Amid the spread of COVID-19 and social distancing, Intellectual Property Offices and national courts who hear IP matters have advised of the precautionary measures they are taking. Gowling WLG is actively monitoring and adapting to the situation. The key takeaways from the United Kingdom, Germany, France and European IP offices are:

United Kingdom

The United Kingdom local courts and the UK Intellectual Property Office ("the IPO). What you need to know:

  • HM Courts & Tribunals Service and the Ministry of Justice
    • Confirmed that the courts and tribunals in England and Wales currently remain open. There is an increasing use of telephone and video technology in order to hold remote hearings wherever possible.
  • The UK Intellectual Property Office
    • Stated that it "will take whatever measures we can to support rights applicants and their attorneys who have been affected."
    • The IPO has said that it will extend time periods where national and international legislation allows. Extension of time requests will be considered as favourably as possible although on a case-by-case basis. If a failure to meet a time period has resulted in a loss of rights, the IPO has stated that rights may be reinstated or restored in certain circumstances.

We will continue to keep you informed as further developments arise. If you have any questions on impacts on your IP portfolio, please contact us.

Germany

The German Trade Mark and Patent Office and the German local courts What you need to know:

  • German Patent and Trade Mark Office (DPMA)
    • Information centres and research rooms of the DPMA will remain closed until further notice.
    • Deadlines:
      • DMPA has announced to take the current situation into appropriate account in managing IP procedures, within the scope of legal options. This applies specifically to granting requests for the extension of time limits set by the DPMA. For time limits specified by law (which cannot be extended at the discretion of the DPMA), the DPMA has assured to make use of the option of re-establishment of rights, meaning that any person that - due to the current situation - has not observed a time limit imposed by law without any fault on his part can subsequently have their procedures re-established upon request.
      • Arbitration Board extends all open pleading deadlines until 15 May 2020 in accordance with the Law on Employees' Inventions.
  • German courts
    • There is no national approach yet. Decisions are made on court by court / federal state level. We do know, however, that several hearings have already been postponed at the moment due to corona. We expect further delays / restrictions in the near future.

We will continue to keep you informed as further developments arise. If you have any questions on impacts on your IP portfolio, please contact us.

France

The French local courts and French Trade Mark and Patent Office. What you need to know:

  • French Courts:
    • All civil hearings have been postponed indefinitely (summary proceedings, summary dismissals and pre-trial proceedings).
    • The matters that were to be examined at these hearings have been/will be rescheduled. The parties will be informed of the new date as soon as the situation returns to normal.
    • Deliberations scheduled during this period have also been postponed to a date to be communicated later.
    • As things stand, the tribunal registry no longer issues dates for subpoenas, nor dates for summons in summary proceedings. No seizures will be authorised.
    • The functioning of the court is thus limited to the so-called essential functions and, in the case of civil activities, to cases of absolute emergency.
  • French bailiff services:
    • French bailiffs are still doing purchase reports online. However, other services - delivery of summons, seizure of counterfeit goods - are no longer provided.
  • European Trademarks Office:
    • All deadlines expiring between 9 March and 30 April 2020 inclusive are automatically extended to 1 May 2020. As 1 May is a French public holiday, the deadlines are extended until Monday, 4 May 2020.
  • French Trademarks and Patents Office:
    • We have not received any information at this stage from the French office. We are continuing our exchanges with them and will inform you as soon as possible.
    • If we can no longer file subpoena and carry out seizures, we can still monitor infringement on the Internet, do Internet reports and send letters of formal notice. In view of the judicial paralysis that is gradually taking hold in various jurisdictions around the world, we recommend maintaining close monitoring of infringement on the Internet where, given the confinement measures and apparent impunity, the number of infringement is likely to increase.
    • In this respect, please note that in France, because of the coronavirus, the time period limitation will be suspended.

Consequently, we strongly recommend the client to keep monitoring Internet, carry out regular bailiff's reports and send cease and desist to counterfeiters and inform them of the suspension of the time period limit during the outbreak in order to keep up pressure and prevent the increase of online infringement.

We will continue to keep you informed as further developments arise. If you have any questions on impacts on your IP portfolio, please contact us.

Europe

The European Patent Office and European Union Intellectual Property Office have also advised of the precautionary measures they are taking. What you need to know:

  • European Patent Office (EPO)
    • Oral proceedings before examining and opposition divisions will in principle take place as scheduled.
    • Oral proceedings involving parties or representatives who have recently visited high risk areas will be held by videoconference or postponed, upon request.
    • In other cases, the EPO has announced to do everything feasible to remove the need for the party or representative to travel to oral proceedings. In particular, oral proceedings by videoconference will be offered in examination and, to the extent possible, in opposition proceedings. The relevant party or representative should indicate in each particular case which alternative measures they request.
  • European Union Intellectual Property Office (EUIPO)
    • As and from Monday 16 March, all EUIPO staff will work from home.
    • Trade mark and design applications will continue to be received, examined and published, and the Office will continue to send communications and set deadlines. Bulletins will continue to be published as usual.
    • A decision of the Executive Director has been published extending all time limits to 1 May 2020.