COVID-19 update: Italian and European IP offices extensions of terms
Updates from the Italian Patent and Trademark Office, the European Union Intellectual Property Office, the European Patent Office and the Community Plant Variety Office concerning suspension of terms and other special provisions in answer to the Covid-19 emergency.
The suspension of terms in proceedings before the Italian Patent and Trademark Office (IPTO), initially announced on 11 March 2020, has been extended by several successive provisions of law, the combined effect of which is the suspension of all terms, provided for by the Italian Industrial Property Code and by the IPTO, falling from 23 February to 15 May 2020.
Moreover, the validity of most IP rights due for renewal expiring between 31 January and 31 July 2020 has been extended until 29 October 2020.
How to calculate the period of suspension
In general, terms concerning proceedings that were pending on 23 February 2020 or started after that date are suspended and will start running again on 16 May 2020.
Terms that start running during the suspension period
Where terms for a certain activity (such as the filing of a deed or an answer to the office) start running from a date falling from 23 February to 15 May 2020 included, the initial running date is postponed until 16 May 2020.
Annuities and renewals
The validity of trademark, design, patent, utility model and plant variety rights expiring between 31 January and 31 July 2020 is extended until 29 October 2020. Therefore annuity payments and/or requests for renewals concerning the above rights that, where due for renewal, would expire during the period between 31 January and 31 July 2020, must be finalised by 29 October 2020.
Please be aware that legislation in answer to the current emergency in Italy is being updated frequently and understanding its applicability is not always straightforward; we therefore recommend that confirmation be requested concerning the applicability of the above extensions to each specific case.
European Union Intellectual Property Office
The European Union Intellectual Property Office (EUIPO) has extended until 18 May 2020 all time limits expiring after 9 March 2020.
The EUIPO’s detailed guidance on the application of the its decisions on extension of time limits can be found here.
European Patent Office
The European Patent Office (EPO) has extended all time limits expiring on or after 15 March 2020 until 2 June 2020. As regards time limits expiring before 15 March 2020, it is assumed that the EPO should facilitate the use of legal remedies for users located in areas more directly affected by disruptions due to the COVID-19 outbreak.
The EPO is continually updating its Coronavirus information page.
Community Plant Variety Office
The Community Plant Variety Office (CPVO) had issued a first decision to extend until 4 May 2020 deadlines falling from 17 March to 3 May included, for parties in proceedings before the CPVO and the Board of Appeal.
A second decision, applicable as from 4 May 2020, provides that users unable to pay annual or examination fees will have 3 months to pay from the date of the reminder, instead of 1 month. The extension of time limits shall apply to outstanding debit notes with a due date for payment until 21 September 2020 included.