Out-Law Guide | 27 Mar 2020 | 3:42 pm | 12 min. read
The business impact of the coronavirus outbreak is spilling into the world of intellectual property (IP) as courts and IP offices around Europe adapt their procedures to account for the coronavirus crisis.
Businesses wishing to register or renew patents, trade marks or designs, or that are involved in legal disputes involving those or other IP rights, such as copyright and database rights, should understand how the new approaches being taken will impact them.
The EUIPO deals with the registration, renewal and challenges to the validity of EU IP rights, including the unitary EU trade mark. It has issued a Covid-19 announcement and published a decision concerning the extension of time limits.
The EPO has said that given the "exceptional occurrence" of the coronavirus outbreak, which has "disrupted proper communication" between parties worldwide and the EUIPO, "all time limits expiring between 9 March 2020 and 30 April 2020 inclusive that affect all parties in proceedings before the Office are extended until 1 May 2020". This means an extension of all time limits for 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 Community designs.
The EPO deals with the registration and renewal of, and oppositions to, European patents. On the impact of Covid-19, it has said:
It is expected that further guidance from the UKIPO, EUIPO and EPO will be issued in the coming weeks.
Intellectual property law expert Florian Traub of Pinsent Masons, the law firm behind Out-Law, said: "This is clearly an evolving situation. Not every IP office has the statutory right to extend deadlines comparable to the EUIPO’s executive director’s decision, but we can expect that examiners will use their maximum discretion in granting extensions or upholding restitutio-applications. Applicants, trade mark owners and opponents must still exercise caution as some statutory deadlines are non-extendible by law."
The WIPO is the global forum for IP services, policy, information and cooperation. It is responsible for administering, among other things, global systems for the registration of patents, trade marks and industrial designs, and it also provides arbitration services in relation to disputes over rights in domain names.
Like other IP authorities, the WIPO has shut its various offices around the world for non-essential staff, including its headquarters in Geneva, Switzerland. All meetings are postponed or cancelled through until the end of April.
Despite its office closures, the WIPO has said that its operations under the Patent Cooperation Treaty, the Madrid System for the International Registration of Marks, the Hague System for the International Registration of Industrial Designs, the Lisbon System for the International Registration of Geographical Indications as well as administering other intellectual property (IP) and related systems are continuing during the current crisis. Its Arbitration and Mediation Center (AMC) is also continuing to process domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) and other alternative dispute resolution cases.
It said: "WIPO has activated its business continuity protocol and moved to an almost entirely virtual work presence, with only a small pool of personnel retaining access to our Geneva, Switzerland headquarters. This is in line with public health authorities’ guidance to curb the further spread of Covid-19. We are committed to ensuring that any transitional issues experienced by users, IP offices and any other stakeholders in our processes are kept to a minimum despite these extenuating circumstances."
The UK Intellectual Property Office (UKIPO) deals with the registration, renewal and challenges to the validity of UK IP rights – trade marks, registered designs and patents.
The UKIPO has confirmed that its services are, to-date, largely unaffected by the outbreak of coronavirus, officially named Covid-19. However, hearings are impacted.
In a statement, it said: "Aldgate Tower where we undertake tribunal hearings is currently not operational."
"We will continue to operate hearings via telephone, Skype or other virtual methods. No further physical hearings will be booked or take place until 1 June 2020 (this date will be kept under review). Parties will be contacted over the next few days if their current hearing arrangements need to change," the UKIPO said.
Chief executive of the UKIPO, Tim Moss, declared that Tuesday 24 March and all subsequent days until further notice are considered to be ‘interrupted days’. This means that deadlines for trade marks, designs, patents and supplementary protection certificates since 24 March will be extended until the UKIPO notifies the end of the interrupted days period.
The declaration supersedes an earlier statement the UKIPO had issued which said that while it is obliged to work within the confines of the relevant legislation – which will differ according to the IP right concerned – it was likely to adopt a sympathetic approach where deadlines have been missed as a result of the pandemic.
In relation to the courts of England and Wales, Lord Chancellor Robert Buckland issued a statement on the impact on the courts of Covid-19, and a further message has also been posted to judges by the Lord Chief Justice.
Generally it is business as usual in the civil courts where adjustments have been made so that hearings can proceed through the use of telephone, video-links and other technology.
Court staff have been moving towards home working and e-filings are to be accepted by the Business and Property Courts, within which the IP courts sit in England and Wales.
Guidance has been prepared for judges and practitioners on how to conduct remote hearings before civil courts. The guidance addresses the application of Civil Procedure Rules and sets out legal issues that should be considered before remote hearings can commence. The guidance also explains the process of what will happen when a hearing is fixed and provides some further clarity around the preparations parties should complete and how remote hearings will operate.
Further guidance on case management issues, including the application of the Civil Procedure Rules and court-imposed deadlines, as well as how the court should deal with emergency applications is anticipated from the senior judiciary.
The government has published a webpage where the latest guidance can be found on courts and tribunals planning and preparation.
The Intellectual Property Office of Ireland (IPOI) remains open. In line with the recommendations of the Irish government, its physical offices are closed to the public between Friday 13 March and Sunday 19 April 2020 inclusive. The patent comptroller has confirmed that these days are deemed to be 'excluded days' for all purposes under Irish patent law, trade mark law and design law. The IPOI will continue to maintain all of its online and e-services, including e-filing of applications, electronic fee payments and enquiries by telephone and email during normal opening hours.
The comptroller explained that Rule 78 of the Patents Rules 1992 "provides that whenever the last day fixed by the Patents Act, 1992 or by these Rules, for doing any act or thing at the Office falls on any of the days on which the Office is not open to the public (which days shall be excluded days for the purposes of the Act and these Rules), it shall be lawful to do any such act or thing on the first day which is not an excluded day next following such excluded day, or days, if two or more of them occur consecutively. "
Ann Henry of Pinsent Masons said: "The IPOI is to be commended for its fast action, circulating the notice immediately following an announcement by the Irish Taoiseach on 12 March 2020. Pinsent Masons are monitoring the situation in Ireland and expect that a further extension of the 'excluded days' will shortly be announced but otherwise all services continue online."
The Courts Service in Ireland has also published a Covid-19 statement. The effect of it is outlined below.
The courts remain open. Cases can be commenced through the central office of the High Court in the normal way and the central office has a drop box procedure in place to address concerns presented by Covid-19. The Statute of Limitations therefore continues to run.
In the High Court, the president of the High Court has directed that until the end of term, 3 April 2020, no trials will begin and so cases – including related non urgent motions – stand adjourned with liberty to re-enter.
For all cases before the Commercial Court – a division of the High Court which hears all significant IP cases – all directions as to the exchange of pleadings, affidavits for motions, witness statements, remain in place and must be complied with by the parties.
Judges are available to hear urgent commercial litigation, including IP cases, for example, injunctions and their enforcement and urgent applications for judicial review. In the current unfolding crisis events can move quickly and profoundly for a party. It is worth noting that all the normal suite of injunctions can be applied in Ireland, including for example interim ex parte, quia timet – that is to prohibit an actionable wrongful act where such act is threatened, apprehended or imminent – or mareva/asset freezing injunction – that is to restrain the dissipation or removal of assets.
Otherwise, a case may be treated as urgent if a good case can be made. A party can email the relevant court registrar setting out the reasons why the case should be considered urgent. This should be on notice to the other side which must be given a chance to set out its position.
The central office of the High Court is where all commercial cases are commenced by plenary, special or summary summons or in specific instances by originating notice of motion. The Statute of Limitations therefore continues to run.
Judgments will be published online and parties will not be required to attend court for the delivery of those rulings.
The French Industrial Property Office (INPI) is closed to the public until due course given the current lockdown in France, but most INPI employees and examiners are working remotely from home so that examination, grant and official publications can continue.
All online services – filing, renewals, payment of fees, registrations, for example – remain available as normal.
Jules Fabre of Pinsent Masons said: "The French government had already, since 16 March, activated their contingency plans, limiting judicial activities to 'essential' court cases, such as extremely urgent summary proceedings, certain criminal proceedings and certain proceedings before juvenile courts. The Judiciary Court of Paris – which has exclusive jurisdiction over patent disputes – has suspended all case management hearings, trial hearings and hand down of judgments until due course, and has announced that these will be postponed to a later date, which will been communicated separately. In addition, the clerk office will currently not receive new complaints, injunction applications or applications for saisie-contrefaçons, which is a procedure for recording IP infringements. Similar measures have been adopted by the Paris Court of Appeal."
"Introduction of new proceedings is not limited in itself however, only summary proceedings with extreme urgency will be heard by courts and service of new complaints by bailiffs will in practice be affected by the confinement measures," Fabre said.
In addition to these contingency measures, the French parliament adopted a new law on 22 March, via a fast-track legislative procedure. The law introduces a so-called 'state of health emergency' and gives the French government the power to take a wide range of emergency measures by decree. This includes the power to take a number of measures aimed at addressing the administrative and judiciary consequences of the epidemic, such as:
The French government has now adopted a first set of decrees enacting exceptional measures using its powers under the new law. These decrees cover a wide range of emergency measures aimed at addressing the current situation, and include adjustments relating to time periods due to expire during the state of health emergency in France, and adjustments relating to rules before judiciary courts on non-criminal matters. The measures have implications for IP rights holders and users.
There are adjustments, save for some exceptions, relating to time periods expiring during the emergency period in France - this being the period between 12 March 2020 and one month after the end of the state of health emergency. The state of health emergency is currently set to end on 24 May 2020. Unless it is extended further, the emergency period is 12 March 2020 to 24 June 2020.
The adjustments include the following measures:
The INPI has confirmed that these extension rules apply to all time periods set by the French Intellectual Property Code and in particular deadlines for: filing oppositions and deadlines relating to opposition procedures, paying renewal fees, filing administrative or judiciary complaints, filing third party observations or responding to notifications from the INPI.
The extension rules do not apply, however, to deadlines resulting from international or European conventions such as deadlines for: priorities for international extensions, payment of fees for filing of patent applications, applying for supplementary protection certificates.
These rules supersede the decision from the director of the INPI of 16 March which had extended all deadlines to respond to notifications from the INPI to four months.
There are also adjustments relating to rules before judiciary courts in non-criminal matters, including the following measures:
Dr. Nils Rauer of Pinsent Masons said courts in Germany had been fully operational until recently, but that legislation has now been passed by the Bundestag that means the courts have now moved into emergency operation mode. This means that only urgent matters will be dealt with immediately. Written procedure without oral hearings will become the standard. Already on 18 March, the German constitutional court issued a statement to this effect. In Karlsruhe, oral hearings are postponed until April.
The German Patent and Trademark Office is allowing trade mark clerks to work remotely from home if possible in a bid to maintain operations.
A statement issued on 18 March the German Patent and Trademark Office confirmed that all deadlines already granted in pending proceedings will be automatically extended until 4 May 2020. The office will try to take the current situation into account within the framework of legal possibilities open to it when conducting the proceedings for the protection of intellectual property rights. This, it said, applies in particular to the approval of requests for the extension of time limits set by the office.
However, the German Patent and Trademark Office said that it cannot extend legally specified time limits.
20 Mar 2020
17 Mar 2020