- At national level
Initially, the General Director of the French IP office (hereinafter, INPI) had, by decision1 of 19 March 2020, extended by four months all the deadlines unexpired on 16 March 2020 and set by INPI.2
However, following the publication of the Ordinance No 2020-306 of 25 March 2020 (hereinafter, the “Ordinance”) adopted by the Government on the extension of procedural time limits,3 in order to ensure consistency, the INPI’s decision has been lifted. Therefore, all time limits shall be subject to the same legal provision on extension of time limits.
The Ordinance provides that all deadlines expiring within the period of 12 March 2020 until one month after the end of the health emergency state shall be extended (Article 1): the time limits for any act, appeal, legal action, formality, registration, declaration, notification or publication stipulated by law or regulation, which should have expired within this period, are thus suspended. The deadlines will start running again, one month after the end the health emergency state.
However, an additional period shall be granted from the end of the one-month period after the end of the public health emergency state. This additional period shall be of up to a maximum of two additional months from the period initially stipulated by the law or regulation. In practical terms, this means deadlines shall be extended by a maximum of 3 months from the end of the health emergency state.
Furthermore, new provisions on trademarks and patents entered into force on 1st April 2020. It is from now on possible to introduce before the INPI: trademark invalidity and revocation actions and patent opposition procedure.
- At regional/ European level
(a) EUIPO
By Decision No EX-20-3 of 16 March 2020, the EUIPO has taken measures to extend the time limits in all proceedings.
Thus, all deadlines initially expiring within 9 March and 30 April 2020 (included) are postponed to 1st May 2020. However, as 1st May is a public holiday, the deadlines shall reasonably be extended until 4 May 2020.
(b) EPO
The EPO has also taken measures to extend the procedural time limits; however, the official version has not been published so far in the Official Journal. The EPO proceeds by means of press releases on its website https://www.epo.org.
It provides that deadlines expiring on or after 15 March 2020 (no later than 16 April 2020) are extended, for all parties and their representatives, to 17 April 2020.
Moreover, the EPO has recalled that Rule 134(5) of the European Patent Convention (EPC) offers a safeguard in the case of non-observance of a time limit as a result of a dislocation in the delivery or transmission of mail caused by an exceptional occurrence affecting the locality where an applicant, a party or their representative resides or has his place of business.4
In addition, the EPO has decided to postpone until further notice all oral proceedings in examination and opposition proceedings scheduled until 17 April 2020 unless they have already been confirmed to take place by means of videoconferencing.
Furthermore, oral proceedings shall not be held before the Boards of Appeal until 17 April 2020.
The EPO states that the above period might be further extended by the publication of another notice if the disruption extends beyond the aforementioned date.
(c) The European Union – Supplementary protection certificate (SPC)
The SPC fulfils the provision of the European regulation No 469/2009 and No 2019/933. Up until now, time limits for filing a request for SPC has not been extended. Then time limits of Article 7 of regulation No 469/2009 shall apply.
- At the international level – World intellectual property organization (WIPO)
Regarding PCT patent application, the WIPO has not taken any measures to extend the time limits of the international phase of application. Therefore, Rule 82 quater(1) of the PCT regulation provides for an excuse in case of delays in meeting time limits.
Indeed, this rule states that: “Any interested party may offer evidence that a time limit fixed in the Regulations for performing an action before the receiving Office, the International Searching Authority, the Authority specified for supplementary search, the International Preliminary Examining Authority or the International Bureau was not met due to war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communications services or other like reason in the locality where the interested party resides, has his place of business or is staying, and that the relevant action was taken as soon as reasonably possible.”. However, this provision does not apply to the priority time limit.
Similarly, the WIPO has not taken any measures to extend the time limits related to international registrations of trademark or industrial designs.
In two Notices, regarding the Madrid Protocol5, on the one hand, and the Hague Agreement6, on the other hand, WIPO has recalled:
- In case of impracticable access to mail and delivery services, as well as to electronic communication, failure to meet a time limit for a communication addressed to the International Bureau and mailed through a postal service may be excused if that communication is sent within five days after regaining access to mail or delivery services or to electronic communication (Rule 5 regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, hereinafter “Madrid regulations” and Rule 5 of common regulations under the 1999 Act and the 1960 Act of the Hague Agreement, hereinafter “The Hague regulations”).
- Moreover, where applicable, the applicant may request that the International Bureau of WIPO to continue processing the international application, subsequent designation, payment or request concerned (notably Rules 11.2), 11.3), 20bis.2), 24.5)b), 26.2), 34.3)c)iii) et 39.1) of Madrid regulations). The request to continue processing does not require giving any reason or providing any evidence.
- Finally, if an IP office were to close, pursuant to the provisions of both regulations: a period that expires on a day on which the office is not open to the public would be postponed to the first day of its reopening (Rule 4.4 of Madrid regulation and Rule 4.4. of The Hague regulation).
In a nutshell:
- Proceedings before the INPI:
- Protection period: from 12 March 2020 until one month after the end of the health emergency state
- Extension of time limits: maximum of 2 additional months from the period initially stipulated by the law or regulation
- Proceedings before the EUIPO:
- Protection period: from 9 March to 30 April 2020
- Extension of time limits: until 1st May 2020 (in fact 4 May 2020)
- Proceedings before the EPO:
- Protection period: From 15 March to 16 April 2020
- Extension of time limits: until 17 April 2020
- Proceedings before the WIPO: no specific measures to date
- Time limits for priority of international extension and SPC filing are maintained
- INPI Decision No 2020-32
- Namely, the deadlines set by the INPI according to articles R. 514-1, R. 618-4 and R. 718-1 of the French intellectual property Code and not by a law or regulation.
- Ordinance No 2020-306 of 25 March 2020
- According to EPO webside, as of 15 March 2020 the list of high-risk areas was updated to the following: China, South Korea, Iran, Italy, the German Landkreis Heinsberg in North Rhine-Westphalia, the French region Grand Est, the Austrian federal state of Tyrol, and Madrid.
- Notice 7/2020
- Notice 5/2020
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Client Alert 2020-173
