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 - 22/05/2020

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 have been extended until 2 June 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.

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 until further notice. 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.

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.

With exception of General Court appeal deadlines, all contentious (i.e. oppositions, invalidity and revocation actions), priority and examination time limits in connection with trade marks and designs expiring between 9 March and 17 May 2020 inclusive have been extended until 18 May. The extension is automatic and evidence of a COVID-19 cause of the delay is not required. However, since applications and documentation filed on-line receive their actual filing date, we still recommend filing as early as possible to be in the best possible position. Please ask us for case-specific information about any ongoing contentious matters.

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 until further notice. The automatic extension provision is due for review on 7 May. Practically, taking into account the two weeks’ notice before the end of the provision, the extension will remain in effect up to, at least, 21 May 2020. For patents, this applies to all examination and priority deadlines. For trade marks, this applies to all contentious (i.e. oppositions, invalidity and revocation actions), priority and examination time limits. The same automatic extensions also apply to design-related deadlines except examination response deadlines, but the Office will consider extension requests on a case-by-case basis.

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, filing divisional applications and ongoing contentious matters.

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

The default position for all B&PC hearings, including trials, is to have remote video call or telephone hearings wherever possible, and to avoid physical hearings unless absolutely necessary. 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 but limiting all unnecessary contact. This means that hearings will be postponed in non-urgent proceedings and/or video conferences are set up. All filings are to be made via the secured electronical system (known as beA) used by courts and lawyers likewise. Due to the certified digital signature a smooth and paperless work is therefore available.

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.
  • We provided an update on the European Union Intellectual Property Office’s announcement to extend all deadlines falling between 9 March and 30 April to 1 May 2020.
  • 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.