2 months.

Fortunately, as the intensity of the epidemic in China has lessened over the last weeks, the CNIPA is resuming its normal activities. This means that the volume of its issued decisions and granted applications is gradually increasing to a normal level.

Authored by Stefaan Meuwissen

 

Community Plant Variety Office

On 24 March the President of the Community Plant Variety Office decided that all

time limits expiring between 17 March 2020 and 3 May 2020 inclusive, that affect all parties in proceedings before the Office, are extended until 4 May 2020. However, time limits regarding the starting of technical examinations, the submission of plant material for the conduct of technical examinations by Examination Offices and the payment of fees due for arranging and carrying out the technical examination of a variety being the subject of an application for a Community plant variety right are not extended.

Authored by Penelope Thornton

 

EUIPO

For those with European Union Trademarks (EUTMs), the European Union Intellectual Property Office (EUIPO) in Alicante, Spain remains open although all staff are now working from home and it has extended all deadlines falling between 9 March 2020 and 30 April 2020 to 1 May 2020 (in practice 4 May, since 1 May is a public holiday, followed by a weekend). In a recent update the EUIPO confirmed that is to be read literally and encompasses all procedural deadlines in relation to trade mark and design matters, irrespective of whether they have been set by the Office or are statutory in nature. The extension applies not only to the first instance proceedings but also to all proceedings which are pending in front of the EUIPO's Boards of Appeal (including the statutory deadline to file an appeal to the Boards). Parties are reminded that this extension does not apply to proceedings before other authorities, even if mentioned in the Regulations. This is in particular the case with regard to the time limit for bringing an action before the General Court against decisions of the Boards of Appeal (Article 72(5) EUTMR and Article 61 CDR).

For those with pending proceedings in front of the Court of Justice of the European Union (CJEU), the CJEU remains open but priority is given to those cases that are particularly urgent (urgent proceedings, expedited proceedings and interim proceedings). Procedural time limits for instituting proceedings and lodging appeals continue to run and parties are required to comply with those time limits. By contrast, the time limits prescribed in (non-urgent) on-going proceedings are extended by one month with effect from 19 March 2020. Those time limits shall expire at the end of the day which, in the following month, is numbered the same as the day on which the time-limit should have expired or, if that day does not exist in the following month, at the end of the day of the last day of that month.

For those with pending proceedings in front of the General Court of the European Union (GC), there has been little change to existing deadlines. The GC remains open and is endeavouring to deal with cases as normal. Priority shall be given to cases that are particularly urgent. Time limits, including time limits for instituting proceedings, shall continue to run and the parties are required to comply with those time limits. However in order to take into account the legitimate difficulties that the parties are currently facing, the time limits that will be fixed by the registry, with effect from 19 March 2020, shall be adapted.

Authored by Imogen Fowler

 

EPO

The EPO has said that all oral proceedings scheduled until 17 April 2020 before the Examining division and the Opposition division will be postponed until further notice unless already scheduled as videoconference. Before the Boards of Appeal no oral hearing will be held until 17 April 2020. On 15 March, the EPO also announced that all deadlines are extended until 17 April 2020.

Authored by Andreas Schmid

 

Germany

The German PTO has confirmed that all deadlines set by the Office are automatically extended until 4 May 2020, so parallel to the notice given out by the EUIPO. Any deadlines to be set in the meantime will be set generously. The Office stated, however, that it cannot extend any statutory deadlines, so these will have to be met or a request for restitution in integrum would have to be filed.

The GPTO will not send out any summons for oral hearings until further notice and any hearings that have been scheduled already will be postponed. Affected parties will be notified individually.

According to the GPTO, operations continue via remote office capabilities. However, there will be delays with regard to all tasks performed by the GPTO due to staff absences.

Authored by Cedric Rohr

 

Italy

In light of the spread and impact of COVID-19 around the world, the Italian Patent and Trademark Office issued a Decree providing for a stay of all official deadlines falling within 9 March and 3 April 2020*. The stay concerns all deadlines involving any activity with the Italian Patent and Trademark Office, with exception of mandatory deadlines in opposition proceedings (i.e. the deadline to bring opposition, to file the PoA to commence the action and the relevant supporting arguments), as well as the mandatory deadlines to bring action before the Office Board of Appeal.

Many of the officers of the Italian Patent and Trademark Office are also working from remote to ensure the functionality of the system. Given that the majority of activities may be carried out online, we do not expect significant impact on IP matters.

On 17 March 2020, the Italian Government issued a further decree (so called "Cura Italia", in English "Heal Italy") adopting additional measures to contain the spread of COVID-19. As far as administrative proceedings are concerned, the decree has established a stay of any deadlines falling from 23 February to 15 April 2020. Moreover, the decree provided that any "certificates, permits, authorizations or other deeds" issued by Italian Authorities expiring between 31 January 2020 and 15 April 2020 will stay into force until 15 June 2020.

*Considering the new piece of law, the Italian Patent and Trademark Office further clarified its official position as to the management on its deadlines, indicating that also the mandatory deadlines running in opposition proceedings are now stayed until 15 April 2020.

The Office explained that before the entrance into force of the "Cura Italia" decree, they did not have the power to autonomously stay mandatory deadlines, as only the Government is in the position to issue binding laws in this respect. According to the Office, the above should not apply to the Board of Appeal proceedings, given that the Board is not an administrative body. While the Office has not clarified its position on the treatment of deadlines running before the Board, in our view it would be fair to conclude that also such deadlines are currently stayed, bearing in mind that the Cura Italia decree has stayed all activities involving civil and administrative proceedings. The Office further clarified that any national IP rights expiring from 31 January 2020 to 15 April 2020 will remain in force until 15 June 2020.

We continue to effectively work with all our clients in IP prosecution matters and maintains strong connections with the officers of the Italian Patent and Trademark Office. Many officers have now switched to remote working and the Office has already taken a number of measures to ensure that all ordinary activities and oppositions can be carried out online also during this period. Moreover, the general call center services have been now resumed and all officers can be effectively reached via e-mail. IP activities are thus continuing without major disruptions and our team expects to handle all matters in the usual fashion.

Authored by Maria Luce Piattelli

 

Japan

Proceedings before the Japan Patent Office (the "JPO") (including IP prosecution procedures and IP-related trials) appear to be continuing as usual, at least for now. Although the Japan Patent Attorneys' Association is reported to have requested the JPO to postpone all submission deadlines uniformly, as of 19 March 2020, the JPO has not yet decided to take any special measures to remedy any potential delays caused by the Covid-19 outbreak.

Authored by Mitsuhiro Yoshimura

 

Mexico

Mexican Trademark Office and Copyright Bureau will officially be closed until April 19, 2020. Therefore, it will not be possible to file physical or online applications, submissions, requests, etc. Deadlines are suspended while both government offices are closed.

Authored by Edgar M. Mata

 

Spain

The Spanish PTO continues to be operative (without on-site attendance of the public), with staff working remotely. The Spanish PTO IP Bulletin continues to be published on a daily basis during the week as usual, and decisions continue to be issued. It is possible to file new applications, submissions and requests in proceedings, etc. via the PTO's e-filing tools. In this respect, the decision of 16 March expressly clarifies that the users can continue to make normal use of the electronic services of the Spanish PTO. Electronic filing has been common practice in Spain anyway and the corresponding tools are fully operative. Accordingly, we generally recommend continuing with proceedings at the PTO rather than to delay those steps, in particular, to proceed with new filings as usual to avoid a later filing date.

Authored by Inmaculada Lorenzo

 

UK

Operations: The majority of services of the UK Intellectual Property Office (UK-IPO) are operating as normal, but paper filings will not be processed until further notice.

Deadlines falling after 23 March 2020: These have all been extended for the duration of a so-called "interrupted days period", until at least 1 May 2020. The UK-IPO we will provide a minimum of 2 weeks’ notice before ending this period of suspension.

The UK-IPO is set to review the situation on 17 April 2020. After 17 April 2020 the interrupted days period will either be continued or the UK-IPO will announce that the period will end after a further two weeks, i.e. potentially on 1 May 2020.

Despite this suspension of deadlines, the UK-IPO is encouraging users to continue to work to existing deadlines if possible.

Deadlines before 24 March: Previously the UK-IPO said that it would extend deadlines where national and international legislation allows and that where a deadline has been missed, resulting in a loss of rights, they may be able to restore or reinstate the right depending on the circumstances. This statement has not, so far, been reversed and so if you have registered IP rights which could be affected due to a deadline falling in the period before 24 March 2020, you should keep careful records of how the COVID-19 pandemic has affected your business and what you did and didn't do to mitigate loss. This will assist in demonstrating why the IPO's discretion should be exercised in your favour, if needed.

Hearings: On 19 March the UK-IPO said that:

• It would continue to operate hearings via telephone, Skype or other virtual methods

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

• Parties will be contacted if their current hearing arrangements need to change

Authored by Penelope Thornton

 

USPTO

The United States Patent and Trademark Office (USPTO) considers the effects of coronavirus to be an "extraordinary situation"for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. Therefore, it has announced it is waiving petition fees in certain situations for customers impacted by the coronavirus. This notice does not grant waivers or extensions of dates or requirements set by statute.

The USPTO has said it will no longer hold face-to-face meetings until further notice, including Patent Trial and Appeal Board hearings, but will continue with phone and videoconferences.

Authored by Nadia Aksentijevich

 

WIPO

WIPO has said it has put in place remote working arrangements for its staff to ensure that the processing of applications filed via its Global IP Services is not affected. It is continuing to process applications filed through the PCT, Madrid System and Hague System and to administer other IP and related systems.

WIPO has also closed its Geneva headquarters to everyone apart from those who are essential to the delivery of its business continuity protocol.

WIPO has published detailed information on the extension of time limits under the Madrid Protocol and Hague Agreement. These result from the disruption caused by the Coronavirus (COVID-19) epidemic.

Authored by Penelope Thornton

 

How we can help

We hope that we will be able to overcome this emergency very soon and that we will be stronger than ever. We thank you for your support.

For further advice and insights to help your business respond to the legal and contractual challenges coronavirus presents, please visit our COVID-19 Topic Centre.

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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