With many businesses having to adapt to new challenges in the recent weeks, due to the COVID-19 pandemic, we have seen the Intellectual Property Offices put in place temporary measures to help accommodate rights holders during this uncertain time, to safeguard their IP.
The UK Intellectual Property Office (UKIPO) has confirmed from 24 March 2020 until further notice, all days will be declared ‘interrupted days.’
‘Interrupted days’ are applicable to trade marks, designs, patents and supplementary protection certificates.
Deadlines which fall on an interrupted day, will be extended until the UKIPO has confirmed when the interrupted period has ended. Notably, this measure only applies to time periods that have been set by the relevant UK Acts and Rules, as well as non-statutory deadlines, that are set by the UKIPO examiners. Deadlines that are excluded from the interrupted days, are those set by international IP treaties e.g. the Patent Cooperation Treaty, European Patent Convention, or the Madrid system.
The UKIPO maintained that the interrupted period should continue on 17 April 2020, and decided that all days that follow will be ‘interrupted days’. The situation will be reviewed again on 7 May 2020, at which point the current measure will be extended, or come to an end. When the UKIPO does notify rights holders and IP professionals, that the interrupted period has concluded, they will be given a minimum of two weeks’ notice, from the date of that communication.
With the UKIPO office closed, its staff are working remotely, functioning on a business as usual basis, as much as possible. However, there has been a change in some of the day-to day practices, for example:
- Any procedures that are not already available online can now be handled over email, in place of faxing, or sending documents by post. The UKIPO has set up a new email address to facilitate this: email@example.com.
- There will be a delay in the issuance of UK Registration Certificates, which are usually issued by post.
- No physical hearings will take place until at least 1 June 2020, however, it is possible to arrange them by telephone or a video conference during this time.
In some cases, these interim measures are resulting in anomalies, which could potentially prejudice rights holders. For instance, we have received reports that some applications are being held up until further notice, because the IPO has no way of checking whether or not an opposition has been received by fax or post (the UKIPO office being currently closed, and the advice to use electronic communications wherever possible being non-compulsory). They could also pose problems for applications against which a Notice of Threatened Opposition is filed. This is normally used to extend the deadline for opposition by one month. However, if all days after 17 April 2020 are treated as ‘interrupted days’, it technically means that the clock is stopped until after the interrupted period comes to an end, thus stalling the application.
We are liaising with the UKIPO to seek clarification on these points.
The EU Intellectual Property Office (EUIPO), based in Alicante, Spain, has extended all deadlines falling between 9 March 2020 to 30 April 2020, to 1 May 2020. The extension will impact all procedural deadlines during this period, that are imposed by the EUIPO, statute, and International Treaties. Unlike the UK, this includes the deadline to oppose third party applications and file new applications within the priority period. More guidance on this from an EU level can be seen here.
Whilst extensions are being provided to aid rights holders during this time, where operating a normal course of business may not be possible, we encourage clients to work towards the original deadlines set by the Offices, where possible. This will allow your trade marks and opposition matters to progress to the next stage quicker.
Once these measures are lifted, the IPOs will no doubt experience an influx of deadlines to deal with, which is likely to result in delays.
The IP team are in contact with the UKIPO and EUIPO on a daily basis, and are closely monitoring for any new developments issued in accordance with government guidance.