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The “New Normal” for Intellectual Property Offices

After widespread disruption during the early stages of the COVID-19 pandemic, intellectual property offices are tentatively moving towards a ‘new normal’. Complete closures and blanket deadline extensions are becoming much less common, with intellectual property offices around the world introducing innovative ways of assisting intellectual property owners to recover from the impacts of strict lockdowns.

The general extension of time limits at the European Patent Office (EPO) ended on 02 June 2020, but the EPO continues to assist applicants facing difficulties due to COVID-19. For example, renewal fees due on or after 15 March 2020 can now be paid until 31 August 2020 without penalty. The deferment of expenses until late summer will assist businesses of all sizes to manage their cash flow at a time of reduced income for many.

The much-discussed increase in videoconference proceedings at the EPO also offers benefits to applicants large and small. During examination, videoconference oral proceedings have now become the norm, eliminating the cost of travelling to proceedings at the various offices of the EPO. Additionally, with videoconference proceedings, applicants can easily accompany their representative at proceedings from their own home or office. As such, where it would be beneficial for an applicant to attend proceedings, this can be conveniently arranged.

Furthermore, the ability to conduct oral proceedings by videoconference during opposition and appeal proceedings, while more limited, also offers parties new routes to manage their patent portfolio at a reduced cost. While the EPO expanded the use of videoconference proceedings in response to the COVID-19 pandemic, these changes look set to become permanent additions for the benefit of all parties.

The EPO is not alone in innovating to assist the owners of intellectual property rights. The United States Patent and Trademark Office (USPTO) has waived selected fees for applicants who have been disadvantaged by the COVID-19 pandemic and has extended the deadline for payment of others. Additionally, the USPTO has introduced a fast track examination scheme for small and micro entities to assist small businesses with pending patent applications gain rapid protection for their innovations.

More generally, many patent offices have transitioned away from paper correspondence during the COVID-19 pandemic, moving towards online filing platforms. Electronic signatures have become more widely accepted, although not at the EPO, and fewer intellectual property offices require the original versions of executed documents. These developments are undoubtedly positive news for the holders of intellectual property rights, easing the filing of applications around the world and the transfer of intellectual property rights between parties after an acquisition, sale or merger.

As the immediate response to the COVID-19 pandemic moves towards a longer-term plan for the future, intellectual property offices, which by their very nature deal with innovation, are innovating themselves to help applicants and intellectual property owners to manage their portfolios through these uncertain times.

We will keep you up-to-date of the latest developments. Contact Tom Gibb for more information:

Thomas Gibb