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Covid-19 – Time limits in proceedings before the International Bureau of WIPO

Covid-19 - Time limits in proceedings before the International Bureau of WIPO

On April 9, the WIPO International Bureau issued a statement that interprets the current circumstance of global COVID-19 disruption as falling under PCT Rule 82quater.1 providing for excuse of delay in meeting PCT time limits (which may relate to the submission of documents and/or the payment of fees) due to reasons of force majeure. Namely, the current global pandemic should be considered to be a “natural calamity …. or other like reason”. The International Bureau of WIPO urges all PCT Offices and Authorities to likewise adopt this interpretation.

The International Bureau of WIPO will treat favorably any PCT Rule 82quater request made citing COVID-19 related issues and not require evidence to be provided that the virus affected the locality in which the interested party resides. Again, the International Bureau of WIPO urges PCT Offices and Authorities to do likewise.

Although this provision would not be an effective remedy in a situation in which an international application had lost its legal effect as a result of having been declared considered withdrawn, for example, for having failed to pay the appropriate fees within the prescribed time limit, the receiving Office of the International Bureau of WIPO has decided to delay the issuance of any such notifications until May 31, 2020.

Furthermore, the International Bureau of WIPO recommends that:

a. for at least one further month (potentially to be further extended), such notifications should only be issued in relation to deadlines which have expired over two months previously; and

b. receiving Offices waive the charging of late payment fees under PCT Rule 16bis.2.

See the full statement.

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Covid-19 – Suspension of time limits in proceedings before the Italian PTO – Extension to 15 May 2020

The legislative decree of 08.04.2020, No. 23, has extended to 15 May 2020 the time period of proceedings affected by the suspension of time limits in proceedings pending before the Italian PTO.

Namely, for the calculation of all the time limits in the proceedings pending before the Italian PTO (and concerning Italian IP rights), including the time limits related to proceedings for oppositions to registration of Italian trade marks, the period that is included between 23 February and 15 May 2020 will not be taken into account.

Time limits related to appeal proceedings before the Board of Appeal remain excluded from the suspension.

Andrea Scilletta

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UPC – Negative decision by the German Federal Constitutional Court

UPC - Negative decision by the German Federal Constitutional Court

With a non-unanimous decision, the German Federal Constitutional Court held today that the Act of Approval to the Agreement on a Unified Patent Court is void (see the decision).

Personally, I hope that from the rubble caused by recent events, including this decision, the EU can build a better European integration, within which there is also a more solid and shared package of legislative measures for a Unitary EU patent and a Unified Patent Court.

Andrea Scilletta

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Covid-19 – Suspension of time limits in proceedings before the Italian PTO – Update

The legislative decree of 17.03.2020, No. 18, has extended both the time period and the type of proceedings affected by the suspension of time limits in proceedings pending before the Italian PTO (already established with the previous decree of the Ministry of Economic Development of 11.03.2020).

Namely, for the calculation of all the time limits in the proceedings pending before the Italian PTO (and concerning Italian IP rights), including the time limits related to proceedings for oppositions to registration of Italian trade marks, the period that is included between 23 February and 15 April 2020 will not be taken into account.

Time limits related to appeal proceedings before the Board of Appeal remain excluded from the suspension.

As regards payment of annuities and renewals, IP rights expiring between 31.01.2020 and 15.04.2020 remain valid until 15.06.2020. To extend the duration of an IP right beyond 15.06.2020, it will then be necessary to comply with the provisions of the Italian IP law (e.g. by paying the due annuity by 15.06.2020).

See the notice at the Italian PTO website and the Legislative decree (only in Italian language).

Andrea Scilletta

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Covid-19 – Extension of periods in proceedings before the EPO and the EUIPO

 

Both the EPO and the EUIPO have extended periods for all parties and their representatives.
The EPO has decided that periods expiring on or after 15 March 2020 are extended for all parties and their representatives to 17 April 2020. In accordance with Article 150(2) EPC this applies also for international applications under the PCT. The above period may be further extended by the publication of another Notice in case the dislocation due to the measures adopted in Europe to stop the spread of Covid-19 extends beyond 17 April 2020 (see Notice from the EPO).
The EUIPO has decided that all time limits expiring between 9 March 2020 and 30 April 2020, that affect all parties before the Office, are extended to 1 May 2020 (see EUIPO Decision).
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Suspension of time limits in proceedings under the jurisdiction of the Italian PTO

In view of the precautionary measures taken by the Italian government to stop the spread of Covid-19, the decree of the Ministry of Economic Development of 11.03.2020 has suspended the time limits in proceedings under the jurisdiction of the Italian PTO.

In particular, with the exception of time limits related to either proceedings for oppositions to registration of Italian trade marks or appeal proceedings, all time limits in proceedings before the Italian PTO (and concerning Italian IP rights) which expire in the period between March 9 and April 3, 2020 are suspended.

At the end of this period of suspension, such time limits will begin to run again for the remaining part.

See the notice at the Italian PTO website and the Ministerial decree (only in Italian language).

Andrea Scilletta

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