France

Judicial proceedings

The emergency law of March 23, 2020 to deal with the COVID-19 epidemic empowered the government to adapt the applicable rules on time limits and procedures applicable before judicial and administrative authorities.

Ordinance of March 23, 2020 adapting the rules applicable to judicial courts ruling in non-criminal matters applies for the period between March 12, 2020 and the expiry of a period of one month from the end of the state of health emergency, i.e. until June 24, 2020¹.

Please note:

• At first instance, the President of the Court of Appeal may designate by order the jurisdiction of another court if the court seized is totally or partially unable to function.
• When a hearing is cancelled, the registry notifies the parties or their lawyer by any means, in particular by electronic means or by simple letter. If the defendant does not appear, the judgment shall be given by default.
• At first instance and for an appeal, where a hearing of oral argument or the closure of the pre-trial takes place during the abovementioned period, the President of the court may decide that the decision shall be given by a single judge.
• Before the Commercial Court, whatever the case, it will fall under the responsibility of the judge in charge of the pre-trial investigation who will report to the judgement formation (which is already the case).
• The parties may exchange their writings and documents by any means, as long as the judge can ensure that the adversarial process is respected.
• By a decision that is not subject to appeal, the judge or the president of the judgment formation may decide that the hearing shall be held by an audio-visual means of telecommunication, in the event of technical or material impossibility, it being possible to do so by any other means of electronic communication (e.g. telephone).
• Where representation by a lawyer is mandatory, the judge or the president of the judgment formation may decide to proceed without a hearing, which shall therefore be in writing only. It is possible to lodge an opposition against this procedural decision within fifteen days (it is not specified from when...) except for emergency proceedings (summary proceedings or accelerated proceedings on the merits and proceedings where the judge must rule within a specified time limit).

Ordinance of March 25, 2020 on the extension of time limits during the period of public health emergency and the adaptation of procedures shall apply to time limits and measures that have expired or expire between March 12 and the month following the end of the period of public health emergency (i.e. until June 24, 2020).

The time limits which were due to expire during this period are suspended for "any act, appeal, legal action, formality, registration, declaration, notification or publication prescribed by law or regulation shall be suspended, on pain of nullity, sanction, lapse, foreclosure, prescription, unenforceability, inadmissibility, lapse, automatic withdrawal, application of a special scheme, nullity or forfeiture of any right".

One month after the end of the state of health emergency, i.e. theoretically from June 24, the period will start running again and the act will have to be done. However, in any case, the postponement is limited to two months after the end of the special period, i.e. until July 24. The same applies to payments for the retention or acquisition of a right.

With regard to time limits imposed by the administration:

• If they have not expired before March 12, 2020, they are suspended until June 24, 2020.
• If they have to start during this period, then the starting point is postponed until June 24, 2020.

Administrative proceedings before IP Offices

France: National Institute of Industrial Property (INPI)

By decision of March 16, 2020², the Director of the INPI announced the extension of the time limits for patent, trademark and design proceedings to four months, with the exception of the time limits for trademark opposition proceedings.

The time limits which had already been set, and which had not yet expired as of March 16, 2020,have also been extended to four months.

This includes all time limits not prescribed by the French Intellectual Property Code (IPC), but set or decided by the INPI, i.e. essentially the time limits for replying to an objection of form or substance issued by the INPI and concerning:

• Trademark applications (pursuant to Article R. 712-11 IPC),
• Registration formalities (Article R.714-7 IPC),
• Renunciation (Article R. 714-1 IPC),
• Renewal (in combination with Articles R. 712-24 and R. 712-11 IPC).

On the other hand, the change in time limits does not apply to the following:

• The period of three months for the transmission of priority documents, prescribed by the code (see Article R. 712-4 IPC),
• Time limits for renewal, third party observations, and opposition,
• All time limits for the opposition procedure, including those governing exchanges between the parties (excluded by the decision and in any event prescribed by the code for the new procedure – see Article R. 712-16-1 IPC),
• The SVR (i.e. “silence equals reject”) deadlines imposed on the INPI to make a decision, all of which are prescribed by the French Intellectual Property Code.

In an official communication dated March 26, 2020², the INPI specified that the provisions of Ordinance of March 25, 2020 relating to deadlines between March 12, and the month following the end of the period of a state of health emergency (i.e. until June 24,2020), are postponed to one month after the end of this period if the initial deadline was one month (i.e. until June 24, 2020) and to two months after the end of this period if the initial deadline was two months or more (i.e. until July 24).

These provisions apply to all periods provided for in the French Intellectual Property code, except those resulting from international agreements or European legal provisions.

In concrete terms, this postponement concerns the deadlines:

• to file an opposition to a trademark
• to pay for a patent annuity
• to renew a trade mark or extend a design and to benefit from the corresponding grace period
• to lodge an administrative or judicial appeal
• to make comments from third parties or to respond to a notification from the INPI

However, it does not concern the priority periods for an international extension, the payment periods for filing a patent application or the periods for filing a supplementary protection certificate, which are subject to supranational provisions.

Worldwide

World Intellectual Property Organization (WIPO)

The WIPO informed all its employees are working remotely (see press releases of the March 16 and 17, 2020).

Thus, it continues to process all applications filed through its global services, as well as applications filed under the PCT, the Madrid system for trademark registrations, and the Hague system for design registrations.

The March 20, the WIPO published an information notice No. 7/2020 about remedies and extension of time limits available for Madrid System users and reminds that the Madrid system provides for the automatic extension of time limits where an office is not open to the public.

Extension in case of closure of a national Office:

A time limit which expires on a day on which an Office is closed will expire on the day following the date on which the Office is open. The International Bureau will extend such time limits accordingly.

Europe

European Union Intellectual Property Office (EUIPO)

The Director of EUIPO, in its decision of March 16, 2020, decided that all time limits between March 9th and April 30th relating to European trademarks and designs will be postponed to May 1, which becomes May 4, since the first is a public holiday.

This concerns all procedures, whether the dates are fixed by the Office or by the regulations, including renewal time limits, priority time limits, or time limits for appealing to the Board of Appeal in opposition or objection proceedings.

Warning: This extension does not apply to proceedings before other authorities, namely appeals to the Court of First Instance against decisions of the Boards of Appeal (click here for more information).

Furthermore, trademark and design applications will continue to be received, examined and published. EUIPO will continue to issue opinions, set time limits and publish bulletins.

European Patent Office (EPO)

The EPO has extended all time limits expiring on March 15 or later to April 17, 2020. This also applies to international applications filed under the PCT.

These time limits may be further extended if the disruption continues beyond April 17.

With regard to oral proceedings, the EPO has decided to postpone until further notice all those scheduled until March 27, 2020, unless the parties received a date for a hearing in the form of a video conference. This includes includes examination and opposition proceedings as well as appeals.

All official EPO information is available here.

United-Kingdom (UKIPO)

The UKIPO announced the extension of time limits for those affected by the virus, on a case-by-case basis, and the ability to reinstate IP rights, if they are lost due to the outbreak. 

Italy (UIBM)

The UIBM has announced an extension of administrative procedures and an extension of the validity of expiring documents. From last week, any certificates and IP titles that expire between January 31 and April 15, 2020 will remain valid until June 15, 2020. (This does not apply to international trademark applications.)  

Spain (OEPM)

The OEPM has announced that all deadlines for pending proceedings are suspended, and will be resumed when the state of emergency or its extensions finish. 

Norway (NIPO)

The NIPO will grant deadline extensions for "at least two months" for designs and trademarks. Users, who fail to meet a specific deadline or lose registered rights during this period, can now request re-establishment of those rights.

Romania

The Office is closed until March 23, 2020, or until further notice. All deadlines are postponed until after March 23, with a possible further extension.

Armenia

The Office announced that the receipt of all official documents (e.g. registration certificates and original extracts) will be postponed at least until April 14, 2020. 

Greece

All deadlines set by the Examiners for reply and deadlines for opposition, revocation or invalidity petitions are suspended until May 11, 2020. However, trademark e-filings and renewals may be effected without disruption, and deadlines regarding patents are not affected.

Russia

The Patent Office of Russia will be closed from March 28 until April 5, 2020. All due dates during closure will be postponed to April 6, 2020.

Azerbaijan

The Patent Office of Azerbaijan will be closed until April 29, 2020. This means that currently no official notifications, certificates or decisions will be issued. Further, it will be possible to file documents and obtain any information only starting from April 30, 2020. All due dates during the closure will be postponed to April 30, 2020.

America

United States (USPTO)

To date, no postponement is planned. The USPTO is waiving petition fees in certain situations for customers impacted by the Coronavirus, although added that the notice "does not grant waivers or extensions of dates (…) set by statute".

It has also waived the requirements for an original handwritten signature for certain correspondence with the Office of Enrolment and Discipline (OED) and certain payments by credit card.

Canadian (CIPO)

The CIPO announced that all time limits will be extended until March 31, 2020.

Peru (Indecopi)

The Indecopi has announced that all time limits that were being processed are now suspended.

Ecuador (SENADI)

The SENADI has announced the suspension of deadlines that fall between March 16 and March 22.

Dominican Republic (ONAPI) 

The ONAPI has announced the extension of all the legal terms granted to individuals until March 31, 2020.

Mexico (MPTO)

The MPTO has issued a resolution by which all terms are suspended from March 24, 2020 to April 19, 2020. However, some documents are still received with a provisional stamp. Nevertheless, the reception date for such documents will be April 20, 2020.

Middle East

Egyptian

The Patent Office was closed from March 19, 2020 to March 22, 2020 and has now reopened.

The Trademark Office in Egypt continues operations without any interruptions and is accepting visitations three times a week.

Jordan

The Trademark Office suspended all operations until April 1, 2020. Any deadlines falling between March 18, 2020 and March 31, 2020 are automatically extended to April 1, 2020.

Kuwait

The Trademark and Patent Offices will be closed until April 12, 2020.

Lebanon

The Trademark Office suspended operations until March 29, 2020.

Iraq

The IP Office is suspending its operations until March 29, 2020.

Sudan

The IP Office accepts new filings only, and all other services are suspended as from March 18, 2020 until March 31, 2020.

Morocco

The Patent and Trademark Office in Morocco is operating regularly but has requested applicants to submit all applications online. Submitting recordals is not possible until further notice.
All deadlines falling within the shutdown period will be automatically extended to first working days.

Turkey

Time limits before the Turkish PTO, expiring between March 13, 2020 and April 30, 2020, have been suspended by May 1, 2020 (in practice May 4, since May 1 is a public holiday, followed by a weekend). This suspension includes all procedural deadlines from payment of any official fees for obtaining or maintaining any IP rights to filing responses to office actions and from submission of oppositions and appeals to submission of evidences to prove use of opponent’s marks and claiming priority.

Asia

Hong Kong (HKIPO)

The Hong Kong registry has extended all patent, design and trademark deadlines for any filing date that fell between January 29 and 21 February 21, 2020. With service resuming at the registry, deadlines that fall after these dates are currently unaffected.

China (CNIPA)

The CNIPA explained that any time limits for trademark-related matters can be suspended from when a user “was hospitalised or isolated after being infected with the novel coronavirus” or from that date that any business has suspended operations “due to the prevention and control measures”. In those cases, the deadline will be extended “until the date when the infected user is discharged from hospital, or when the isolation ends, or when the business resumes work”.

Further, trademark registrants that do not renew their trademark within the extension period due to the epidemic can apply for an additional two-month extension.

India

The Indian Trademark Registry has announced that it has suspended all hearings related to trademark matters between March 17 and April 15, 2020. These hearings will be rescheduled "in due course", while any hearings scheduled after April 15 are still planned to go ahead.

The Indian Patent Office announced that all the hearings through videoconferences scheduled between March 23, 2020 and March 31, 2020 stands cancelled. Further dates of rescheduled hearings will be communicated shortly.

Head of Offices of Patent Office at Delhi, Mumbai, Kolkata and Chennai and Design Wing at Kolkata:

• All in person hearings in Patents and Designs matters scheduled on or before April 15, 2020 by the Controller should be changed to Video Conferencing (VC) hearings.
• Wherever the applicant is unable to agree for the VC hearing, the Controller shall adjourn such hearing for a date later than April 15, 2020.
• The hearings scheduled after April 15, 2020 will remain as it is.
• Any delay in transmitting or resubmitting documents relating to various proceedings under the Patents Act and corresponding rules made thereunder to the Patent Office will be condoned/timeline be extended by the Controller on a petition for such condonation of delay / extension of time made not later than one month from the date when such COVID-19 outbreak ceased to exist.

Philippines (IPOPHL)

The IPOPHL has issued a press release that extends deadlines and confirms affected services until at least April 14, 2020. 

While new applications can be filed during this time period, any responses to official actions and other activities (such as appeals and motions for extensions) should be filed on April 15. Any applications filed during the quarantine period will be "considered as having been filed on their due dates".

Furthermore, all payments, due during the quarantine period, should be paid on April 15.

Malaysia

The Malaysian Office announced that all priority deadlines for manual filings are extended until April 1, while all appeals, oppositions and payment deadlines are extended until April 30, 2020.

Oceania

Australia

The Australian Office has announced that all office deadlines in proceedings before the registry are extended by two months. However, all deadlines "directly resulting from the law" (e.g. deadlines for submitting appeals or for paying annual and protection fees) cannot be extended. 

New Zealand (IPONZ)

The IPONZ has announced that all services are currently operating as usual, and users can request an extension of time should they be affected by the virus.

 

N.B.: Numerous foreign IP offices have suspended their operations, or have closed their offices and implemented remote working, without defining any time limit extension, e.g. German Office, Ireland Office, Portuguese Office, Finland Office, African Regional Office, Eastern Europe Offices, some Eurasian offices and some South American offices.

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1. Indicative date, the Article 4 of the emergency law provides that the state of health emergency is two months from the entry into force of the said law, i.e. May 24, 2020, subject to possible extension.

2. In French