Updates from Intellectual Property Offices and national courts in response to COVID-19: UK, France & Germany

19 March 2020

Amid the spread of COVID-19 and social distancing, Intellectual Property Offices and national courts who hear IP matters have advised of the precautionary measures they are taking. Gowling WLG is actively monitoring and adapting to the situation. The key takeaways from the United Kingdom, Germany, France and European IP offices are:



United Kingdom

The United Kingdom local courts and the UK Intellectual Property Office (IPO). What you need to know:

  • HM Courts & Tribunals Service and the Ministry of Justice
    • Confirmed that the courts and tribunals in England and Wales currently remain open. There is an increasing use of telephone and video technology in order to hold remote hearings wherever possible.
  • The UK Intellectual Property Office
    • Stated that it "will take whatever measures we can to support rights applicants and their attorneys who have been affected".
    • The IPO has said that it will extend time periods where national and international legislation allows. Extension of time requests will be considered as favourably as possible although on a case-by-case basis. If a failure to meet a time period has resulted in a loss of rights, the IPO has stated that rights may be reinstated or restored in certain circumstances.

We will continue to keep you informed as further developments arise. If you have any questions on impacts on your IP portfolio, please contact us.

Germany

The German Trade Mark and Patent Office and the German local courts What you need to know:

  • German Patent and Trade Mark Office (DPMA)
    • Information centres and research rooms of the DPMA will remain closed until further notice.
    • Oral hearings are postponed until further notice
    • Deadlines:
      • All time limits granted by DPMA in ongoing proceedings are extended until 4 May.
      • For time limits specified by law (which cannot be extended at the discretion of the DPMA), the DPMA has assured to make use of the option of re-establishment of rights, meaning that any person that - due to the current situation - has not observed a time limit imposed by law without any fault on his part can subsequently have their procedures re-established upon request.
      • Arbitration Board extends all open pleading deadlines until 15 May 2020 in accordance with the Law on Employees' Inventions.
    • The DPMA recommends to file international design applications directly at the WIPO.
  • German courts
    • There is no national approach yet. Decisions are made on court by court / federal state level. We do know, however, that several hearings have already been postponed at the moment due to corona. We expect further delays / restrictions in the near future.

We will continue to keep you informed as further developments arise. If you have any questions on impacts on your IP portfolio, please contact us.

France

The French local courts and French Trade Mark and Patent Office. What you need to know:

French Courts:

  • All civil hearings have been postponed indefinitely (summary proceedings, summary dismissals and pre-trial proceedings).
  • The matters that were to be examined at these hearings have been/will be rescheduled. The parties will be informed of the new date as soon as the situation returns to normal.
  • Deliberations scheduled during this period have also been postponed to a date to be communicated later.
  • As things stand, the tribunal registry no longer issues dates for subpoenas, nor dates for summons in summary proceedings. No seizures will be authorised.
  • The functioning of the court is thus limited to the so-called essential functions and, in the case of civil activities, to cases of absolute emergency.

French bailiff services:

  • French bailiffs are still doing purchase reports online. However, other services - delivery of summons, seizure of counterfeit goods - are no longer provided.

European Trademarks Office:

  • All deadlines expiring between 9 March and 30 April 2020 inclusive are automatically extended to 1 May 2020. As 1 May is a French public holiday, the deadlines are extended until Monday, 4 May 2020.

French Trademarks and Patents Office (IPO):

By Order dated March 25th 2020, the Government decided that all time limits relating to any act, appeal, legal action, formality, registration, etc., which should have expired between March 12th 2020 and one month after the end of the state of health emergency, shall be extended.

The Government thus created a "grace period", during which all legally applicable time limits are suspended. This period runs from March 12th to the date of end of the state of health emergency, plus one month.

According to the Order, when procedures, whatever their form (deed, formality, registration, etc.), whose non-fulfilment may produce legal effects such as a sanction, limitation period or forfeiture of a right, could not have been carried out during the period of state of emergency plus one month, they may be carried out at the end of that period within, at the latest, two months.

For instance, if the end of the state of emergency is declared on May 24th, all time limits that were due to expire between March 12th and June 24th will expire by August 24th at the latest.

Following the adoption of the Order, the INPI indicated that the time limits applicable to the following procedures and formalities are postponed:

  • trademark oppositions;
  • payment of patent annuities;
  • the renewal of a trademark or design right and the applicable grace period;
  • the lodging of administrative or judicial appeals;
  • the submission of observations or a response to a notification from the INPI.

Thus, in practice:

  • The owner of a prior right seeking to oppose the registration of a French trademark for which the initial opposition period expires on April 20th, will have until August 24th to file an opposition;
  • The owner of a trademark that expires on April 20th will have until July 24th to renew his trademark.

The extensions of time limits do not, however, concern the priority periods for an international extension, the payment periods for filing a patent application, or the time limits for filing a supplementary protection certificate.

Nevertheless, the INPI invites right holders, if they are able to do so, to comply with the deadlines initially applicable without waiting for the end of the health emergency period in order to avoid clogging up its services, which continue to operate normally due to the use of dematerialized procedures.

Europe

The European Patent Office and European Union Intellectual Property Office have also advised of the precautionary measures they are taking. What you need to know:

  • European Patent Office (EPO)
    • Oral proceedings before examining and opposition divisions are postponed until June 2nd 2020, unless videoconferencing has been already confirmed.
    • Other activities by search, examining and opposition divisions will continue.
    • Deadline extension until 17 April for all time limits, including renewal fees, expiring after 15 March .
    • Extend the time limits for patent filing and registration procedures until April 17th 2020; these time limits may subsequently be extended by the EPO in a further statement.
  • European Union Intellectual Property Office (EUIPO)
    • As and from Monday 16 March, all EUIPO staff will work from home.
    • Trade mark and design applications will continue to be received, examined and published, and the Office will continue to send communications and set deadlines. Bulletins will continue to be published as usual.
    • A decision of the Executive Director has been published extending all time limits expiring between 9 March and 30 April 2020 to 1 May 2020. In practice, this means that time limits are extended until Monday, 4 May, given that Friday, 1 May, is a public holiday. The recent published second decision extends all time limits expiring between 1 May and 17 May 2020 until 18 May.

If we can no longer file subpoena and carry out seizures, we can still monitor infringement on the Internet, do Internet reports and send letters of formal notice. In view of the judicial paralysis that is gradually taking hold in various jurisdictions around the world, we recommend maintaining close monitoring of infringement on the Internet where, given the confinement measures and apparent impunity, the number of infringement is likely to increase.

In this respect, please note that in France, because of the coronavirus, the time period limitation will be suspended.

Consequently, we strongly recommend the client to keep monitoring Internet, carry out regular bailiff's reports and send cease and desist to counterfeiters and inform them of the suspension of the time period limit during the outbreak in order to keep up pressure and prevent the increase of online infringement.

We will continue to keep you informed as further developments arise. If you have any questions on impacts on your IP portfolio, please contact us.

All Gowling WLG clients can expect to receive the same high level of service throughout this challenging time. Our team remains fully available to address your needs, including those related to COVID-19. For other COVID-19 related resources, please visit our resource hub with information to help clients manage their business during the pandemic. The hub contains critical information to guide you through various complex legal issues, as well as a list of key contacts who can provide advice on these issues.


NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.