Information on acts before EUIPO, EPO and WIPO in the context of the COVID-19 pandemic

Following the information published by Abreu Advogados about the suspension of the current deadlines for acts before the Portuguese Institute of Industrial Property (INPI) and the Intellectual Property Court (TPI), and in view of the clarifications provided by EUIPO (European Union Intellectual Property Office), EPO (European Patent Office) and WIPO (World Intellectual Property Organization), Abreu wishes to complete the information provided before in relation to industrial property rights with different territorial implementations, such as European Union trademarks, Community Designs and Trademarks, Designs and Patents protected in other countries/territories.

We would, therefore, like to draw your attention to the following:

At EUIPO:

• Face-to-face service has been suspended.
• EUIPO is receiving, examining and publishing applications for trademark and design registration.
• The bulletins are published as usual.
• The deadlines of acts in pending proceedings relating to European Union trademarks and Community designs that expired or expiring between 9 March and 30 April were extended to 4 May.
• If the parties are in a position to meet the deadlines, and choose to do so, the procedure will follow its normal course and any documents submitted will be examined regularly.
• The extension covers, among other things, the time limits for payment of the application fee, the filing of an opposition in the registration procedure, the request for renewal, the filing of an appeal and the statement of grounds for the appeal, as well as the payment of this fee.
• Time limits for proceedings before other bodies, even if they are mentioned in the Regulation, such as the time limit for filing an appeal against decisions of the Boards of Appeal before the General Court, are not covered by the extension.

At EPO:

• Face-to-face service has been suspended.
• All communications and acts must be carried out, in preference, electronically.
• The deadlines for acts, including the payment of fees, expiring on 15 March or later, were extended to 4 May. Such extension also applies to patent applications filed under the PCT (Patent Cooperation Treaty).
• All oral proceedings to be performed in examination and oppositions scheduled until 30 April 2020 have been postponed, except for those already confirmed to take place by videoconference.

At WIPO:

• Face-to-face service has been suspended.
• WIPO advises that all acts or communications under the PCT, Madrid and the Hague systems should be carried out electronically only.
• To date, there are no indications for the suspension of time limits for the performance of acts in pending proceedings.
• In the event of failure to meet the deadlines provided under the PCT and the Madrid system, the Examination Secretariat will treat favourably all requests for “tolerance” in the delay in compliance due to disruptions caused by COVID-19, where there is no need to provide evidence that it is impossible to perform the act.
• Where, in proceedings for designs or models via the Hague system, communication before the Secretariat is not possible, it may be resumed within five days of regaining access to email, electronic or postal communications. This time limit shall apply only if the user or person concerned proves that it was not possible to make the communication within a maximum of six months from the date on which the time limit expired.
• The time limits under the Madrid and the Hague systems shall be automatically extended in cases where the institute of the designated country is closed on the last day of the deadline. The time limit shall be extended until the first working day after the respective institute opens.
• Notifications concerning pending trademark proceedings under the Madrid system shall be sent by the Examination Secretariat only after the e-mail address of the applicants, holders or their representatives is provided.

The Abreu Advogados Intellectual Property team is working full-time from home and has all resources available to assist you and carry out acts with the EUIPO, EPO and WIPO.