Covid-19: IPO services update

Posted: 25/06/2020

In recognition of the severe and widespread disruption faced by many businesses as a result of the Covid-19 pandemic, IP offices across the world (including the UKIPO, EUIPO and WIPO) have issued guidance on their continued operations during this period and provided greater flexibility for filing deadlines. This note has been updated as of 25 June 2020 to reflect the longer term plans put in place by the UKIPO, EUIPO and WIPO to deal with the consequences of the Covid-19 pandemic.

UKIPO

The UKIPO has treated all days from 24 March 2020 as “interrupted days”. Any deadlines concerning patents, trade marks, designs or SPCs that fall on an interrupted day have been automatically extended until the first non-interrupted day. This measure was reviewed and extended on 17 April, 7 May and 29 May 2020. The UKIPO has now confirmed that the period of “interrupted days” will end on Wednesday 29 July 2020, with the consequence that deadlines falling on an interrupted day will now expire on Thursday 30 July 2020.

Deadlines under international treaties (eg the Madrid system, the Patent Cooperation Treaty, or the European Patent Convention) where the UKIPO acts as a receiving office, continue to be unaffected by the interrupted days policy.

Any new UK trade mark, design or patent applications that do not claim Convention priority will continue to be assigned a filing date under the usual rules, namely the day of filing. The principle of first to file therefore continues to apply during and after the period of “interrupted days”.

For new UK trade mark applications, the deadline for responding to examination reports has been extended automatically to four months. For new UK design applications, the deadline remains two months, but extensions are available on request.

Most accepted UK trade mark applications will be published for opposition purposes in the usual fashion including those for which the UKIPO has to notify earlier rights holders by post. The UKIPO has also confirmed that until its offices re-open, it will not notify trade mark owners of renewal deadlines with the consequence that brand owners should ensure that they/their representatives have appropriate reminder systems in place.

The UKIPO has strongly advised that all correspondence should be done digitally as documents filed by post will take far longer to process and may not be processed until normal services resume and the UKIPO re-opens its offices.

EUIPO

All EUIPO trade mark and design time limits which were due to expire between 9 March and 17 May 2020 inclusive, and which affected parties in proceedings before the Office were previously extended until 18 May 2020.

The EUIPO announced in mid-May that no further automatic extensions will be granted. However, conscious that the Covid-19 pandemic may still have an impact upon certain parties, it has announced a series of measures allowing for greater flexibility in respect of extensions and the consequences of missing deadlines than would normally be the case.

• Extensions: time limits laid down by the Regulations are mandatory and cannot be extended. However, time limits determined by the Office in ongoing proceedings can be extended upon receipt of a reasoned request. In particular, first extension requests (typically granted for two months) may now be granted for up to six months. Second and subsequent requests (of up to six months) will be available where a party is able to explain (without needing to provide evidence) how Covid-19 has detrimentally affected its ability to comply with its deadline, albeit that the EUIPO may require the agreement of the other party to the proceedings and may refuse requests if it believe that parties are abusing the system.
• Suspensions: where inter partes proceedings have been suspended, the proceedings are stayed, and no procedural steps will be taken (except, where applicable, for the payment of fees). New suspensions can be granted pursuant to: (1) a reasoned request of one of the parties, where the suspension is appropriate in the circumstances and the Office has taken into account the interests of all the parties and the stage of the proceedings; and (2) by joint request of the parties in trade mark matters (for six months extendable up to a maximum of two years) and in design invalidity matters (for six months).
• Continuation of proceedings: in respect of trade mark proceedings (but not seniority, conversion or opposition deadlines), parties that have missed time limits may seek continuation of the proceedings within two months of the expired deadlines even without giving an explanation or justification. Where granted, the time limit is deemed to have been observed.
• Restitutio in integrum / reinstatement of rights: a party which has failed to comply with certain deadlines may, where it is able to establish that it took all due care required by the circumstances, apply for its rights to be reinstated. Should such a grant be made, the deadline that was not met is treated as having been observed and, therefore, any loss of rights in the interim is deemed not to have occurred. This remedy is available only in certain circumstances and is subject to a number of requirements. Should a party wish to rely on it they should take further legal advice.

These provisions apply only to ongoing proceedings before the EUIPO and do not therefore include, for example, appeals against decisions of the Boards of Appeal before the General Court. 

Where parties are in a position to meet either the original or extended deadline, and choose to do so, the procedure will take its usual course and any documents filed will be examined in the usual manner.

WIPO

The WIPO has not granted general deadline extensions and maintains that automatic extensions are not available. However, the WIPO has indicated that it will excuse any missed time limits which are the consequence of access to mail and delivery services being limited by the Covid-19 pandemic, provided that the communication is sent within five days of regaining access to mail or delivery services, it is received within six months of the expired deadline, and the request makes reference to Covid-19 issues (no evidence is required).

WIPO will no longer accept any postal communications due to the suspension of postal services between Switzerland and some countries, but will accept electronic communications.

Penningtons Manches Cooper

As a firm, we continue to be fully operational having moved to home-working well in advance of the UK government’s instructions to do so. As such, we continue to work towards existing IPO deadlines unless instructed otherwise by our clients.

We remain on standby to offer any assistance we can during these challenging times. If you have any questions or require further advice or guidance regarding this note, or the wider implications of the Covid-19 pandemic, please do not hesitate to contact us.

This note is part of Penningtons Manches Cooper’s coronavirus resource hub.

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