Courts and IP offices around Europe have adapted their procedures as a result of Covid-19 and the associated social distancing measures which have been implemented.
In a series of articles, experts from our patents, litigation, transactions and trade mark teams have reviewed how the new approaches will impact businesses and provide practical tips for dealing with these changes.
Changes in EPO Practice
The steps taken by the EPO to cope with the current situation will have long-lasting effects for its users. Going forward, the EPO President decided on 1st April 2020 that it is the default option to conduct oral proceedings before examining divisions by videoconference. Under a pilot project announced by the EPO President on 14th April 2020, opposition division hearings can also be held by videoconference with the parties’ consent. In light of these changes, the Boards of Appeal has now followed suit and announced on 25th May 2020 that video conferencing technology is also available for the conduct of oral proceedings before the Boards of Appeal.
The EPO has decided to postpone, until further notice, all opposition oral proceedings scheduled until 14th September 2020. During this period, oral proceedings will take place only if either they have already been confirmed to take place by videoconference or will be held by videoconference with the parties’ consent under the pilot project.
The EPO has created a webpage that addresses frequently asked questions concerning the conduct of opposition oral proceedings and provides training material including a 55-minute video recording of a mock opposition with Chris Mercer, consultant and former partner at Carpmaels & Ransford, in the role of the patent proprietor.
Carpmaels & Ransford partner Cameron Marshall has shared his recent experience on conducting opposition oral proceedings by videoconference at the EPO.
The EPO’s Boards of Appeal have resumed oral proceedings, to a limited extent, at their premises in Haar near Munich. Parties are requested to confirm that they expect to be able to attend in person and that they do not anticipate being affected by travel restrictions. Parties and representatives are asked to complete a screening questionnaire in advance of their arrival. Any person replying to one of the questions in the affirmative will be denied access to the Boards of Appeal premises. The responsible board will be informed accordingly and will decide whether the oral proceedings can be held without that person or whether they will need to be postponed. Parties are requested to consider whether all representatives and accompanying persons need to attend. Oral proceedings can be conducted by videoconference if the concerned parties agree. More details can be found in the recent communication on the EPO’s website.
Effects on UK IP litigation
Unlike many European jurisdictions, the civil courts in the UK remain operational through telephone and videolink hearings. In-person hearings, with the necessary safety measures to prevent Covid-19 transmission, are still available where absolutely necessary. As of Friday 27th March 2020, Her Majesty’s Courts and Tribunals Service said that, across all UK courts, “nearly 500 audio hearings [had been] completed” including “a 5 day trial in the court of protection.”
Electronic execution of IP documents
With many in Europe now working remotely, new approaches need to be taken for tasks previously carried out in the office or in-person. In this article we clarify the position on digital execution of documents in the UK; examine the signature requirements for documents to be recorded at the UKIPO or EPO; and consider the options for obtaining notarised and/or legalised documents for recordals at IP offices (where this is required).
Trade marks and designs in the time of Coronavirus
The UK Intellectual Property Office (UKIPO) and EU Intellectual Property Office (EUIPO) already offer most services electronically and so are able to operate largely as normal. Nevertheless, to reflect the disruption caused by Covid-19, both offices have introduced a period of adjustment.
We will provide further information about changes to procedures as the situation develops. In the meantime, if you would like additional information, please get in touch with your usual contact at Carpmaels & Ransford.
