An extension of periods and further measures taken to handle the Covid-19 situation

G. Wesela-Bauman (PL)

1. Introduction

Covid-19 and measures taken to contain the virus caused a significant disruption in a calendar of the European Patent Office (EPO). The pre-EQE and the main EQE scheduled in March were cancelled. The Boards of Appeal of the EPO stopped from conducting oral proceedings from 16 March 2020 until 27 March 2020 and subsequently until 17 April 2020, then until 30 April 2020 and, finally, until 15 May 2020. All events organised in March, April and May were postponed.

Finally, due to an outbreak of Covid-19 in Germany, the EPO took measures within its power to extend any periods by operation of law. The EPO released a first notice dated 15 March 2020 which allowed for automatic extension of time limits.

2. The notice on extension of periods

On Sunday, 15 March 2020, a Notice from the European Patent Office dated 15 March 2020 concerning the disruptions due to the Covid-19 outbreak appeared on the EPO’s website. The fact that the notice was made available on a weekend, i.e. when the EPO is closed for business, says something about the importance of this notice.
The notice released on 15^th of March informed that periods under the EPC:

“… expiring on or after the date of the publication of this notice are extended for all parties and their representatives to 17 April 2020”. 

As the legal basis, Rule 134(2) and (5) were indicated.

By invoking Article 150(2) EPC, the notice indicated that the above-mentioned extension was applicable also for international applications made under the Patent Cooperation Treaty (PCT).

2.1. Legal principle

As explained in the Special Edition OJ EPO 5/2007:

“In practice, the EPO has applied a liberal practice seeing interruption as equivalent with dislocations. Thus, if one means of transmission is interrupted, the EPO has accepted this as a dislocation and applied Rule 85 EPC 1973 (Rule 134 EPC 2000). It is hardly conceivable that all means of communication fail at the same time. On the other hand, one has to consider that forcing an applicant to use alternative means of communication might imply higher fees for the applicant.”

Thereby, extension under Rule 134(2) EPC offers extension of periods effective not only for delays in filing made via mail service, but also made using other forms of communication, including electronic CMS system. For application of Rule 134(2) EPC no request is needed as the extension is granted by operation of law.^{As confirmed in J11/88, hn.2 (CLBA III.D.1.3.2) It follows that no motion is needed for obtaining extension and no decision is issue in this regard.}

Indication that extension is applicable to, both, parties and their representatives is needed in view of the fact that either or both the party and its representative may be affected by a dislocation resulting from the Covid-19 pandemic.

Extension of a time limit leads to a legal situation in which all actions made during an extended time limit are considered to be made in time.^{Term “time limit” in the context used herein is equivalent to “period” as defined in J18/04, CLBA III.D.1.} Therefore, extension under Rule 134(2)-(4) EPC should be applicable to payments since extension of periods under Rule 134(1) EPC is.^{In view of principle established in J1/81, CLBA III.D.1.3.1, Guidelines for Examination in the EPO, edition November 2019, A-X, 6.1, despite that J1/81 refers to payment by cheques (i.e. a method of payment abolished by the EPO starting from 1 April 2008, OJ 2007, 11, p. 626).} Following principal established in J4/91^{CLBA III.D.1.4.1.}, due dates under Rule 51 are extendable to the first working day (under Rule 134(1) EPC) and, thus, extension under Rule 134(2) EPC should also be applicable to renewal fees.^{This interpretation is confirmed in OJ EPO 2020, A38 and is discussed further in this article.}

2.2. Date of commencement and the end of any dislocation

Under Rule 134(3) EPC, the EPO is obliged to publish, both, date of commencement of a dislocation of mail and the end of this dislocation.

Following usual practice, the notice was made available in advance (i.e. pre-released) on the EPO website

“….merely as a courtesy to the public. Only the text subsequently published in the officially certified PDF file of the OJ is authentic”

What is more, “It cannot be guaranteed that this advance version accurately replicates that text.”

The end of dislocation was expressis verbis indicated in the notice and, hence, there was no room for wrong interpretation. However, the date of commencement was indicated as the date of publication of this notice and this date was not understood uniformly.

Specifically, there were many interpretations saying that the date of the notice or date of making this notice available on the website in a pre-released version is the date of commencement. This led to a conclusion that periods expiring between 15 March 2020 and 17 April 2020 were extended by the notice.

However, as indicated in the very beginning of the notice, the fact that this notice was made available on the website was a courtesy and only publication in the Official Journal is authentic.

It follows that a correct interpretation of the notice in its version made available on 15th of March should be that periods expiring between the publication date in the Official Journal in March and 17 April 2020 were extended under Rule 134(2) EPC. It should be noted that date of publication of the OJ was not known at the time when the pre-released version of the notice was made available on the website.

Within two days said notice was amended to:

“Periods expiring on or after the date of this Notice are thus extended for all parties and their representatives to 17 April 2020.”

Said amendment cleared any discrepancies in interpretation of the date of commencement and actually extended applicability of extension made under Rule 134(2) EPC. Since the date of the Notice is 15^th of March, period was specified as form 15 March to 17 April 2020. This version was published with the Official Journal on 31 March 2020.

2.3. Extension of periods for the payment of fees

The Issue of due dates for renewals was addressed by a different notice dated 30 March.^{Notice from the European Patent Office dated 30 March 2020 concerning the extension of periods for the payment of fees, published in the Official Journal OJ EPO 2020, A38.}This notice was also made available in a pre-released version on EPO’s website. This notice was not published in the Official Journal in March and appeared in the April issue of the Official Journal.

Said notice confirmed that extension under Rule 134 EPC applies mutatis mutandis to due dates for renewal fees under Rule 51 EPC. It follows that due dates falling due on 31 March 2020 were deferred to 20 April 2020. It should be noted that extension affecting due dates for payment of renewal fees under Rule 51(1) EPC will lead to aggregate periods in case of 6-month periods under Rule 51(2) EPC. The EPO also decided that the increase of fees entering force on 1 April 2020 would not apply to payments effected on or after 1 April 2020 in respect of fees with a due date on or before 31 March 2020 or for which the period for payment expired on that date.^{See point 7 in OJ EPO 2020, A38.}

2.4. Patent applications and patents affected by the extension

There is no doubt that extension under Rule 134(2) EPC is applicable to European patent applications and European patents. The matter is not so clear when it comes to the International applications filed under the PCT.

Interaction between the EPC and the PCT is covered by Article 150 EPC. Specifically, Article 150(2) EPC establishes three main principles and they are:

• PCT applications can be subject of the proceedings before the EPO,
• EPC provisions are to be used as a supplement to the PCT provisions, and
• PCT provisions prevail over EPC provisions in case of conflict.

The fact that PCT applications can be subject to the proceedings before the EPO grants the EPO the right to process PCT applications. In other words, this principle delimits the jurisdiction of the EPO. The second and third principles are delimiting the applicable law to these proceedings. Specifically, the EPC provisions can be used unless there is a conflict between the PCT and the EPC provisions as, in case of conflict, only PCT provisions can be applied.

In case of Rule 134(2) EPC there is a conflict with the PCT provisions. Specifically, Rule 80.5 PCT offers extension in cases when mail is not delivered.^{It seems that there is no conflict with other extensions / remedies available under the PCT. Specifically, Rule 82.1 PCT pertains to delay or loss in mail and requires evidence for substation of request for excuse of a missed time limit. Hence, Rule 82.1 PCT is not equivalent to Rule 134(2) EPC as Rule 134(2) EPC does not require filing of a request. Rule 82bis.2 PCT allows for the use of national remedies to missed time limits and so its provision is different than for Rule 134(2) EPC. Rule 82quater PCT allows excuse of delays in meeting time limits and also requires evidence. Thereby, Rule 82quater PCT does not allow a missed time limits to be excused by operation of law. Thus, Rule 82quater PCT is not equivalent to Rule 134(2) EPC.} Thereby, this extension is not applicable to PCT applications in the international phase. However, since the PCT does not have procedural provisions for the regional phase, the extension applies to EURO-PCT applications.

3. Other extensions and remedies before the EPO

Irrespectively of the extension provided by the notice, the EPC offers various ways leading to extension of periods or to remedy periods which were missed.

One of ways is to invoke late receipt of documents by the EPO under Rule 133 EPC.

Another way is to file a motion for extension under Rule 134(5) EPC when it can be proven that within any of the then days preceding the date on which time limit expires there was a dislocation of mail. Extension under this rule is also applicable to payments. Although, in case of payments, remedy is possible only if a payment was ordered within five days following banks resumed business (see OJ EPO 2015, A61).

One of the most reliable remedies is further processing under Art. 121 EPC as it requires making a suitable payment within a two-month period following notification of loss of rights. If further processing is not available then a request for re-establishment of rights under Art. 122 EPC can be made. For entry into the European phase under Rule 159(1) EPC, both, further processing and re-establishment can be available.

4. Further measures taken by the EPO to handle the Covid-19 situation

The EPO has not stopped with the above-mentioned extension and implemented a series of additional measures to ensure its continuous operation while still preventing further spreading of the virus.

4.1. Electronic filing

Use of electronic filing is continuously provided and encouraged as it is currently more reliable than the use of regular mail. Additionally, definition of “DOCX” was provided^{See OJ EPO 2020, A45 for the definition.} enabling users to benefit from further reduction of filing fee.^{Reduction was envisaged in decision of the Administrative Council published in OJ EPO 2019, A3.}

4.2. Oral proceedings and introduction of videoconferences

Essential part of the procedure before the EPO is respecting parties right to be heard embodied inter alias by a possibility to have oral proceedings. In this regard, a further measure taken by the EPO to prevent spreading of Covid-19 is the possibility (requirement) to conduct oral proceedings by videoconference. 

Oral proceedings at the EPO’s premises are still possible upon request of the parties. During such oral proceedings strict sanitary measures will be put in place and include physical distancing and the requirement of wearing a face mask.

Oral proceedings by videoconference allow for remote connection of members of a division from different locations as well as participation of applicants and representatives from different locations. Oral proceedings held by a videoconference are equivalent to oral proceedings held at the EPO’s premises. Submissions during oral proceedings and interviews preferably are to be made by e-mail.

There are differences in manner of conducting of oral proceedings by videoconference at different stages of procedure. This will be summarised further below.

Examination

In examination, oral proceedings are to be held by videoconference unless there are serious reasons against it, e.g. taking of evidence.^{See decision of the President of the EPO published in OJ EPO 2020, A39 and notice published in OJ EPO 2020, A40.} Since oral proceedings are not public, no special arrangements are needed for the members of the public.

Additionally, interviews in examination are also to be held by videoconference.

Opposition

The EPO initiated a pilot project for oral proceedings by videoconference before opposition divisions.^{See OJ EPO 2020, A41 and A42.} The pilot project will run until 30 April 2021. At the same time, regular oral proceedings were postponed until 14 September 2020.

The requirement for participation in this project is agreement of all parties and the opposition division. Admission of the public is possible upon giving prior notice to the EPO.

Similar to examination, taking of evidence may not be made during oral proceedings held by a videoconference. Although not specifically mentioned in the notice, it is also expected that simultaneous translations may not be possible. For these cases, oral proceedings will be held at the EPO’s premises.

Appeal

Videoconferences were also introduced into appeal proceeding.^{See communication Oral proceedings before the Boards of Appeal – restrictions due to the coronavirus (COVID-19) pandemic and introduction of video-conferencing technology in appeal proceedings dated 15 May 2020.} Again, the requirement is consent of all parties for conducing oral proceedings by a videoconference.

Members of the public wishing to participate in oral proceedings held by a videoconference will, however, have to travel to the premises of the Boards of Appeal in Haar, where after passing screening questionnaire, they will be allowed to use a dedicated room equipped for participation in the videoconference. Also, members of the public will have to give a prior notice to the EPO that they are planning to attend as there will be a limited number of seats available.

There is no information on whether taking of evidence will be possible while conducting oral proceedings by videoconference in appeal proceedings.

5. Reference to information regarding postponement in the proceedings before the WIPO, the USPTO and the JPO

The Covid-19 situation affected not only proceedings before the EPO but also other major jurisdictions were affected.

The World Intellectual Property Office (WIPO) released a statement which suggests interpretation of Covid-19 disruption as equal to force majeure and also recommended receiving offices to waive late payment fees.^{https://www.wipo.int/pct/en/news/2020/news_0009.html, accessed on 16 May 2020.} The WIPO has also made available the COVID-19 IP Policy Tracker to inform about measures taken by IP offices around the world to prevent disruption caused by Covid-19.^{https://www.wipo.int/covid19-policy-tracker/#/covid19-policy-tracker/ipo-operations, accessed on 16 May 2020.} It is advisable to consult said tracker for information regarding payment of annuities in every country.^{For example, deadlines for payment of annuities in Austria are not extended while said deadlines are extended in the UK.}

The Japanese Patent Office (JPO) prepared information on handling of procedures affected by Covid-19 and provided certain measure to help applicants.^{https://www.jpo.go.jp/e/news/koho/saigai/covid19_procedures.html and https://www.jpo.go.jp/e/system/laws/rule/other/patent/hatumei_reigai.html, accessed on 16 May 2020.} The JPO offers a relief period of 14 day for completing of procedures affected by Covid-19 situation.^{For overseas residents this period is either 1 or 2 months, depending on type of procedure.}

The United States Patent and Trademark Office (USPTO) also released notices regarding Covid-19.^{https://www.uspto.gov/coronavirus, accessed on 16 May 2020.} Notice available at the USPTO webpage informs that extension covers period from 27 March 2020 to 31 May 2020.^{https://www.uspto.gov/sites/default/files/documents/Patents-Notice-CARES-Act-2020-04.pdf, accessed on 17 May 2020.}

6. Summary

The Notice from the European Patent Office dated 15 March 2020 concerning the disruptions due to the Covid-19 outbreak in its pre-released version had unclearly defined date of commencement of extension. On the other hand, the published and, thus, binding version was clear.

The extension provided by the notice is applicable to PCT applications but only in the regional phase before the EPO.

The EPO introduced the requirement to conduct oral proceedings by a videoconference in examination proceedings, and the possibility to do so in opposition and appeal proceedings. Electronic filing now supports “DOCX” files.

The WIPO offers the COVID-19 IP Policy Tracker for tracking measures taken in different countries to prevent disruption caused by the virus. The JPO announced a relief period for completing procedures and the USPTO announced extension of periods.

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