Need to know: COVID-19 and IP office continuity

This is a short summary of the state of practice at some of the IPO offices worldwide (last updated: 29 July to reflect the recent changes at the UK IPO). As the situation is changing all the time, please refer to official websites, speak to your Novagraaf attorney or contact us for the latest advice. 

Patent and trademark offices are adapting their working methods in light of the coronavirus pandemic. We are monitoring changes to procedural requirements, timeframes, channels of communication and other impacts on IPOs worldwide. Please contact us for specific guidance and to ensure you receive the latest information in key jurisdictions.

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Global patent and trademark offices (IPOs) have adapted procedures and timeframes, including for oral hearings and certification of documents, in light of COVID-19 and social distancing. You can find a summary of the latest news from a selection of these IPOs below. As the situation is changing all the time, please be sure to refer to the official website for further details, or speak to your Novagraaf attorney to ensure you receive up-to-the minute advice. 

EPO

Latest update: Following the decision of the Administrative Council CA/D 6/20 (28 May), renewal fees due on or after 15 March can be paid up until 31 August without being charged an additional late payment fee.

  • All oral proceedings in examination and opposition proceedings scheduled have been postponed until 14 September, unless they have already been confirmed to take place by means of videoconferencing.
  • Oral proceedings at the Boards of Appeal resumed on 18 May. Concerned parties will be contacted and asked to confirm that they expect to be able to attend in person.
  •  The EPO’s Examination and Opposition Divisions continue to operate online. 

EUIPO

Latest update: EUIPO's second time limit extension ended on 18 May, with a reported 21,000 EUTMs needing to be published over a period of weeks. To assist:

  • EUIPO has accelerated work on e-communications so that all communications sent to the Office can be carried out online (more details here);
  • Approximately 1,000 delayed letters are also being gradually sent to users who have not signed up to receive electronic communications (more details here).

WIPO

The World Intellectual Property Organization (WIPO) is maintaining the majority of its services online. Due to postal disruptions, it will be delivering correspondence and documents electronically, including certified copies of registration and renewal certificates. It has suspended until further notice, the issuance of certified extracts, legalisation of documents and expedited services. 

Regional offices:

  • BOIP

Latest update: The 'BAU' date was set as 25 May 2020 (with additional period of one month). 

On 20 March, BOIP announced delays to existing deadlines, including the following measures:

  • Until IP professionals can “work normally” again, no requests or procedures will be withdrawn because a given deadline has not been met – including for opposition procedures and payments;
  • The date for return to working normally (“BAU date”) is to be set and communicated in due course (see above);
  • An additional period of one month will be allowed for all requests and procedures received before the BAU date.

This additional month will soon be over. If you have any concerns or need any specific advice, please speak to your Novagraaf attorney in the first instance.

  • INPI

Latest update: The French IP office (INPI) has postponed all deadlines until either 23 July or 23 August, depending on the case (more information here).  As a general rule, this means:

  • Most IP-related deadlines between 12 March and 23 June have been extended to 23 July if the initial deadline was one month, and 23 August if the deadline was two months or more; 
  • This relates to deadline for trademark oppositions, trademark and design renewals, patent annuities, administrative or judicial appeals and responses to INPI notifications.
  • It does not, however, concern the priority periods for an international extension, the payment periods for the filing of a patent, or the periods for filing a supplementary protection certificate (SPC), which are subject to supra-national provisions.

The INPI states that, despite the deadline extensions, users should try and meet current deadlines if they can.

  • UK IPO

Latest update: The UK IPO's 'period of interruption' ends today 29 July, meaning that the first normal day of operation will be Thursday 30 July.

On 24 March, the UK’s IP Office declared deadlines for patents, SPCs, trademarks and designs, including applications, to be considered to take place on ‘interrupted days”. Any deadline that fell on an interrupted day was extended to the end of the interruption period. The changes did not apply to time periods set under the various international IP treaties, where the UK IPO is acting as a receiving office. It also did not affect filing dates of IP applications, which will be assigned a filing date under the usual rules. 

While the UK IPO is to resume normal operations on 30 July, a number of temporary fee changes have been introduced and will remain in place until 31 March 2021. For further information, please read our overview or visit the UK IPO website

This is a short summary of the state of practice at some of the IPO offices worldwide. For further information on key jurisdictions, see the list of IPOs here, speak to your Novagraaf attorney or contact us for specific advice and support.

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