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News that the European Patent Office (EPO) has issued a “Notice from the European Patent Office dated 15 March 2020 concerning the disruptions due to the COVID-19 outbreak” has been widely reported.   As usual, the notice is an advance notice; it will become official when it is formally published in the Official Journal.

The 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.

The notice states that, under Rule 134(2) EPC, and in view of the restrictions currently in place in Germany (where two of the EPO’s three filing offices are located; the other is in The Netherlands): “Periods expiring on or after the date of the publication of this notice [15 March 2020] are thus extended for all parties and their representatives to 17 April 2020.”  Indeed, the notice also states: “The above period may be further extended by the publication of another Notice in case the dislocation extends beyond the aforementioned date”.

While this is certainly a welcome development in these increasingly turbulent times, it should NOT be regarded as a panacea: while the “COVID-19 extension” applies to a great many deadlines, it does NOT apply to ALL deadlines.

Accordingly, caution should be exercised before deciding to rely on the “COVID-19 extension”.  If in doubt, ask your European attorney!

In more detail:

Rule 134 EPC refers to “extension of periods”, and, unfortunately, not all deadlines are “periods”.

In almost all cases, “periods” (e.g., for taking action) are set by the European Patent Convention (EPC) or by the EPO itself (e.g., by way of a formal communication, e.g., an examination report); these “periods” are automatically extended by the COVID-19 extension.  This will apply to the vast majority of deadlines you might have.

However, some notable deadlines are NOT “periods”, and so are NOT affected by the COVID-19 extension.

The following are a few notable exceptions for which Rule 134(2) EPC, and so the COVID-19 extension, does NOT apply:

  1. Paying a renewal fee for a European patent application. Under Article 86 EPC, annual renewal fees in respect of the third year, and each subsequent year (as calculated from the application date) must be paid while a European patent application is pending.  Under Rule 51(1) EPC, the renewal fees are due, in advance, at the end of the month in which the anniversary of the application date falls.  And so, the Year 3 renewal fee is due at the end of the month in which the 2nd anniversary of the application date falls.  Famously, this is a “due date” and not a “period”, and so is not subject to Rule 134 EPC (instead, EPO Board of Appeal decision J 4/91 provides legal basis for “extensions”; for example, if the “due date” falls on a “closed day”, e.g., a weekend, then action may be taken on the next “open day”).  As a result, the COVID-19 Extension does NOT apply to “normal” renewal fees (i.e., the vast majority of them).  Two exceptions, where the COVID-19 Extension DOES apply, are (a) “back” renewal fees and potentially the first “forward” renewal fee due in respect of a divisional application (Rule 51(3) EPC), and (b) the Year 3 renewal for a European regional phase application, if it was due before entry into the European regional phase (Rule 159(1)(g) EPC).  Finally, and to make things even more complicated, if a renewal fee is not paid by the due date, it can be paid “late”, with 50% surcharge, within a six-month “additional period”, as provided in Rule 51(2) EPC.  This six-month “additional period” is a “period”, and so both Rule 134 EPC and the COVID-19 Extension DO apply.  Ultimately, we strongly recommend careful consideration before relying on the COVID-19 Extension in respect of any renewal fee for a European patent application.

  2. 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.

  3. 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.

  4. 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.  Our recommendation is to assume that these “final dates” are not “periods”, and so are not affected by the COVID-19 extension.

  5. Oral proceedings.  At this moment, oral proceedings before examining and opposition divisions are to take place as scheduled (but may be held by videoconference) or postponed on request where they involve parties or representatives who have recently visited high risk areas.  As recently announced, oral proceedings before the EPO Boards of Appeal will not be held between 16 March 2020 and 27 March 2020.  Our recommendation is that each case where oral proceedings are scheduled to take place in the next few months be reviewed to determine the best course of action.

  6. “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).

  7. International applications.  The notice refers to international (PCT) patent applications, and states: “In accordance with Article 150(2) EPC this applies also for international applications under the PCT.”  It is our understanding that this aspect of the COVID-19 extension only applies to international (PCT) deadlines that concern acts performed before the EPO, e.g., in its capacity as Receiving Office (RO), International Search Authority (ISA), or International Preliminary Examining Authority (IPEA).  This would include, for example, the 31-month deadline for entering the European regional phase.

  8. 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.  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 (see, e.g., Article 8(2)(b) PCT, where national law will apply).  This is, admittedly, quite esoteric.  Nonetheless, we recommend that, where an international (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.
Wilhelmus (Willum) deals with patent drafting, prosecution and opposition in all key jurisdictions. His particular area of focus is the pharmaceutical sector, where he has extensive experience working on small molecules for therapy of a range of indications, and spanning early drug discovery projects through to clinical candidates. Willum works with a broad range of clients – primarily in the UK, Europe, and the US. They include universities and spin-out companies, as well as large multinational pharmaceutical corporations.
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