EPO announces extensions to deadlines due to COVID-19

EPO announces extensions to deadlines due to COVID-19

Last updated: Monday 4th May 2020

On Friday 1 May 2020 the EPO published a further notice to confirm that all periods expiring on or after 15 March 2020 are extended to 2 June 2020. The EPO may further extend this period upon publication of a further notice. 

However, do note that this does not apply to all deadlines under the EPC.

Does this extension start right now?

Yes. We have had email confirmation from the EPO that the "publication" is the online publication of the notice on 15 March 2020, i.e. not the subsequent date of publication in the EPO Official Journal.

Does this mean that all deadlines under the EPC are extended?

No. It is important to understand that this does not apply to all deadlines under the EPC. This only applies to periods set under the EPC. For example, for pending patent applications these include periods set under the following provisions:

  • Art 94(3) (Examination report)
  • Rule 58 (Correction of deficiencies in the application documents)
  • Rule70 (Request for examination)
  • Rule 70a (Response to the extended European search report)
  • Rule 70b (Request for a copy of search results)
  • Rule 71(3) (Request to approve the papers for grant and pay grant and printing fees)

Is the deadline for filing a divisional application extended?

No. Rule 36(1) EPC says that "(1) The applicant may file a divisional application relating to any pending earlier European patent application." Therefore, Rule 36(1) EPC sets a condition for filing a divisional application, and not a period for filing the application (see e.g. decision J 0019/10 at Reasons 7). Therefore, you still need to get divisional applications filed before the date of grant of the parent application.

If you need specific assistance with filing a divisional application then please contact us. For example, it is possible to file divisional applications without payment of official fees and without claims - this can be helpful when you do not have final instructions to file the divisional application or where you do not know which invention/claims to pursue.

Is the deadline for payment of renewal fees extended?

Yes. Both the initial deadline for payment of the renewal fee, as well as the six-month grace period, are extended until 2 June 2020. The EPO has also announced that, from 1 June 2020, surcharges payable on renewals in the six-month grace period will be waived until 31 August 2020.

Rule 51 EPC sets the provisions for payment of renewal fees, including the deadline for payment. Although a deadline is set, it is the end of a period (decision J 0004/91 at Reasons 3.2; J 0020/00 at Reasons 5.1). Therefore, it is extended under this notice from the EPO.

Is the deadline for filing Euro(PCT) applications extended?

Yes. The 31 month deadline for filing Euro(PCT) applications is the end of a 31 month period (Rule 159 EPC), and so is extended under this notice from the EPO.

Conclusions

Although most EPO deadlines are extended by this current notice, it does not apply to all deadlines set by the EPO. If you have any questions then please get in touch with your usual Wynne-Jones contact.

Related News

Managing your business-critical IP during the COVID-19 crisis
news

Managing your business-critical IP during the COVID-19 crisis

UK businesses are fighting for survival during the continuing COVID-19 outbreak and trying to trade under difficult conditions, the likes of which haven’t been seen in the living memory of most business people. If you’re afraid that your business is going to the wall, it probably isn’t the top of your mind to pay for a patent application for your new technology or a registration of the trade mark for your brand new clothing range, right?  Where is the money coming from to invest in such luxuries as IP, we hear you say, when staff are being furloughed and orders have been postponed?

Videoconferencing: the future of oral proceedings at the EPO?
news

Videoconferencing: the future of oral proceedings at the EPO?

The European Patent Office has announced that videoconferencing will become the norm for oral proceedings before examination and opposition divisions until at least 15 September 2021. But is this a taste of what the future holds for oral proceedings at the EPO?

EPO-CNIPA pilot for International Search
news

EPO-CNIPA pilot for International Search

On 12 November 2019, the EPO and CNIPA agreed to enhance their bilateral co-operation to give patent applicants filing an international patent application in English at the CNIPA, the choice to opt for the EPO as their ISA. A two year pilot programme launched on 1 December 2020, offers applicants filing international applications with the CNIPA or the International Bureau (IB) of the World Intellectual Property Office (WIPO) the opportunity to select the EPO as their ISA and as their International Preliminary Examining Authority (IPEA), rather than CNIPA.

Changes to trade mark and patent law in Gibraltar
news

Changes to trade mark and patent law in Gibraltar

In October 2020, the UK Government declared that the territorial effect of five important IP treaties would be extended to cover Gibraltar from 1 January 2021.  These treaties are the Paris Convention, the Patent Cooperation Treaty, the Madrid Protocol (on International trade marks), the Nice Agreement (on trade mark classification), and the Berne Convention (on copyright). Following on from this, a bill was passed in on 11 December 2020, making some amendments to trade mark and patent law in Gibraltar.

Much Ado About Nothing
news

Much Ado About Nothing

For a long time, a source of tension among UK trade mark and design attorneys was the fact that the UK was one of the few EU member states to abide by a decision to allow attorneys from any European Economic Area country to represent clients in proceedings before any national office of an EU member state.  With this in mind, one of the ironies of Brexit is that, from 1st January 2021, UK trade mark and design attorneys will (in general – please see below for a super-important exception!) lose the right to represent clients before the EU IPO

Messi scores in injury time…..
news

Messi scores in injury time…..

After nine-years (even Sir Alex Ferguson would have struggled to justify that), six time Ballon d’Or winner, Lionel Messi, has won a legal battle to register his name as a trade mark.

The impact of Artificial Intelligence and Machine Learning on the Patent Profession
news

The impact of Artificial Intelligence and Machine Learning on the Patent Profession

Matthew Veale discusses the impact of Artificial Intelligence and Machine Learning on the patent profession.

UK IPO announces temporary fee changes
news

UK IPO announces temporary fee changes

The UKIPO has temporarily reduced or removed certain fees associated with patents, trade marks and registered designs until 31 March 2021.

aipex logo aipex logo aipex logo