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Following the characterisation of COVID-19 as a pandemic by WHO, the EUIPO confirmed on 30 Apr...
The European Patent Office has in place measures to safeguard applicants’ rights. An initial up...
The International Bureau of WIPO has issued an update directing users to Rule 82quater of the P...
Sky vs SkyKick – The Court of Justice provides guidance on bad faith and the requirement for cl...
The UKIPO has closed access to its buildings until further notice and its staff are working fro...
Following the announcement just weeks ago that the UK would no longer be seeking to take part i...
COVID - 19
W P Thompson will keep you up to date with the COVID-19 situation from this website page.
The team are now primarily working from home to support the efforts in the UK to help stop the spread of the virus. Our planning means that we can continue to work as usual.
The position for the patent and intellectual property offices we work with are set out below.
UK Intellectual Property Office (UKIPO)
As noted in our recent news item, the UKIPO has closed access to its buildings until further notice and its staff are working from home. Users are requested to continue filing as normal and use online filing and digital services as much as possible. Paper documents cannot be processed, including faxed documents and the fax filing service is not available, and filing by hand is no longer possible.
24 March 2020, and subsequent days until further notice, have been designated “interrupted days”.
European Patent Office (EPO)
The European Patent Office has in place measures to safeguard applicants’ rights. An initial update issued by the European Patent Office indicated that most time limits expiring on or after 15 March 2020 should be exceptionally extended until 17 April 2020. In view of the continuing disruption, a second further update has since been issued indicating that these deadlines are now extended to 2 June 2020. The extensions and remedies apply to parties and representatives in proceedings under the EPC and the PCT.
The European Patent Office continues to monitor the situation, and further extensions are possible if disruption of service continues beyond 2 June 2020. As ever, we will continue to provide updates when we receive further information.
Whilst these measures are welcomed, we are advising clients to observe patent office time limits, if at all possible, in order to manage patent office workflows following lifting of the restrictions. All actions falling due during the exceptional extension period will become due on the final day of the exceptional extension period, so the EPO systems could potentially be overwhelmed if applicants wait until the day when the measures are removed to submit a response.
EU Intellectual Property Office (EUIPO)
Following the characterisation of COVID-19 as a pandemic by WHO, the EUIPO confirmed on 30 April 2020 extension to deadlines in that all time limits expiring between 9 March 2020 and 1 May 2020, affecting any party before the Office, are extended to 18 May 2020.
As with the EPO, we urge applicants to try to meet deadlines, where possible, to manage EUIPO workflows following lifting of the restrictions.
World Intellectual Property Organization (WIPO)
In a recent update, the International Bureau of WIPO has informed users that the normal rules for remedying International Phase deadlines missed due to reasons of force majeure have been relaxed.
Previously, the indication was that specific evidence of the reason, such as an official announcement, or evidence from a certified physician would be required when attempting to remedy missed deadlines. However, the International Bureau has now indicated that any such requests citing Covid-19 related issues will be treated favourably, and no specific evidence will be required that the virus has affected the locality of the relevant party.
Additionally, the International Bureau has put in place other administrative measures to cover situations in which a request under Rule 82quater would not apply. Full details of these measures can be found in the accompanying news item of 22 April 2020.
As for EPO and EUIPO deadlines, we recommend that applicants work towards the original deadlines wherever possible.
'Brexit' - Business Update
The referendum held in the UK in 23 June 2016 on the question of whether the UK should remain in the EU came down in favour of Britain exiting the EU. After a number of false starts the UK exited from the EU at 11pm 31 January 2020. The UK government and the EU have continued negotiations to arrive at an agreement defining their future relationship. The Withdrawal Agreement contains provisions for a transitional period before various changes, including those affecting EU trade marks and EU design, come into effect. These provisions include EU Trade Marks and Community Registered Designs registered before the end of the transition period being granted automatically a similar UK right, for the same mark and covering the same goods and services. The similar UK trade mark will have the same filing date and, if relevant UK derived seniority, as the EU Trade Mark on which it is based.
Thus, registered EU trade marks and Community designs will continue to be protected in the UK from and on 1 January 2021 by way of a new equivalent UK right requiring minimal administrative burden and no government fee.
Those with applications for an EU trade mark, or a registered Community design, pending on 31 December 2020 will have nine-months from that date to refile for an equivalent UK right by way of the standard UK procedure and with the filing/priority dates of the EU application retained.
Provision is also made for the rights arising from Unregistered Community Designs, whereby the UK will provide for national rights mirroring the characteristics of the EU right.
The UK's exit from the EU will have no effect on European patent applications which can still be validated and enforced in any of the countries that are contracting countries to the European Patent Convention (EPC). The European Patent Office is not a European Union organisation and a European Patent covers many non EU countries
WP Thompson will strive to ensure that, for its clients, Brexit, whether through agreement or ‘no-deal’ will have as minimal an effect as possible. To this end we are working with a consultant resident in and a national of the EU qualified to act as a representative before the EU IPO and so we are able to continue to offer a seamless service to our clients in respect ot EU Trade Marks and Registered Designs. There will not be an increase in our fees as a result of this arrangement. For general aspects please see here for our Q&A section on this topic.
Further details on all of the above will be publicised as they become available, but if you have any specific queries or concerns please contact your usual WP Thompson advisor, or email us on email@example.com, firstname.lastname@example.org or email@example.com.