Outbreak of Coronavirus: Impact on proceedings before the European Patent Office and the EPC member states

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As of today, February 28, no specific information relating to the worldwide outbreak of the Coronavirus has been issued by the European Patent Office (EPO). Nevertheless and because of this, while expressing solidarity with all people involved and wishing all our readers health, we would like to remind applicants, proprietors and opponents of European patents that some law provisions on time limits may be particularly useful for any party impacted by the Coronavirus outbreak.

In particular, if an EPO time limit cannot be observed due to lockdowns and dislocations caused by the Coronavirus, the party concerned may consider, as the case may be:

• requesting an extension of a running time limit set by the EPO, such as the four month-time limit generally set to respond to an Office Action, up to six months. No evidence or reasons are necessary in support of this request (Rule 132(2) European Patent Convention (EPC));
• requesting an extension of such a running time limit to a total period of more than six months. In this case, however, reasons, such as illness or dislocation of the concerned party expressly due to the Coronavirus, have to be submitted to the EPO (Rule 132(2) EPC);
• requesting an extension of an already expired time limit set by the EPO if the time limit was not observed due to the outbreak of the Coronavirus and a specific hindrance due to the Coronavirus on any of the ten days preceding the day of expiry of a period (Rule 134(5) EPC). An explanation of the circumstances and this hindrance should be provided in the request;
• in case of loss of rights, where available, requesting further processing under Art. 121 EPC within two months of a EPO communication concerning the loss of rights (Rule 135 EPC), or re-establishment of rights under Art. 122 EPC within two months of the removal of the cause of non-compliance with the unobserved time limit, but at the latest within one year of expiry of the unobserved time limit  (Rule 136 EPC), if all due care required by the circumstances has been exercised and if this may be proved by evidence. Re-establishment of rights under Art. 122 EPC may be requested, for example, for a renewal fee due to the EPO not paid within the six-month grace period, upon payment of the renewal fee and an additional fee as well as compliance with the all due care requirement as set by 122 EPC and relating case law and with the time limits as set by Rule 136 EPC; and
• in case of impossibility to attend oral proceedings, requesting to postpone them if the party concerned is specifically affected by the outbreak of the Coronavirus, for example if the party is located in China and is affected by the general dislocation due to the outbreak of the Coronavirus or his/her representative cannot obtain instructions from the party because of the outbreak of the Coronavirus. An explication of the way the party is specifically affected is necessary.

With reference to the translation of a granted European patent to be filed in one or more EPC member states, the provisions, and thus the impact of any late filing thereof, differ sensibly depending on the national law of the state at issue. We remind that for all states that are party to the London Agreement that do not require any translation, such as Germany, Great Britain and France, no action is necessary after grant, apart from the payment of the renewal fees with the respective national patent office (the appointment of an address for service is always recommended, including in these countries, but is not mandatory to obtain or maintain protection). However, for all states which still require a translation of the claims or the whole patent into the local language and the payment of a fee within a three month time limit from the mention of grant of the European patent, the provisions on non-observance of this time limit depend on the respective national law. While in most states the time limit for filing the translation is not extendable, in some states, such as in the Czech Republic, Estonia, Hungary, Portugal, Romania, Slovakia, and Spain, an extension of this time limit may be requested on payment of a surcharge. An extension is also available for submitting the translation in Turkey, but only if the fee for publication and the surcharge have been paid in advance, within the initial period of three months from the mention of grant. In Italy, further processing is available: a request for further processing, accompanied by proof of payment of the requisite fee, must be filed within two months of expiry of validation deadline. The national laws of the EPC member states also govern the filing of powers of attorney. In this regard, we observe that Greece is the only EPC member state where the power of attorney must be filed within the three-month period. In the other states requiring a power of attorney, an extension of time is possible.

For all readers needing specific advice and help on any of these procedures, you may contact our Paris office directly.