Measures implemented by Intellectual Property Offices and Courts around the world in response to the COVID-19 pandemic
Last Update: 2 June 2020
23 March 2020
As the COVID-19 pandemic continues, Intellectual Property Offices and Courts around the world have implemented various measures to accommodate for inevitable disruptions caused by the outbreak. The pandemic is a rapidly changing situation, and this article will be subject to change as Intellectual Property offices and Courts continue to make announcements. The information may not be complete for all offices/courts. We will update on a rolling basis.
The Benelux Union – Benelux Office for Intellectual Property (BOIP)
On 20 March 2020, BOIP announced that from 16 March 2020 until a date where the BOIP determine that staff can work reasonably again ("BAU date"), BOIP will not withdraw any requests or procedures because a deadline has not been met. At present, the BAU date is set for 25 May 2020. This also applies to opposition proceedings. An additional period of one month will be given for all requests and procedures for which current deadlines have expired between 16 March 2020 and the BAU date, or for which deadlines are less than one month on BAU date. This month will be counted from the BAU date. As a result, the register may not reflect the accurate status of certain trademarks during this period. BOIP will not be able to communicate a new time limit for all individual requests and proceedings during this time.
BOIP have confirmed that the announcement does not apply to actions at the Benelux Court of Justice, including the deadlines for appeal against decisions from the BOIP. Further, priority deadlines do not fall under this extension at present.
All proceedings are suspended until further notice apart from summary and urgent proceedings. All physical hearings are adjourned, and all deadlines have been extended until further notice. New proceedings cannot be initiated until further notice.
All Courts in The Netherlands were closed between 17 March to 6 April 2020. Physical hearings resumed on a limited scale from 11 May onwards. However, as far as possible, court cases will continue to be handled by telephone, with a video link or dealt with in writing. The court buildings have extended their opening hours to reduce excessive visitor numbers at peak times.
All physical hearings are adjourned until further notice. All deadlines and litigation proceedings are suspended until further notice.
Canada – the Canadian Intellectual Property Office (CIPO)
The Canadian Intellectual Property Office (CIPO) has further extended patent, trademark and industrial design deadlines that are fixed under relevant legislation. All time limits due to end between 16 March 2020 and 29 May 2020 have been extended until 1 June 2020.
The CIPO may decide to extend deadlines further, depending on how circumstances surrounding the COVID-19 pandemic evolve. The CIPO remains open and in operation at this time, and all online solutions remain available. However, clients should expect delays with respect to some services.
Many courts in Canada are offering a reduced service. Filing deadlines have been extended or suspended in certain provinces.
The Federal Court has extended its period of suspension to 29 May 2020, and will not hold hearings until 29 June 2020 at the earliest. Apart from "urgent or exceptional" matters, or case management hearings, all hearings that were previously scheduled to take place between 16 May 2020 and 28 June 2020 are adjourned. All General Sittings in this period are cancelled. This includes hearings that were scheduled to proceed by way of a telephone conference (unless specific agreements have been made with the court).
The Federal Court of Appeal has also extended its period of suspension to 29 May 2020. To determine which cases should progress, the Court is continually reviewing its list of pending cases on the basis of nature and complexity of the case, the extent to which the record is or can be made electronic, and the ongoing resource challenges facing the Registry. The cases that are chosen to progress are being conducted by teleconference or video conference.
China – China National Intellectual Property Administration (CNIPA)
The CNIPA was closed from 24 January until 2 February 2020 and reopened on 3 February. Deadlines falling during the closure were automatically extended to 3 February.
An application can be made to extend certain IP deadlines where ability to comply is affected by a COVID-19 related "obstacle". For example, applications for trade mark renewal can be extended to two months from the date of the elimination of the obstacle. Recognised obstacles include hospitalization, quarantine and periods when work has been suspended in a certain geographical area. The relevant provisions can be found in the CNIPA Notice on the Effect of the Epidemic on Deadlines Relating to Patents, Trademarks and Integrated Circuit Layout Designs (No. 350) and associated official guidance.
At present, court filings in China are done by post or online, and hearings are being conducted by video-link. All hearings before the Beijing Intellectual Property Court have been adjourned. In situations where the parties disagree with the method of online hearing or there are technical obstacles, hearings will not be conducted online and the hearing will be rescheduled.
Europe – European Patent Office (EPO)
In view of the disruptions to public life caused by the COVID-19 outbreak, the EPO announced that deadlines falling after 15 March 2020 would be extended to 2 June 2020, pursuant to Rule 134 of the European Patent Convention.
Since 1 April, oral proceedings in examination are being held by videoconference.
Oral hearings in opposition proceedings were initially postponed until 30 April, and this has now been extended to 2 June unless it has already been confirmed that they will be held by video conference, or the hearing is converted into an oral hearing by video conference with the consent of the applicant.
On 15 May it was announced that the Boards of Appeal will resume the holding of oral hearings, to a limited extent, at their premises in Haar from Monday 18 May. Parties will be asked to confirm they expect to be able to attend in person and do not expect to be affected by travel restrictions. Parties and their representatives must each complete a screening questionnaire. Any person answering in the affirmative will not be allowed to attend. The competent board will then decide if the procedure can be held without that person or should be postponed.
Oral proceedings can also be held by videoconference with the consent of the parties.
Measures have been put in place to allow limited public attendance at both in person proceedings and videoconferences.
European Union – the European Union Intellectual Property Office (EUIPO)
A decision made by the EUIPO on 29 April 2020 further extended until 18 May 2020 all time limits expiring between 1 May 2020 and 17 May 2020 inclusive, to further support and assist users during the COVID-19 pandemic.
The extension covered all procedural deadlines, irrespective of whether they have been set by the Office, or are stipulated directly in the Regulations. The effect of the extension was automatic.
European Union Courts:
No specific guidance has been issued to date. The European Court of Justice has postponed a number of cases and continue to prioritise urgent proceedings. Deadlines for lodging appeals are unaffected, but others have extended by one month. Hearings listed for dates in April were postponed.
France – French Patent and Trademark Office (INPI)
On 26 March 2020, an Order was published outlining the rules around extension of missed deadlines as a result of the current health emergency. The Order covers deadlines falling between the dates of 12 March 2020 to 24 June 2020 (the "Covered Period"). Most of the deadlines established by the French Intellectual Property Code (including formality, opposition proceedings, and payment required for the acquisition or maintenance of a right) will be postponed. The postponement will not apply to deadlines resulting from international agreements or European tests, such as the priority deadlines for an international extension.
Non-completion of certain proceedings can produce legal effects such as sanction, prescription or forfeiture of a right. As a result of the first Order of 26 March 2020, when such proceedings cannot be completed before 24 June 2020, they can be completed at the latest within two months following the Covered Period. The Order also provides for suspension of deadlines under which an administrative decision may be taken on the basis of the administration's silence. All deadlines falling in the Covered Period are postponed either to 24 July 2020 (if the original deadline was one month), or to 24 August 2020 (if the original deadline was two months or more). Deadlines that expired before 12 March 2020, or that will expire after the end of the Covered Period are unaffected.
Apart from "essential litigation" matters, all hearings that were scheduled to take place since 16 March 2020 have been postponed.
On 27 April 2020, an Order was published outlining that French courts' decisions will be issued without postponement according to a procedure without trial hearings in the following cases:
- cases on the merits for which written proceedings have been closed and the planned hearings have been cancelled between 16 March and 10 May 2020, and pleas of inadmissibility for which a hearing has been scheduled in the same period; and
- cases on the merits for which written proceedings have been closed and a hearing has been scheduled between 11 May and 24 June 2020, and pleas of inadmissibility for which a hearing has been scheduled in the same period.
The 3rd chamber of the Paris First Level Court, which specialises in intellectual property, resumed operations on 11 May 2020. The priorities of the chamber are to (i) hand down judgments that have been pending during confinement and (ii) to reschedule procedural hearings that were due to be held from 17 March 2020 and have been postponed due the pandemic. Pre-hearing status conferences will use electronic communications only, until at least mid-June.
The Paris Court of Appeal have announced that all cases scheduled between 16 March 2020 and 24 May 2020 will be decided without hearings for oral arguments. Where there are cases scheduled for oral argument between 11 May and 24 May 2020, parties may object within 15 days of the notice of receipt from the presiding judge notifying them that the case will be decided without oral arguments (unless the procedural calendar for the case had already been rescheduled).
Proceedings before the French Supreme Court have been suspended until further notice.
Germany – German Patent and Trademark Office (DPMA)
Time limits set by the DPMA were extended for all pending IP procedures, and no decision will be made because of the expiration of any time limit until 4th May 2020. Time limits to be set by the DPMA will be as generous as the situation requires. However, this extension of all time limits does not apply to time limits in connection with applications for international registration of marks or requests for subsequent designation.
Staff will not be able to process incoming paper-based mail and faxes and outgoing paper-based mail from the office without delays due to remote working arrangements. The Office have requested that users utilise the DPMAdirektPro and DPMAdirektWeb e-filing system as an alternative to paper applications.
In March and April all hearings in German Courts were adjourned except for urgent cases. Business operations are now gradually resuming in accordance with the hygiene recommendations of the Robert Koch Institute. At the Federal Court of Justice, prior written telephone registration is required for certain negotiations. Video proceedings are permitted pursuant to Section 128a of the German Code of Civil Procedure, subject to the permission of the presiding judge and/or the parties, however many German courts are reluctant to use this technology due to a lack of adequate equipment in the court buildings.
Hong Kong – Hong Kong Intellectual Property Department (IPD)
The IPD continues to provide online search and e-filing services and to publish the Hong Kong Intellectual Property Journal. With effect from 27 April the IPD's public service counter located on 24/F, Wu Chang House (open Monday to Friday from 9:00 to 17:45) was re-opened. The IPD had deferred deadlines falling on any date from 23 March to 24 April for filing any document with the Registries to 27 April. The IPD have confirmed that there are no further planned deadline extensions.
Hong Kong Courts:
The Magistrates' Courts will re-open on 19 May 2020, and the Small Claims Tribunal on 21 May 2020. Parties and legal representatives are urged not to do filing and other business immediately after re-opening unless urgent, as it is anticipated that there will be a significant number of users simultaneously attempting to file documents with the courts after the date of re-opening.
Hungary – Hungarian Intellectual Property Office (HIPO)
The HIPO visitors offices (at 1054 Budapest, Akadémia u. 21.) have been closed to the public since 18 March 2020, and will remain closed indefinitely. Inspection of documents will not be available during this period. In-person consultations with case administrators are also suspended indefinitely.
In person filing of applications is only available at the central HIPO office (1081 Budapest, II. János Pál pápa tér 7.) on business days between 10.00AM – 12.00PM. The automatic filing terminal in the central HIPO office will continue to be available 24/7. However, the HIPO is encouraging everyone to use the online filing systems or the postal services. From 10 April onwards the HIPO will no longer be providing information support via telephone. Users requiring information from the registry should instead e-mail firstname.lastname@example.org. Extension of time limits may be requested by users. As much as possible under applicable legislation, HIPO will take into account the difficulties faced by users when setting the time limits. Time limits set by HIPO to rectify irregularities and/or submit comments, and which expired on 31 March 2020 (or following that date) are automatically extended to 2 June 2020. This measure does not apply to time limits which expire after 2 June 2020.
All physical hearings until 26 May 2020 are adjourned, unless they are "urgent matters". There will be no automatic extension of deadlines.
Italy – Italian Intellectual Property Office
All terms relating to administrative proceedings that are pending on 23 February 2020 or started after that date, are suspended between 23 February 2020 and 15 May 2020 (at the request of a party or ex officio). This is pursuant to Article 37 of the Italian Decree Law no.23 which was published by the Italian Government in April 2020. Industrial property rights expiring between 31 January and 15 April 2020 will automatically retain their validity until 15 June 2020.
The extension does not relate to terms relating to appeals before the Board of Appeals or the Appeals Commission, as they refer to proceedings of a judicial and non-administrative nature.
Pursuant to Law Decree no.23/2020, all IP cases scheduled before the Italian Courts between 9 March to 11 May 2020 were postponed ex officio to a date after 11 May 2020. For cases scheduled between 11 May 2020 to 30 June 2020, judicial authorities will take measures such as holding hearings remotely (by using videoconferencing tools); or postponing the hearings to a date after 30 June 2020.
Poland – Polish Patent Office
The Polish Patent Office cancelled all hearings from 16 March 2020 onwards until further notice. They also have announced that they will only be communicating with parties via e-mail or regular mail – therefore there will be no possibility to review files.
In the period between 8 March 2020 to 30 June 2020, the deadlines for (i) filing an opposition to a trade mark application, or (ii) submitting a translation of the European patent into Polish (or submitting a translation into Polish of a limited or amended European patent) have been delayed to 1 July 2020.
In Poland several Acts have been adopted in response to the ongoing pandemic. The first Act was published on 2 March 2020 and the most recent one on 14 May 2020.
To the extent that the clock for calculation of court deadlines had not started ticking due to suspension of deadlines under the Act published on 2 March, the clock will resume from 24 May onwards.
Where the Act of 2 March 2020 has suspended an already ticking clock, from 24 May 2020 onwards, the clock will continue from the point in time that it previously stopped.
Romania – the Romanian State Office for Inventions and Trademarks (OSIM)
OSIM was closed for quarantine from 10 March until 22 March 2020 and reopened on 23 March. Deadlines completed during the closure were automatically extended for close of business 23 March. It remains unclear if the suspension for this period has extended the other terms.
As of 23 March 2020, all activities involving public attendance (including hearings or meetings) were suspended until the termination of the emergency state (declared for 30 days starting with 16 March 2020 under the President Decree no. 195/20202). Any information or registration requests shall be submitted through the authority's website, email, mail, fax or telephone. It remains unclear if and how the challenges in front of the authority are also suspended and if positive, what would be the procedure for them.
During the state of emergency, the activity of the national courts will continue for "cases of special urgency". For such cases, the courts will take the necessary measures to conduct the case remotely, and will use fax, e-mail or other means to transmit the relevant documents. The judgement of non-urgent civil cases will be suspended during the period. After the end of the state of emergency, the judgement of non-urgent civil cases will resume ex officio. The courts will take measures to set up new hearing terms and summon the parties. Some national courts dealing with non-urgent civil cases have already extended hearing terms previously allocated to the cases.
Spain – Spanish Patent and Trademark Office
All administrative terms in proceedings managed by the Spanish Patent and Trademark Office have been suspended. The prescription period of rights and actions enforceable before the Office will be also deemed suspended. The Office has announced that, given the high volume of automated administrative processes, it is possible that some automatic notifications with references to deadlines will be generated, but that such references should be disregarded. The SPTO premises are also closed but the Office can be reached by telematic means.
While the state of alarm continues, all court activity has been suspended, and all court deadlines have been automatically extended to the end of the state of alarm. According to the most recent statements made by the Spanish government, the state of alarm will be extended until at least 23 May 2020.
United Kingdom – Intellectual Property Office (UKIPO)
On 27 March 2020, the UKIPO declared 24 March 2020 and subsequent days until further notice to be "interrupted days". An interrupted day is a day in which the normal course of business at the UKIPO is not possible. The UKIPO will review and update the declaration on interrupted days on 22 June 2020.
The declaration of interrupted days means that any deadlines for patents, supplementary protection certificates, trademarks, designs, and applications for these rights which fall on an interrupted day will be extended to the next non-interrupted day. This extension applies to all non-statutory periods that have been specified by staff. However the extension does not apply to time periods that are set out under various international IP treaties such as the Patent Cooperation Treaty, European Patent Convention or the Madrid system, where the UKIPO may be acting as a Receiving Office. The period of interruption does not affect filing dates of IP applications which are filed at the Office and do not claim priority from a previous application. However, the UKIPO has advised users not to wait for the end of the period of interruption, and to meet original deadlines where possible to avoid a surge of work once the interruption period ends.
United Kingdom Courts:
Hearings are continuing via telephone, Skype, or other virtual methods where possible. No further physical hearings will be booked to take place until 1 June 2020, but this date will be kept under review. To support this, a new Civil Procedure Rule Practice Direction 51Y has been introduced to give further guidance on conducting audio hearings.
United States – the United States Patent and Trademark Office (USPTO)
On 16 March 2020, all USTPO offices were closed to the public "until further notice", but remain open for the filing of documents and fees via (i) the USPTO electronic filing system, (ii) the United States Postal Service, (iii) hand-delivery to the Customer Service Window, or (iv) facsimile transmission.
All deadlines related to patent or trademark applications due to fall between 27 March and 31 May (inclusive) have now been extended to 1 June. To be eligible for an extension, filings must be accompanied by a statement explaining that the delay in filing or payment is due to the COVID-19 outbreak.
The USPTO have also waived the requirement for original handwritten signatures signed in permanent dark ink or equivalent for certain correspondence, and are now accepting copies of handwritten signatures as an alternative.
United States Courts:
The US Supreme Court will hear oral arguments virtually in May in relation to cases postponed in March and April. Courts in the majority of states have suspended or cancelled trials.
World Intellectual Property Organisation (WIPO)
An announcement made by WIPO on 16 March explained that their business continuity plans have allowed them to continue to process applications filed through WIPO's Global IP Services. The WIPO Arbitration and Mediation Centre also continues to receive and administer cases submitted under the WIPO Mediation, Arbitration, Expediated Arbitration and Expert Determination Rules. Under the WIPO Rules, parties and neutrals will benefit from considerable procedural flexibility. This will allow for a range of procedural adjustments as may be necessary. The WIPO Arbitration and Mediation Center is also offering a variety of online case administration tools, for example online docket and videoconferencing facilities.
The World Intellectual Property Organization (WIPO) is continuing operations under the Madrid System.
Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Regulations), applicants, holders and IP offices who have failed to meet a time limit for a communication addressed to WIPO may be excused if they send that communication within five days after regaining access to mail, delivery services or electronic communication.
WIPO have also applied a period of grace for the payment of fees for the renewal of an international registration under Rule 5 of the Regulations. In any event, WIPO must receive communication, instruction or payment no later than six months from the date on which the time limit concerned expired.
The International Bureau of WIPO (including in its role as receiving Office) remains open for the filing and processing of PCT applications. The Bureau has suspended the transmittal of paper PCT documents and notifications, and will instead only transmit documents and notifications electronically.
PCT Rule 82quater.1 allows for the delay in meeting PCT time limits in certain scenarios. This includes delays caused by the pandemic – including delays in the submission of documents, and/or the payment of fees. To benefit from this Rule, the applicant would usually be required to present evidence to the relevant Office no later than six months after the expiration of the applicable time limit (in addition to having taken the relevant action as soon as reasonably possible).
In situations where the international application has lost legal effect as a result of having been declared considered 'withdrawn' due to failure to complete required acts within a prescribed time limit, the receiving Office of the International Bureau of WIPO will delay the issuance of such notification until 31 May 2020.
WIPO is continuing operations under the Hague System for the International Registration of Industrial Designs. Users of the Hague System who fail to meet a prescribed time limit for a communication addressed to WIPO may be excused if they send that communication within five days after regaining access to mail, delivery services or electronic communication. The International Bureau must receive the communication concerned no later than six months from the date on which the time limit concerned expired.
Uche Eseonu, Trainee Lawyer, wrote this update.