The European Patent Office (EPO) now has a dedicated webpage regarding their response to COVID-19; that should provide current information as the crisis unfolds.
UPDATE AS OF 27 MAY 2020: The EPO issued a “Notice from the European Patent Office dated 27 May 2020 concerning disruptions due to the COVID-19 outbreak”. It can be seen here. It will eventually be published in the Official Journal of the EPO.
Most importantly, the EPO has decided NOT to extend further the “blanket” COVID extension of deadlines beyond 02 June 2020.
As a result, all those who are relying on the “blanket” COVID extension (which extends virtually all deadlines falling on or after 15 March 2020) now face a deadline of Tuesday 02 June 2020.
The EPO has also taken the opportunity to remind everyone that the “normal” remedies arising from disruptions (via Rule 134(5) EPC and Rule 82quater.1 PCT) are, of course, still available.
See below for more detail about the extension (and, critically, which deadlines are NOT extended).
PREVIOUS UPDATE AS OF 1 MAY: On 01 May 2020, the EPO has issued a fourth notice extending deadlines to 02 June 2020. It can be seen here.
This latest notice effectively supersedes the previous one (“Therefore, the present Notice replaces the previous Notice dated 16 April 2020 (OJ EPO 2020, A43) and, with the exception of the date, reproduces its content”).
Most importantly, the latest notice states that, under Rule 134(2) EPC, “Periods expiring on or after 15 March 2020 are extended for all parties and their representatives to 2 June 2020.” As with the previous notices, it also states: “The above period may be further extended by the publication of another notice if the dislocation extends beyond the aforementioned date”.
PREVIOUS UPDATE AS OF 17 APRIL: To date (17 April 2020), the EPO has issued three notices regarding the extension of deadlines.
The first notice (“Notice from the European Patent Office dated 15 March 2020 concerning the disruptions due to the COVID-19 outbreak”) has now been published in the Official Journal of the EPO (EPOJ 2020, A29).
The second notice (“Notice from the European Patent Office dated 30 March 2020 concerning the extension of periods for the payment of fees”) is an advance notice, and has not yet been published in the Official Journal, but it can be seen here.
The third notice (“Notice from the European Patent Office dated 16 April 2020 concerning the disruptions due to the COVID-19 outbreak”) is also an advance notice, and it can be seen here.
This latest notice effectively supersedes the first one (“Therefore, the present Notice replaces the previous Notice dated 15 March 2020 (OJ EPO 2020, A29) and, with the exception of the date, reproduces its content.”)
Like the first notice, the latest notice primarily refers to Rule 134(2) EPC, which relates to the problems being experienced at the EPO itself. However, it also refers to Rule 134(5) EPC and Rule 82quater.1 PCT, which relate to problems which might be experienced at the applicant’s or representative’s location.
Most importantly, the latest notice states that, under Rule 134(2) EPC, “Periods expiring on or after 15 March 2020 are extended for all parties and their representatives to 4 May 2020.” As with the previous notice, it also states: “The above period may be further extended by the publication of another Notice in case the dislocation extends beyond the aforementioned date”.
Footnote [2] of the notice makes it clear that Monday 04 May 2020 is “the first day following the end of the interval of dislocation within the meaning of Rule 134(2) EPC”, and so the relevant deadlines are extended to that date.
Again, while this is certainly welcome, caution is warranted.
Although the COVID-19 extension applies to a great many deadlines, it does NOT apply to ALL deadlines. If in doubt, ask your European attorney!
For example, Rule 134 EPC refers to “extension of periods”, and, unfortunately, not all deadlines are “periods”. However, Point 2 of the second notice effectively re-defines “time limit” so as to encompass a “period”: “According to established principles of procedural law, a time limit involves a period of a fixed length for accomplishing a procedural act.” And so, as a result, it appears that most deadlines are, in fact, encompassed by the COVID-19 extension.
Furthermore, Points 4 and 5 of the second notice make it reasonably clear that all deadlines relating to the payment of renewal fees are encompassed by the COVID-19 extension. Moreover, as set out in Points 6 to 8, the new (higher) official fees that came into force on 01 April 2020 will not apply in some circumstances, and the previous (lower) fees can be paid.
And so, finally, there remain some notable exceptions (i.e., deadlines that are NOT encompassed by the COVID-19 extension) to beware of, including:
- Filing a divisional application. A divisional application can only be filed while the parent application is still pending (Rule 36 EPC). Note that this is considered to be “a condition to be met” and so is not a deadline, let alone a period. For example, an application is no longer pending on the day it is granted, and so if a divisional is wanted, it must be filed no later than the day before the publication of mention of grant of the parent. At this moment, it appears that the EPO is still publishing the mention of grant on its usual timetable. And so, if a divisional is wanted and the parent is scheduled to be granted, the divisional must be timely filed, without relying on the COVID-19 extension.
- Filing a patent application not later than the date of a public disclosure. Rule 134(2) EPC does not provide a “grace period”, i.e., an additional period of time for filing a patent application after the invention (or relevant disclosure) has been made available to the public. And so, if there is a planned public disclosure, and a corresponding patent application is wanted, it must be filed not later than the date of the public disclosure, without relying on the COVID-19 extension.
- Paris convention applications for jurisdictions other than the EPO. Article 4 of the Paris Convention provides a 12-month “priority period”. These “priority” provisions are replicated in the European Patent Convention, e.g., in Article 87 EPC (“a period of twelve months”). And so, the priority period will be extended by the COVID-19 extension for European patent applications. However, and most importantly, the priority period might not be extended by the COVID-19 extension for patent applications in other jurisdictions. Notably, Rule 82quater PCT refers to “a time limit fixed in the Regulations” and the priority period is not such a time limit. And so, for example, if an international (PCT) application is wanted, and it is to be filed at the EPO as Receiving Office, then it is possible that the COVID-19 extension will not apply to the priority period in respect of all PCT states. We recommend that, where a PCT application is to be filed, the normal 12-month priority deadline be respected if possible, and great care be taken before relying on the COVID-19 extension.
- “Double deadlines” may be affected differently. For example, a decision which is open to appeal under Article 106 EPC (e.g., a decision refusing a patent application in examination proceedings, a decision revoking a patent application in opposition proceedings) normally sets two deadlines (under Article 108 EPC): a first deadline (two months from notification of the decision) for filing a Notice of Appeal, and a second deadline (four months from notification of the decision) for filing the Grounds of Appeal. The COVID-19 extension might apply to the first one (because it falls in the relevant time window) but not the second one (because it does not).
- Filing written submissions ahead of scheduled oral proceedings. When oral proceedings are scheduled, a final date for filing written submissions is set under Rule 116(1) EPC. It is by no means clear that this “final date” is a “period” for the purposes of Rule 134(2) EPC. Indeed, in Point 3 of the second notice, the EPO has made it clear that this deadline is not affected by the COVID-19 extension.
