Coronavirus – Intellectual property applications and proceedings


15th May 2020

Both the UK Intellectual Property Office (IPO) and the European Union Intellectual Property Office (EUIPO) have released updates on what action they are taking in response to the rapidly evolving coronavirus outbreak and how this could affect any new or ongoing applications for intellectual property rights.

UK IPO

Extensions to deadlines

The IPO has declared that 24 March 2020, and all subsequent days until further notice, are interrupted days. This means that any deadlines and applications for patents, supplementary protection certificates, trade marks and designs, which fall on an interrupted day will be extended until the IPO declares the end of the interrupted days period. The IPO reviewed the situation on 17 April 2020 and again on 07 May 2020 and opted to continue the period of interrupted days, to be reviewed again on 28 May 2020 at that time they will either continue the period of interruption or announce that the period will end after a further two weeks. The IPO have confirmed that they will provide a minimum of 2 weeks’ notice before ending the interrupted days’ period.

The interrupted days have been introduced as a safety net where the normal course of business is not possible and therefore the IPO is encouraging users to continue to work to existing deadlines where possible.

In addition to declaring a period of interrupted days, the IPO has stated that it will extend the period to respond to new trade mark examination reports to four months and where it has the discretion to do so, any new tribunal deadlines set by the IPO, such as periods for filing evidence or submissions will be double their usual period.

Paper communications

The IPO have also advised that customers should now use online services and digital communication wherever possible as the IPO is currently unable to process paper forms, faxes and paper correspondence. To assist with this the IPO has created a new email address to be used instead of faxing or posting documents and confirmed that it is able to accept electronic signatures on forms and other documents.

In light of the removal of paper communications, there may be a delay in some accepted trade marks being published for purposes of opposition because of the need to notify owners of any UK earlier marks (and international marks with UK designation) identified in search reports, which was previously only done by post. The IPO are exploring alternatives to this.

There will also be a delay in receiving postal versions of trade mark and design registration certificates. The IPO have advised that if you have an urgent business need it can provide email copies on request.

EUIPO

The Executive Director of the EUIPO has signed a decision extending all time limits expiring between 9 March 2020 and 17 May 2020, that affect all parties before the EUIPO, to 18 May 2020. However, on 15 May 2020 it was announced that there will be no further blanket extensions and parties that are unable to comply with their respective deadlines before 18 May 2020 will need to request extensions of time, giving proper reasons for the request.

If you would like any further information on this matter or have questions regarding applications for intellectual property rights in light of the Coronavirus outbreak please contact Blake Morgan’s Intellectual Property Team.

This article was originally published on 16 March and last updated on 15 May.