COVID-19 Response

Dear Clients, Colleagues and Friends,

First and foremost, Haseltine Lake Kempner continues to send its best wishes and support to everyone who is being affected by the COVID-19 virus.

Here at HLK we’re settling in well to our home working environment, and we’re pleased to report that our business continuity systems are enabling us to continue to provide a seamless service to our clients and associates, as normal, for however long we find ourselves in these difficult times.

While we continue to operate as normal, the EPO, UK IPO and German Patent and Trade Mark Office have instigated legal provisions to cope with difficulties that might arise in these challenging times – while they are encouraging everyone to try and continue as normal to meet existing deadlines, they have introduced exceptional extensions in case these are needed.

If you need any specific advice about these provisions, or would like to discuss our response to the virus with anyone in the HLK team then please contact us on hlk@hlk-ip.com, or by email as normal to your team contact.

More information about how best to communicate with us during this period of home working can also be found below.

With best wishes and hoping for better news on this soon. Keep safe.

The HLK Team

Rolf Stein

CEO

Haseltine Lake Kempner LLP

Special COVID-19 Measures Relating to Patents in the EPO, UKIPO and DPMA - 29/06/2020

The following summarises the special COVID-19 measures relating to patents currently in place in the European Patent Office (EPO), the UK Intellectual Property Office (UKIPO) and the German Patent and Trademark Office (DPMA).

The situation is rapidly changing. We will endeavour to issue updated information when changes occur.

For further details or assistance, please contact us via hlk@hlk-ip.com, or by email as normal to your team contact.

European Patent Office (EPO)

The EPO is operating by remote working.Personal visiting is not possible and we are filing all documents on-line.

All examination time limits expiring on or after 15 March 2020 are extended for our clients until five days after the end of local dislocation in the delivery and transmission of mail in the UK. The UKIPO has announced (see below) that the interruption of deadlines ends on 29 July 2020 and all suspended deadlines move to 30 July 2020. We therefore expect that extension of EPO deadlines until 3 August 2020 will be allowed on this basis. Longer extensions may be possible, for example in cases of continuing local disruption at clients’ premises or at a relevant office of Haseltine Lake Kempner. We recommend that all COVID-19 extensions are requested well in advance, and that the facts of the local disruption are set out.

Since documents filed on-line receive their actual filing date, we recommend to file as early as possible so as not to risk damaging the position against third parties.

All opposition oral proceedings (hearings), other than video hearings, scheduled until 14 September 2020, and all appeal oral proceedings scheduled until 15 May 2020, are postponed to new dates to be announced later.   The Boards of Appeal are contacting parties case by case on appeal hearings scheduled from 18 May 2020, to see whether postponement is necessary.  Examination oral proceedings are being scheduled to be held by video conferencing.

UK Intellectual Property Office (UKIPO)

The UKIPO is operating by remote working.  Personal visiting is not possible and we are filing all documents on-line.

All examination time limits expiring on or after 24 March 2020 have been extended to the day after the end of the interruption of deadlines. The UKIPO has announced that the interruption of deadlines ends on 29 July 2020 and all suspended deadlines move to 30 July 2020. The extension is automatic and evidence of a COVID-19 cause of the delay is not required. However, since documents filed on-line receive their actual filing date, we recommend to file as early as possible so as not to risk damaging the position against third parties.

The UKIPO has announced that its general COVID-19 extension will not be continued after 30 July 2020.

Please ask us for case-specific information about other matters, for example hearings and filing divisional applications.

German Patent and Trademark Office (DPMA)

The DPMA is operating by remote working. Personal visiting is not possible and we are filing all documents on-line.

The previous automatic extension of examination time limits set by the DPMA until 4 May 2020 has not been continued. All examination time limits set by the DPMA and expiring after 4 May 2020 should be actioned in the normal way.

Please ask us for case-specific information about other matters, for example possible extension of statutory deadlines and the requirements for filing divisional applications.

All oral proceedings (hearings) have been cancelled until further notice.

Special COVID-19 Measures Relating to Trade Marks and Designs in the EUIPO and UKIPO

European Union Intellectual Property Office (EUIPO) – trade marks and designs

The EUIPO is operating by remote working.  Personal visiting is not possible and, as before, we are filing all documents on-line.

The previous general extension of all deadlines in contentious matters (i.e. oppositions, invalidity and revocation actions), priority and examination time limits in connection with trade marks and designs until 18 May 2020 has not been continued.    However, extensions of certain time limits in existing proceedings can be requested before the deadline.  The EUIPO has announced that a first extension of up to 6 months will be allowed without a detailed justification, and that further extensions due to a COVID-19 cause will be allowed, if requested before the extended deadline.

Certain statutory time limits cannot be extended on request in this way, although restoration of rights may be available in appropriate cases if such a time limit is missed.

UK Intellectual Property Office (UKIPO)

The UKIPO is operating by remote working.  Personal visiting is not possible and we are filing all documents on-line.

Time limits expiring on or after 24 March 2020 have been extended to the day after the end of the interruption of deadlines.   The UKIPO has announced that the interruption of deadlines ends on 29 July 2020 and all suspended deadlines move to 30 July 2020. For trade marks, this applies to all contentious matters (i.e., oppositions, invalidity and revocation actions) and examination time limits.  Automatic extensions also apply to design-related deadlines.

The extension is automatic and evidence of a COVID-19 cause of the delay is not required.  However, since applications and documents filed on-line receive their actual filing date, we recommend to file as early as possible so as to be in the best possible position and not to risk damaging the position against third parties.  Please ask us for case-specific information about hearings, priority deadlines, filing divisional applications and ongoing contentious matters.

The UKIPO has announced that its general COVID-19 extension will not be continued after 30 July 2020.

 

COVID-19 and the Courts

The following summarises the special COVID-19 measures the UK courts have implemented to ensure the safety of court staff, judiciary, litigants and their representatives during the current crisis.

As in all areas, the situation is rapidly changing, and we will endeavour to issue updated information when changes occur.

If we represent you in current or proposed litigation, we will already have been in touch with you to update you on the current situation. For further details or assistance, please call or email your usual team contact, or contact us via hlk@hlk-ip.com.

For all our litigation cases we are still able to file documents at the court electronically, and can agree with the other side to accept service electronically, so our day-to-day work on cases can continue as normal, subject of course to client/witness availability.

Business & Property Courts

The Business & Property Courts (“B&PC”) encompass the Patents Court, Intellectual Property Enterprise Court, and the Intellectual Property List, and so deal with the majority of the litigation HLK acts on, other than appeals to the Court of Appeal, which are dealt with separately below.

The B&PC are dealing with matters in the current climate on a case-by-case basis. Thus we cannot advise on which hearings are likely to go ahead as scheduled, and which may be delayed. However, the court has said that it will prioritise urgent matters, so things like interim injunctions should still be possible.

Remote hearings

From 1 June 2020, the B&PC has made changes to enable more hearings to be heard, either fully in-person or in a hybrid format (i.e. with some members physically present and some members joining via video link). However, for the time being, it appears that most B&PC hearings, including trials, will continue to be held remotely. Further information on the remote hearings protocol can be found here.

Court of Appeal

The Court of Appeal (“CA”) is currently prioritising urgent applications, i.e. applications that need a decision within 7 days in the interests of justice. All other applications to the CA will be dealt with once the Civil Appeals Office has sufficient capacity. All appellant’s notices will be accepted on the basis that they may then be rejected at a later date.

Like the BP&C, the CA is also following the remote hearings protocol, so if at all possible, all CA hearings will be conducted by telephone or video call until the end of this crisis.

German Courts

The German courts are working as usual. The codes of good practice in respect of health and safety require the signing of a self-disclosure, wearing a mask and keeping social distancing when entering the court building. Further, hearings can be set up as video conferences if requested.

Communicating with us

Email – Email continues to be the easiest way to communicate as we all work from home. Our colleagues are set up to meet with you virtually, using Microsoft Teams® or Skype®, or any other conferencing facility.

Phone – although we are working remotely, we can all be reached through Microsoft Teams®, or as normal through our usual switchboard numbers as follows:

London            +44 (0) 207 611 7900

Munich            +49 (0) 89 62 27 17 60

Bristol              +44 (0) 117 910 3200

Leeds               +44 (0) 113 393 1921

Glasgow          +44 (0) 141 433 7110

Post – while we have systems in place to deal with the handling of incoming post, we would be grateful if, wherever possible, these documents are instead sent by email until further notice.

Couriers – For anything you would normally send by courier, we request that you hold on to such documents until the current period of home working is over.

More generally, before you send any original documents to us, we recommend that you first check with us to confirm whether we need the original and that a scanned copy will not suffice. For example:

  • Most priority documents can be filed electronically by using the DAS code at both the EPO and UKIPO. Please see the following website for participating offices: http://www.wipo.int/das/en/participating_offices.html
  • If you send us the DAS code, we can submit that code electronically and there will be no need for original documents. For Design applications at the EUIPO, scanned copies of certified priority documents are sufficient.
  • Executed powers of attorney can often be filed electronically. For those countries that do require an original, there may be exceptional extensions in place at this time.
  • Grant certificates can be held until later.

Below are links to our latest COVID-19 articles:

  • Following government recommendations, all HLK colleagues moved to home working. We continue to provide an undisrupted service to all of our clients.
  • The UK IPO declared that the 24 March 2020, and all subsequent days until further notice will be deemed “interrupted days”. Read more about the notice of interruption here.
  • COVID-19 has highlighted the importance of social connectedness as a key driver of wellbeing and resilience. Our article “Connectedness” gives an insight into how HLK colleagues have adapted during this difficult time.
  • To comply with travel restrictions and social distancing guidelines, the EPO is increasingly utilising videoconferencing to hold oral proceedings. Find out more in our article and video update.