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Major European IP offices and COVID-19 Reaction

26 March 2020

The major IP offices that we deal with have reacted to the COVID-19 outbreak in various ways as follows:

European Patent Office: The EPO has issued a courtesy advance notice stating that it expects to extend EPO deadlines falling due from 15 March to 16 April 2020 inclusive until 17 April 2020. We understand that this should apply to Paris Convention cases filed with the EPO, and should apply to EP Regional Phase entries and other EPO-specific deadlines. Divisional applications must still be filed while the parent application is pending, and we do not expect any extension to be applicable for divisional filings.

EU Intellectual Property Office: The EUIPO has issued a decision stating that all EUIPO deadlines falling due from 9 March 2020 to 30 April 2020 inclusive are extended until 1 May 2020 (and this will rollover to 4 May 2020 owing to a public holiday in Spain). We understand from guidance received from the EUIPO that this will apply to Paris Convention cases filed with the EUIPO, and to time limits set by any instance of the Office, in any proceeding before the EUIPO, including its Boards of Appeal.

World Intellectual Property Office: WIPO deadlines, excluding priority deadlines, are normally extensible on a discretionary basis. WIPO administers patents via the PCT system, designs via the Hague system, and trademarks via the Madrid system. No firm guidance has yet been communicated from WIPO on how their discretion will be applied.

UK Intellectual Property Office: The UKIPO has provided an update and has declared that all deadlines from 24 March 2020 onwards will be extended until further notice using an interrupted days provision. The UKIPO have committed to giving at least two weeks’ notice before ending this provision. This will be reviewed on 17 April 2020.

German Patent and Trademark Office: The DPMA has provided some guidance. In essence, all due dates set by the office will be extended to 4 May 2020. This will not be communicated on a case-by-case basis, but the examining section will not take any decisions on pending cases before this date. Due dates/periods set by law (including the period for filing national applications under the Paris Convention or entering the German phase under the PCT) remain unaffected and are not extended. No new hearings will be summoned for the time being. Already summoned hearings will be cancelled/postponed and this will be confirmed by the DPMA on a case-by-case basis.

French Intellectual Property Office: The INPI has now issued its guidance on the Ordonnance relating to the extension of deadlines in France. In summary, most domestic IP-related deadlines are extended to at least two months after the end of the current declared state of medical emergency in France. According the official website Vie Publique, the state of medical emergency entered into force on 24 March 2020, for a period of 2 months, so is currently scheduled to end on 24 May 2020. The state of medical emergency could be extended further, or could be terminated earlier. We understand that this will not affect other deadlines set in supra-national law, like priority periods, deadlines for translations, validation periods, the period for filing an SPC etc. We also advise that renewal payments in France are paid by the original deadline.

We intend to send clients individual emails on existing affected cases.

As you may imagine, it will be important not to rely completely on any blanket office extensions, or on discretionary extensions where available, and we ask that you endeavour to provide your instructions as soon as feasible and well before any cut-off date, circumstances allowing. We are continuing to docket and work to the original deadlines, and recommend that you use normal fee-free extensions where available. These measures together should ensure a smooth processing of all cases.

As usual, please contact your usual Withers & Rogers attorney to discuss this further as needed.

Withers & Rogers is operating on a business as usual basis, we are actioning plans enabling us to operate remotely and do not anticipate any notable change in service to our clients.