COVID-19 IP update: Intellectual Property Office developments (UPDATED)

Hogan Lovells

The Hogan Lovells IP & Media Technology team is 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.

**Indicates latest update

China

On 28 January 2020, CNIPA (China's National Intellectual Property Administration) published Notice 350 (see here, in Chinese), which is applicable to trademarks, patents and layout designs of integrated circuits. CNIPA remains open during the coronavirus epidemic (which has now largely subsided in China), and as a general rule under the Notice, 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). The Notice also specifies that applicants missing a deadline because of epidemic control measures, leading to the expiry of an IP right, can invoke force majeure, and can apply for a reinstatement of such lapsed right, within 2 months from the time the epidemic control measures are lifted.

In a separate statement, containing answers to frequently asked questions, CNIPA clarified that examples of valid reasons to rely on the measures would be the quarantine or infection of the right holder, or significant traffic control and lockdown measures applicable in the right holder's place of business. As to evidence of these circumstances, according to CNIPA, certificates issued by governmental agencies, public announcements or certificates of the right holder's quarantine or infection would be accepted as valid evidence. Nevertheless, in case clients estimate that it would be burdensome to gather such official evidence, or if local measures do not affect the entirety of their business operations, we would advise to take reasonable measures to meet deadlines, and rely on these measures only in case of necessity.

Given the extensive spread of the virus worldwide, according to a supplementary notice published on 27 March 2020 (see here, in Chinese), the abovementioned measures are now extended to right holders located abroad, in countries and regions also affected by the pandemic. This means that foreign applicants can also request extensions of deadlines or reinstatement of lapsed IP rights, provided they can submit the relevant evidence. We will follow these developments closely and will advise our clients on these options.

Fortunately, as the intensity of the epidemic in China has significantly 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 17 May 2020 to 18 May 2020. This 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 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).

Parties to proceedings before the Office should be aware that if they file certain submissions before the expiry of the extended time limit, the relevant time limit will be considered exhausted and the proceedings will continue without awaiting its expiration (Article 1(2) of Decision No EX-20-4).

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 decided to postpone until further notice all oral proceedings in examination and opposition proceedings scheduled until until September 14, 2020 (previous date was June 02, 2020) unless they have already been confirmed to take place by means of videoconferencing or are converted into oral proceedings by videoconference with the applicant's consent.

The Boards of Appeal have resumed the holding of oral proceedings, to a limited extent, at their premises in Haar from Monday, 18 May 2020. Parties will be contacted by communication and will be requested to confirm that they expect to be able to attend in person and that they do not anticipate being affected by travel restrictions. However, it is not clear how the EPO handles cases where a representative of a party, and employee or a managing director/general counsel etc. is affected by travel limitations. Parties and representatives will be asked to complete a simple screening questionnaire upon arrival. Any person replying to one of the questions in the affirmative will be denied access to the Boards of Appeal premises. The competent board will be informed accordingly and will decide whether the oral proceedings can be held without that person or whether they will need to be postponed. Access of the public will be allowed but only for a limited number of people.

**[section on the extension of deadlines removed, since this provision ended on June 02, 2020]

In a decision dated April 01, 2020, the EPO has further decided that all oral proceedings before Examining Divisions are to be held by videoconference, unless - either at the request of the applicant or at the instigation of the examining division - there are serious reasons against holding the oral proceedings by videoconference such as, in particular, the need to take evidence directly.

During interviews and oral proceedings held by videoconference, submissions are to be made by email or, exceptionally, by fax. The chairperson or, in the case of an interview, the first examiner will provide the applicant or representative with the email address to be used at the beginning of the oral proceedings.

This decision enters into force on April 02, 2020. The option to file documents by fax was removed with a decision on May 13, 2020.

In another update on 28 May 2020, the EPO has confirmed to temporarily waive the additional fees required for belated payment of the annual renewal fees (R. 51 (2) EPC) until 31 August 2020.

Authored by Andreas Schmid

France

Before the state of health emergency was declared in France, the General Director of the French Industrial Property Office (the "INPI") issued a decision on 16 March 2020 whereby all deadlines set by the INPI that had not lapsed on that day were changed to four months, except those for trademark opposition proceedings.

Since the state of emergency was declared on 23 March 2020, the time limits falling between 12 March 2020 and a period of one month after the end date of the declared state of health emergency – i.e. 24 June 2020 for the time being - are postponed to one month after the end of such period if the initial deadline was one month and to two months if the deadline was two months or more.

This is applicable to deadlines:

  • to file a trademark opposition, file observations in reply to an opposition or to contest a preliminary ruling (hence preceding the above mentioned INPI General Director's decision of 16 March 2020);
  • to pay for a patent annuity;
  • to renew a trademark or extend a design and to benefit from the corresponding grace period;
  • to file an appeal;
  • to make comments from third parties or to respond to a notification from the INPI.

It does not concern the priority deadlines for an international extension, the time limits for payment for the filing of a patent or the time limits for filing a supplementary protection certificate, which are subject to supra-national provisions.

Also on 23 March, Ordinance No. 2020-304 was enacted to "adapt (…) the rules applicable to the courts adjudicating in non-criminal matters (…)" to provide for various measures regarding French Courts in view of the health emergency status.


Ordinance No. 2020-304 provides, among other things, that any act, appeal, court action, formality, recordal, declaration, notification or publication provided for by law upon sanction of inter alia cancellation, lapsing, time limitation, unenforceability, inadmissibility, expiry, withdrawal, or revocation of any right and which should have been accomplished between 12 March 2020 and one month after the expiry of the end of the sanitary emergency status – set at 24 June 2020 for the time being - will be considered as having been made on time if made during the period of time which cannot exceed, starting from the end of such period of time, i.e. today, 24 June 2020, the legal time limit to act within a limit of two months.


Finally, as expected and unrelated with Covid-19 crisis, on 1 April 2020, the INPI General Director issued three decisions immediately applicable on the modalities of the actions for trademark cancellation and revocation and oppositions to patent registration before the French office.

Authored by Olivia Bernardeau-Paupe

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 Marion Fischer and 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 in 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 maintain 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), as well as customs authorities, appear to be continuing as usual except that the JPO has stopped accepting submissions in person. As of 13 April 2020, the JPO has not uniformly postponed submission deadlines to remedy any potential delays caused by the COVID-19 outbreak. However, if a party can provide a justified reason, the JPO will consider accepting documents filed as late as 2 weeks to 2 months (depending on the type of document) after the statutory due dates are over and an applicant becomes able to submit documents.

In addition, the JPO has announced that, at the request of a party having reasonable grounds, the JPO will extend for 1 month any submission deadlines imposed by the JPO during trial proceedings. Parties to the trial may make such requests multiple times if they continue to be affected by COVID-19.

The advertisement of new brands and products may be delayed due to the closure of many establishments such as filming studios and amusement parks, but, at the time of writing, we have not seen a decrease in the filing of new trademarks, as companies seem to be aware of the need to secure earlier filing dates.

Authored by Mitsuhiro Yoshimura

Mexico

Both the Mexican Institute of Industrial Property (IMPI) and Mexican Copyright Bureau (INDAUTOR) have extended the suspension of their activities, deadlines and terms until next April 30, 2020.

Authored by Edgar M. Mata

Singapore

April 2020: Singapore's mandatory workplace and school closures as a “circuit breaker” to pre-empt the trend of increasing local transmission of COVID-19 have been extended to 1 June 2020. Our offices in partnership with Lee & Lee, Singapore will be closed but we will be working remotely from home.

The Intellectual Property Office of Singapore has announced that all deadlines falling during this “circuit breaker” period from 7 April 2020 to 4 June 2020 (both dates inclusive) will be extended automatically to 5 June 2020. This extension of deadlines will not apply to periods to claim priority and other deadlines governed by international treaties, such as those prescribed by WIPO.

Spain

The Spanish government declared the state of alarm, with a lock-down of the country, on 14 March (Royal Decree 463/2020), ordering a range of measures in numerous areas, including administrative proceedings, which also affects the Spanish Patent and Trademark Office. On 16 March, the Spanish PTO issued a decision on the execution of the corresponding decree in respect of deadlines in administrative proceedings, referring to the suspension of administrative procedures under the decree and clarifying that although automatic communications and notifications may be issued that refer to deadlines without taking into account the current status of alarm, those references are not applicable and the general criteria set out in the Government Decree are to be applied. The state of alarm was initially ordered for 15 days, has since then been renewed various times, is currently in force up to 7 June 2020, and might still be renewed further. Notwithstanding the continuation of the state of alarm, the freeze on deadlines in administrative proceedings (including at the Spanish PTO) will end as of 1 June 2020, according to Royal Decree 537/2020 of 22 May, published on 23 May: the calculation of deadlines that had been suspended will be resumed as of that day.

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 Constanze Schulte

UK

Operations: The majority of services of the UK Intellectual Property Office (UK-IPO) are operating as normal, but with timescales for a number of IPO office actions and response times being extended. Paper filings will not be processed until further notice. However, the IPO has created a new email address for services that are not available online called paperformcontingency@ipo.gov.uk. This can be used instead of faxing or posting documents.

Deadlines falling after 23 March 2020: These have all been extended for the duration of a so-called "interrupted days period", until at least 06 June 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 22 June 2020. After 22 June 2020 the interrupted days period will either be continued or the UK-IPO will announce that the period will potentially end after a further two weeks, i.e. potentially on Monday 06 July 2020, resulting in the extended deadlines falling on Tuesday, 07 July 2020.

Patents: The period of interruption for patents extends all time periods mentioned in the Patents Act and Rues.

Renewals: In relation to renewals of each kind of registered right (patents, trade marks and designs) the IPO has published a table setting out if and how a given renewal deadline is affected, available to download, here. This includes an IPO note: "… that although the POI extends many of our renewal deadlines we strongly encourage our customers to meet their existing deadlines where possible. If your renewal deadline falls after the POI ends this deadline will not be extended."

Despite this suspension of deadlines, the UK-IPO is encouraging users to continue to work to existing deadlines if possible, especially in the case of deadlines for priority applications for trade marks and designs within the 6 month priority window, which are not governed by the UK's Rules.

Exceptions: The general "interrupted period" deadline extension does not apply to:

  • Various international IP treaty deadlines e.g. the Patent Cooperation Treaty, European Patent Convention, or the Madrid system, where the IPO may be acting as a Receiving Office. Remedies are available under the various international systems.
  • Trade mark notices of intention to oppose (which extend opposition deadlines by one month): For technical reasons these notices should still be filed within existing deadlines (for the time being). That is because the UK-IPO's online filing system for notices of intention to oppose has not been updated with the new opposition deadline for applications whose original opposition deadlines fall between 24 March – 11 June 2020. This means that currently it is not possible to file notices after the original opposition deadline until the UK-IPO has updated its system. Until the UK-IPO's system is updated, these notices should be filed before the original deadline expires.

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

Company name disputes: The interrupted days period does not apply to company name disputes. However the Tribunal will consider extension requests. Tribunal matters are usually dealt with in hardcopy files, and so the Tribunal has set up an email address so that it can receive electronic communications in this time. That said, the Tribunal currently cannot progress on-going cases as caseworkers cannot access the hardcopy files while working from home.

Authored by Alastair Shaw

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 certain relief and resources offered to applicants as the COVID situation continues:

For small and micro entities, filings that would have been deemed timely filed, if filed by June 1, 2020 pursuant to the CARES Act Notice dated April 28, 2020, will now be deemed timely filed if filed by July 1, 2020. For large entities, after May 31, 2020, relief will be available to those who need it on a case-by-case basis. Such requests can be submitted through a petition for an extension of time or a petition to revive.

For all entities, the USPTO will continue to provide relief in the form of a waiver of the petition fee for filing a petition for the revival of applications (and reexamination proceedings) on or before June 30, 2020, with a statement that the delay in filing or payment was due to the COVID-19 outbreak. All patent applicants and patentees are reminded that extensions of time under 37 CFR § 1.136 are available for filing replies to Office actions and notices issued during patent processing or examination; petitions under 37 CFR § 1.137 to revive an application are available if any of the patent-related documents or fees in the April Notice were not filed or paid by its due date resulting in the abandonment of an application; and petitions under 3 7 CFR § 1.378 to accept a delayed maintenance payment are available if a maintenance fee has not been paid by its due date.

Further, the prohibition against filing initial patent term extension applications via the USPTO patent electronic filing systems has been waived until further notice, subject to the submission of certain documentation and fee.

Finally, on June 3, the USPTO launched the COVID-19 Response Resource Center to provide improved access to USPTO initiatives, programs, and other helpful intellectual property (IP)-related information regarding the COVID-19 outbreak. In such resource center, the USPTO announces the implementation of a new pilot program to provide prioritized examination of certain nonprovisional patent applications with claims covering a product or process related to COVID-19; provided that, such product or process must be subject to an applicable FDA approval for COVID-19 use. The COVID-19 Prioritized Examination Pilot Program is limited to applicants that qualify for either small or micro entity status and will begin accepting requests for prioritized examination beginning July 13, 2020 until such time as the USPTO has accepted a total of 500 requests.

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

**Latest update

[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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