European Intellectual Property in the COVID-19 Pandemic

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Uninfected, and distance working from the cloud

The broad picture in our UK and EPC jurisdictions is as follows:

  • Intellectual Property Offices in the UK and EPC jurisdictions are operational, although with business restrictions.
  • On-line filing of patent, trade mark and design applications in the UK Intellectual Property Office (UKIPO) and of patent applications in the European Patent Office (EPO) is largely unaffected by the pandemic at the present time.
  • Statutory (and administrative) periods for action by patent applicants and other parties have been extended in both jurisdictions, where legislation permits it, to reflect the declared period of “general disruption”.
  • These measures,  accompanied by official messages of commitment to  IP systems users, will go a long way to avoiding IP losses;  however, it is perhaps inevitable that surprises, and one or two gaps, will emerge as  the emergency provisions are digested and implemented.
  • Certain critical legal principles remain unchanged and could be more challenging than usual for client businesses to address.

 [LAST UPDATED  April 10, 2020]

UK Intellectual Property Office (UKIPO)

The UKIPO is physically closed and UKIPO staff are distance working. However, the Office is in operation for:

(i) On-line filing of patent, trade mark and design applications;

(ii) On-line filing of the limited other documents [1] for which on-line filing is normally permissible (including UK national phase entry of PCT applications);

(iii) Email filing of other documents [1] under a temporary filing rule (which is our view requires some clarification and in any event appears ro be of limited application) which it appears will be effective for the disruption period.

(iv) Paper filing is also possible but, although documents filed this way will be given a provisional filing date, there is some ambiguity on the policy and official processing will be subject to substantial delay – we are therefore currently advising against this filing route unless unavoidable.

UK Deadlines*:

(i) All periods expiring from March 24, 2020 onward, whether fixed by national law or by administrative function, are deemed to be extended [2] until a date to be announced in a legal notice which the UKIPO will issue in due course. Of course, most but not all, periods fall within the above framework, and parties will no doubt take the precaution of checking individual instances with their UK advisers.

(ii) The UKIPO has stated that it will provide at least two weeks’ notice of the moratorium coming to an end. It is due to review the situation on April 17, 2020, when we expect issue of a legal notice by the UKIPO to continue the moratorium.

(iii) At least in the case of trade marks, it seems clear that the UKIPO intention, whilst the disruption continues, is to issue office actions with longer normal terms for response. However, it is understood that there are legal obstacles to application of this approach to designs, and it is not yet clear whether it will apply to patent matters.

An official UKIPO request has been made for users to comply with existing (ie unextended) deadlines where possible.

European Patent Office (EPO)

The EPO appears to be physically closed: all procedures requiring a physical presence have been postponed and staff are distance working (distance working is any event common in the EPO).

However, patent applications and most other documents (including EPC Regional Phase entry documents) can be filed on-line (although we anticipate that the system might come under strain at times); those that cannot [3], would appear likely to benefit from the extension provisions noted below.

EPO Deadlines*:

(i) With the exception of oral proceedings (see Para (ii) below) and a small number of other exceptions/possible exceptions [4, 5, 6], all periods for action by parties, whether fixed by the governing law (the European Patent Convention) or by administrative function, expiring on or after March 15, 2020 are considered extended until May 4, 2020 (per UPDATE April 16, 2020 [No 4] – see the UPDATES button below); settling some controversy, this includes EPO renewal fees with normal payment deadlines within the disruption period (see UPDATE April 16, 2020 [No 2] at the UPDATE button below). We expect this moratorium to be updated momentarily.

(ii) Oral proceedings (non-appeal):
(a) by an updated EPO Legal Notice dated April 16, 2020, all oral proceedings before opposition divisions scheduled for dates in the (remaining part of the) month of April 2020 (the cut-off date was previously April 17, 2020) are postponed until further notice unless they have already been confirmed to take place by means of video conference;
(b) by the same updated EPO Legal Notice, all oral proceedings scheduled to take place before an Examining Division in the (remaining part of the) month of April 2020 are postponed until further notice unless they have already been confirmed to take place by means of video conference or are converted into oral proceedings by video conference with the applicant’s consent.

(iii) Oral proceedings (appeal): no oral proceedings will take place before Appeal Boards until April 30, 2020 (parties will be informed by the Board).

* Note that there various periods in both jurisdictions where special comment beyond the scope of this Note appears necessary and for which specific advice is
[1] For example, priority documents can only be filed online in the UKIPO by utilizing a copy of the priority document held in or accessible via a secure database at WIPO.
[2] Convention priority periods are arguably extended (normally 12 months for UK patent applications; 6 months for UK trade mark and design applications); we are checking this.
[3] For example, neither (i) priority documents (unless digitally signed by the issuing authority and in correct format) nor (ii) Authorizations (Powers of Attorney) can be filed electronically in the EPO (but requirements for Authorizations/Powers are very rare).
[4] The 12 months priority period for filing EPC patent applications under the Paris Convention is arguably extended (conditional on the EPO maintaining a declared disruption in the EPC state where the EPO is located) until April 20, 2020. In response a query we raised, the EPO has provided ambiguous information on this issue and we therefore prefer to advise that this possibility be relied upon (as such) only if of necessity but not otherwise (see UPDATE April 16, 2020 [No 3] at the UPDATE button below).
[5] It remains the case that EPC patent applications can be divided only before issue of a patent on the application.
[6] EPC also provides a framework whereby by a party can secure more time in the case of exceptional disruption of a local nature.

Maintain your IP Management standards

Despite a historic level of flexibility on action deadlines by intellectual property offices, this is temporary as well as extraordinary. There are some important time-sensitive things that are inflexible and will remain so today. It’s important to remember them:

(i) The 1st patent application which an applicant files for particular subject-matter must still be filed before any disclosure of that subject-matter to any third party. Clients should stick to the rule of thumb: “To be valid, a first patent application for an innovation must be filed whilst the innovation is still a secret.” [1]

(ii) The first-to-file rule still applies: put simply, patents will continue to be granted on an essentially first-come-first-served basis – pandemic or not.

(iii) The 12-month rule should be assumed to continue to apply (unless you are specifically advised otherwise in a particular case): further patent applications filed (eg in a foreign jurisdiction) after the 1st patent application for the same subject-matter must be filed within 12 months of the 1st application in order to claim its earlier date. Assume that claiming that date is crucial.

[1] Of course, the usual exception to this rule still applies, namely:  disclosures to a third party in accordance with a legally enforceable previous Non-Disclosure Agreement signed by the third party are excused (subject to the usual risks associated with NDAs).

The following are a number of EPO updates today, either notified generally to users by Official Notice or advised to us by an email from the EPO in response to queries we raised:
(1) Correcting the EPO Official Notice dated March 15, 2020, the EPO confirms today that April 17, 2020 (Friday) is the current end of the EPO declared period of disruption and that therefore periods extended under the declaration are extended to April 20, 2020 (Monday).
(2) There has been some confusion on whether EPO renewal fee payment deadlines are extended by the EPO declared period of disruption. At least one UK patent law firm has issued information stating that deadlines for paying EPO renewal fees (which normally fall due at the end of the month containing the anniversary of the filing date of the application in question) are NOT extended by the declaration of disruption. The EPO has confirmed to us today by specific email that this information is incorrect. Thus, the deadline for paying a renewal fee which fell due March 31, 2020 is automatically extended by the declaration of disruption until April 20, 2020 (without prejudice to the standard extension of 6 months obtainable on payment of a surcharge).
(3) In response a query we raised, the EPO has provided ambiguous information on the issue of whether the normal 12-months priority period for filing an EPC patent application claiming priority is extended by the declaration of disruption. We therefore prefer to advise that this possibility be relied upon (as such) only if of necessity but not otherwise.
(4) The EPO has just announced in an advance Official Notice that the extended deadline of April 20, 2020 (referred to in EPO Deadlines (i) above) has itself been extended to May 4, 2020. The same Notice slightly revises the position on oral proceedings before the Examination Divisions and Opposition Divisions and we have reflected this in EPO Deadlines (ii) above.

general wording changes