In these unprecedented times, patent deadlines are understandably a much lower priority than they were a couple of months ago. Even those trying to meet their deadlines may find themselves unable to do so with the various limitations imposed by home working and staff shortages. In recognition of this, the EPO has extended time limits expiring on or after 15 March 2020 to 17 April 2020 (see), and it seems likely that further extensions will be announced shortly. However, the extension only applies to “time periods” as defined by the EPO rules and is not universally applicable to all EPO deadlines.
“Periods” are generally set by EPO Communications or the EPC itself. Typical examples include the deadlines for filing responses to Examination Reports or for providing claims translations in response to the issuance of a proposed text for grant. There are, however, a number of significant EPO deadlines that are not “periods”. For example, we often talk colloquially about the deadline for filing a divisional application. More correctly, a divisional application can only be filed while the parent is pending. Once the parent has granted, the right to file a divisional application is lost. This is not a “period” as defined by the Rules and therefore the extension of time announced by the EPO does not apply.
EPO Oral Proceedings at the Board of Appeal are canceled until 17 April, but Oral Proceedings scheduled at the Examining and Opposition Divisions may still go ahead if videoconference facilities are available. The “final deadline” to file written submissions in Examination and Opposition proceedings has an unusual status.
There is no requirement to file written submissions, and no rights will be lost if no submissions are not filed. The deadline for filing written submissions therefore does not appear to be a “period” for the purposes of the EPO rules, and the extension of time does not seem to apply. Despite the EPO’s announcement, any written submissions filed after a “final deadline” set out in a Summons to Oral Proceedings are still, therefore, likely to be considered late filed. The EPO has a discretion as to whether or not such “late filed” submissions are admitted into the proceedings. Given the current circumstances that discretion is likely to be applied generously. However, exercise of that discretion cannot be guaranteed. Hence written submissions should still, if at all possible, still be filed before the original deadlines as set out in any Summons to Oral Proceedings.
The position with regard to renewal fees is somewhat unclear.
Extensions of time relating to the payment of renewal fees was discussed in EPO Board of Appeal Decision J 4/91 which classified the deadlines for payment of renewal fees as a "due date" and specifically noted that “a due date is not a time limit which can be extended”. The decision went on to state that “A further, essential, precondition for this Rule [relating to extensions due to disruptions with communications with the EPO] to apply at all must be that an attempt at payment or filing is actually made around the time of the dislocation”. This suggests that the EPO extension does not apply to the payment of renewal fees unless a serious attempt has been made to pay the renewal fee has been made. However, renewal fees can be paid late with a surcharge during the six-month “additional period” after the normal payment deadline. This period – the period for late payment with surcharge – does appear to be a period within the meaning of the EPO rules and so the EPO’s extension could apply. We strongly advise, however, that in view of this uncertainty every attempt is made to pay renewal fees on time.
Finally, it is important to remember that the EPO does not have a grace period, and so new filings must still be made in a timely manner before any public disclosure of the invention. Similarly, care should be taken with new filings claiming priority. Since loss of priority can be fatal, we advise meeting the 12-month priority filing deadline as normal, if at all possible.
For further advice, please contact your European representative.
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