04/05/2020
These past months have seen unprecedented global upheaval in view of the spread of the Coronavirus through Europe. Fortunately, the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO) have in place procedures to minimise the negative impacts on patent applicants and rights holders.
Here at Reddie & Grose we have robust and secure systems in place to allow us to continue operating effectively for our clients, whilst ensuring the wellbeing of our staff. Ahead of lockdown our contingency plans kicked in at our office locations in London, Cambridge, Munich and the Hague. This includes encrypted laptops and workstations for our attorneys and support staff to enable remote working, allowing us to continue to file new applications and other documents with the patent offices and to continue to work with our colleagues around the world.
We have been monitoring the situation closely and have the following updates:
EPO
The EPO previously announced that all time limits expiring on or after 15 March 2020 are automatically extended. The extension has been prolonged twice so far, and currently applies until 2 June 2020. Further extensions are expected if the disruption continues.
It is important to note that the extension offered by the EPO does not apply to all deadlines. Examples of deadlines where the extension would not apply include:
- Filing a divisional application.
- Written submissions ahead of oral proceedings (or oral proceedings themselves).
- Filing an application ahead of a public disclosure.
Oral Proceedings before the Boards of Appeal scheduled up to 15 May 2020 have been postponed so far. Oral proceedings in person before the Examining and Opposition Divisions scheduled up to 30 April 2020 were postponed or switched to videoconference where possible. Oral proceedings already scheduled for videoconference are continuing as planned. Unusually we have seen the use of video conferencing for oral proceedings before the Opposition Division – something that has previously not been possible. It will be interesting to see if this continues when the present situation has abated.
Further details can be found here.
PCT Applications
Rule 82quater.1 of the PCT generally provides for extensions of any time limits before the receiving Office, the International Searching Authority, the Authority specified for supplementary search, the International Preliminary Examining Authority or the International Bureau in the event of “war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communications services or other like reason in the locality where the interested party resides, has his place of business or is staying”.
The relevant action must be taken as soon as reasonably possible (and no later than six months after expiry of the time limit in question).
So far the EPO has specifically confirmed that they will extend any PCT time limits expiring on or after 15 March 2020 until 2 June 2020.
This applies generally to deadlines on international applications pending in the international phase before the EPO, but importantly it does not apply to the priority period (which is not fixed by the PCT and therefore not covered by Rule 82quater.1). Priority applications should therefore still be filed in good time before the normal Paris Convention 12 month deadline.
Further details can be found here.
UKIPO
The UKIPO has also stepped in to help applicants. They announced that 24 March, and subsequent days until further notice, will be interrupted days. As such, where the time for doing anything under the UK Patents Act expires on or after 24 March 2020, that deadline is extended until the end of the interrupted period.
We do not know yet when the interrupted period will end. However, at least 2 weeks’ notice will be given before the interrupted period ends.
https://www.gov.uk/government/news/ipo-interrupted-days.
As with the EPO extension, it is important to note that not all deadlines are extended by the UKIPO. Please ask your contact at Reddie & Grose for more information.
Furthermore, if deadlines are still missed due to the effects of the Coronavirus then reinstatement will likely be available. The UKIPO applies a lower threshold for reinstatement then other offices such as the EPO. A case can generally be reinstated if the deadline was missed unintentionally (rather than the higher bar applied by the EPO which requires demonstrating that the deadline was missed despite all due care having been exercised). Applications for reinstatement must be made within 12 months beginning immediately after the date on which the application was terminated.
Further details can be found here.
We continue to monitor the situation closely, and will provide updates as necessary. If you believe that your operations may be impacted by the Coronavirus we recommend engaging with your contact at Reddie & Grose to allow us to assist with appropriate contingency planning.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
