Date of last update: 27 May 2021
Like all organisations, intellectual property offices have had to make changes to the way they operate at the current time to limit the spread of Covid-19. Here, you will find the key changes you need to be aware of from the EPO, EUIPO, UKIPO, DKPTO, PRV and WIPO.
We are fully set up for remote working at Potter Clarkson and it is very much business as usual in terms of the services and support we can provide. Please see the FAQ below or get in touch with your usual attorney contact if you would like any more information.
EPO
What happens if I can’t meet a deadline that has already been set?
The EPO offers a limited safeguard in the case of non-observance of a time limit as a result of exceptional circumstances beyond the applicant's control and may therefore be invoked by any applicants, parties to proceedings or their representatives affected by the disruption in areas affected by the Covid-19 outbreak. Please speak with your usual attorney to check the applicability to your specific circumstances.
What is the position on patent search and examination at the EPO?
The EPO has indicated that the activities carried out by its search, examining and opposition divisions will continue. Likewise, the Boards of Appeal will continue to issue written decisions, communications and summonses to oral proceedings. The EPO’s customer services helpdesk also remains fully operational.
What is the position on oral proceedings in examination and opposition proceedings?
The EPO has postponed all oral proceedings in opposition proceedings scheduled until 31 December 2020, unless they have either already been confirmed to take place by videoconference or will be held by videoconference with the parties' consent. In addition, the EPO has extended its pilot project for holding opposition oral proceedings by videoconference until 31 January 2022, and from 4 January 2021 will require parties to proceedings held during the pilot to participate by videoconference, unless there are serious reasons for not doing so.
In any event, all oral proceedings in examination will be held by videoconference, again unless there are serious reasons for not doing so.
What is the position on oral proceedings in appeal proceedings?
Oral proceedings in the premises of the Boards of Appeal resumed, to a limited extent, on 18 May 2020. If parties cannot attend Board of Appeal oral proceedings for which they have been summoned they have to request a change of date.
As a general rule, parties will not be sent a communication informing them of a change of venue or starting time. Such changes may take place at short notice, and so it is recommended that parties consult the online calendar approximately three days before their oral proceedings to check the location and exact start time.
Oral proceedings before the Boards of Appeal can now also be conducted using videoconferencing technology, and from 1 January 2021 may be done so even without the agreement of the parties concerned.
Will there be further changes?
The EPO will continue to monitor the situation and may take further measures as required. Your Potter Clarkson attorneys are keeping a close eye on this rapidly evolving situation and will provide regular updates. You can also find up to the minute information on the EPO website.
EUIPO
What measures have been put in place around time limits?
The EUIPO has announced that all time limits expiring between 9 March 2020 and 17 May 2020 inclusive that affect all parties in proceedings before the Office are extended until 18 May 2020. This applies to all proceedings before the EUIPO including payment of fees, priority claims, opposition periods, opposition fees, renewals, appeals, conversion and deferment of publication in respect of trade mark and design matters.
After 18 May 2020, should users still face operational difficulties, they will have to rely on the regular means of coping with time limits, for which the EUIPO has issued a new guidance note.
UKIPO
Is the UKIPO open?
Access to the UKIPO’s Newport office is limited but the majority of its services remain unaffected. The London office has been closed, to all but critical workers, until at least 18 February 2021. This means that customers cannot gain access to file in person, and no paperwork is being processed by the London office. Customers needing to submit papers by post should therefore send them instead to the Newport office. Customers are, however, encouraged to use online services and to communicate digitally. All UKIPO related filings and prosecutions will continue, as normal.
How can I send and receive documents?
The UKIPO has extended its services to provide all outgoing documents via email, wherever possible.
In the meantime, the UKIPO has turned off its fax service but forms or correspondence may still be filed by post or hand delivered to one of its offices. Documents filed in this manner will take longer than usual to process. Hence, we recommend filing all documents online, where possible. Any forms which cannot be filed online should be sent to the UKIPO’s dedicated email address forms@ipo.gov.uk (except services relating to secrecy provisions, which must still be filed by post).
Will hearings take place?
While the UKIPO has limited access to its offices, it is not yet able to hold hearings in person. However, hearings are still possible by telephone, Skype or other virtual methods.
What happens if I can’t meet a deadline that has already been set?
The UKIPO has declared 24 March to 29 July to be “interrupted days”, so any deadlines for patents, supplementary protection certificates, trade marks, designs, and applications for these rights, which fall in this period are extended until 30 July.
Additionally, any UKIPO patent examination reports will have a standard response period of four months from now on.
Meanwhile, to support businesses the following temporary fee changes apply from 30 July 2020 to 31 March 2021 in relation to patents, supplementary protection certificates (SPCs), trade marks and registered designs:
- fees for extensions of time will be zero
- there will be no surcharge for payment of a patent application fee after the date of filing
- fees to apply for reinstatement and restoration will be zero
- for patents and designs, there will be no surcharge for payment of a renewal fee late
- for trade marks, the surcharge for payment of a renewal fee late will be £1
- there will be no additional fee for late payment of SPC fees
Please note, however, that the deadlines for completing actions, requesting extensions of time and paying fees are not affected by these fee changes and must still be complied with.
What happens if we need something done urgently?
The seamless transition that the UKIPO has put in place and our capability to deliver services remotely means that we can work to our clients’ deadlines. Please contact us if you have an immediate need or concerns about future deadlines.
DKPTO
What happens if I can't meet a deadline that has already been set?
There are no automatic extensions of any deadlines set by the office. However, the office has indicated that it will be as ‘flexible as possible’ in relation to granting extensions of due dates. If a deadline is missed and no extension was requested, the office notes that the usual remedy of requesting reinstatement remains available.
What is the position on patent search and examination at the DKPTO?
The DKPTO remains operational so search and examination of pending applications should be unaffected. One notable change is that in person Examiner interviews are no longer possible. These can however be rearranged via Skype.
As visitors to the office are no longer allowed, it is no longer possible to file an application in person at the DKPTO. The application can however be filed using the physical post box in Taastrup, or alternatively using the online filing tools which are available.
Finally, the office has indicated that Dialogue Searches are not available at the moment.
Will there be further changes?
Further updates can be found on the DKPTO website (www.dkpto.dk, or www.dkpto.org for the English version).
PRV
What happens if I can’t meet a deadline that has already been set?
The office has announced that it is possible to request extensions of from two to four months for any time limits to respond to examination reports. Extensions can be requested in writing, or via the online platform.
What is the position on patent search and examination at the PRV?
Search and examination is proceeding as normal, though there have been some restrictions in the ability to visit the office in person. The opening hours have been restricted, and the library facilities are closed. Moreover, any in person hearings with an Examiner will be done digitally.
As most of the staff is now working from home, the office has requested that the electronic filing systems are used though this has not yet been made mandatory.
Will there be further changes?
Further updates can be found on the PRV website (www.prv.se).
WIPO
What measures has the WIPO put in place?
The WIPO has activated its business continuity protocol and moved to an almost entirely virtual work presence. Further information on specific services can be found here:
- Patent Cooperation Treaty and March issue of the PCT Newsletter
- Madrid System for the International Registration of Marks
- Hague System for the International Registration of Industrial Designs
- Lisbon System for the International Registration of Geographical Indications
- Arbitration and Mediation and Domain Names
Further advice and extensions to deadlines issued by various worldwide IP offices can be found here.
