The effects of the COVID-19 pandemic have been felt worldwide and across all business sectors. The pandemic is also leaving an impact on the protection of existing intellectual property rights (‘IPRs’) and on IPRs in the process of acquiring protection.
Whilst in normal circumstances IPR rightholders are granted protection over their intellectual property (‘IP’) against third-party use, the pandemic has created an unprecedented situation whereby IPR holders may be forced, even temporarily, to allow third-parties to use their IPRs, example patents or designs, for the public interest.
Suspension of IP rights?
Medical devices and medicinal products are generally protected via patents giving companies the legal right to inhibit third-party use. Patent protection allows creators to secure a quasi-monopoly, at least for several years, over their own unique inventions, after having invested time and money into the creation of the IP.
On the other hand, the COVID-19 crisis created the need to produce essential equipment and medical supplies regardless of any possible backstop. Indeed, there is a growing need to be able to manufacture essential medical devices such as masks, ventilators and other personal protective equipment.
Several governments across the globe may need to resort to making use of legislation or implement new measures to ensure that they have an adequate supply of medical supplies necessary to combat COVID-19. In Malta, the possibility of suspending IPRs is present in the Patents and Designs Act, Chapter 417 of the Laws of Malta. Article 40 of the Act stipulates that ‘where the national security or public safety so requires’, the Minister for Economy, Investment and Small Business may authorise the use, manufacturing and sale of an invention without the patent owner’s authorisation or patent application. This action must be justified by equitable remuneration to the proprietor of the patent or of the application for the patent.
Similar powers exist across patent laws of various states. For example, in the UK, the ‘Crown Use’ rules allow the government to suspend protections it would generally grant to a patent holder. Despite being used on rare occasions, the current global crisis may bring on an impending and pressing need to implement such rules.
Procedural Considerations – Applications at a Standstill?
On the other hand, the COVID-19 outbreak has also affected the operations of several IP offices.
The Malta IPRD
The Industrial Property Registrations Directorate (‘IPRD’) in Malta (i.e. Malta’s IP Office) has informed the public that although it is still operating normally, its operations will now all take place via electronic means.
One should also consider that in light of Legal Notice 61 of 2020 (The Epidemics and Infectious Disease [Suspension of Legal and Judicial Times] Order) and Legal Notice 65 of 2020 (Closure of the Courts of Justice Order), certain court procedures pertaining to IPR infringement or appeals from decisions of the IPRD may be delayed seeing as the Public Health Authorities have effectively ordered the general closure of the Courts.
The European Union Intellectual Property Office (‘EUIPO’) issued a statement on the 16th of March 2020 by which all time limits set to expire between the 9th of March and the 30th of April 2020, ‘that affect all parties before the Office’, will now expire on the 1st of May 2020.
Such decision was based on Regulation (EU) 2017/1001 on the European trademark (EUTMR) which provides that, ‘if an exceptional occurrence such a natural disaster or strike, interrupts or interferes with proper communication from the parties to the Office or vice-versa’, the Executive Director of the EUIPO may extend all time limits that would otherwise expire on or after the date of commencement of such occurrence.
The European Patent Office (‘EPO’), which assesses European patent applications, issued a statement on the 15th of March on the disruptions brought on by the COVID-19 outlining the following.
- Time limits expiring on or after the 15th of March 2020 to be extended until the 17th April 2020.
- Oral proceedings in examination and opposition proceedings scheduled until the 17th of April 2020 are postponed, unless it has been guaranteed that they will take place by videoconferencing.
- Oral proceedings in front of the Board of Appeal scheduled to take place until the 17th of April 2020 will not be held in a physical setting.