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18 May 2020
In the context of the current health crisis, the Government has issued provisions postponing practically all statutory procedural time-limits.
Version updated on 18 May 2020
The state of health emergency entered into force on 24 March 2020 for a duration of two months, namely until 23 May at midnight (see here the debates around it and the Conseil d'Etat's converging position (Ordinance No. 439903 of 10 April 2020) and that of the Minister of Justice (Circular of 17 April 2020). Ordinance No. 2020-306 of 25 March 2020[1], amended by Ordinance No. 2020-427 of 15 April 2020[2] and clarified by two circulars of 26 March 2020 and 17 April 2020 provides, in substance, that the time-limits that expire between 12 March 2020 and one month after the end of the state of health emergency (the "legally protected period") are postponed, that is to say will resume running for the remaining statutory time-limit required to act, up to a limit of two months.
The Law of 11 May 2020[3] extends the state of health emergency until 10 July 2020 inclusive. Nonetheless, the Government considered that the economic activity resumption due to the lockdown ease as of 11 May, now allows economic actors to comply with the acts and formalities prescribed by law. It therefore decided, through Ordinance No. 2020-560 of 13 May 2020[4], to replace the sliding reference date based on the end of the state of health emergency with the fixed date of 23 June 2020 at midnight, as the end of the legally protected period.
As a result, and subject to further amendments, the time-limits which were supposed to lapse between 12 March and 23 June 2020 will start running again from that date and lapse by 23 August 2020 at the latest. In this respect, a distinction should be established between instances where the initial time-limit was two months or more and instances where the initial time-limit was less than two months. In the first instance, the time-limit will lapse on 23 August 2020. In the second instance, the time-limit will lapse earlier, once the initial time-limit has expired (e.g. on 23 July if the initial time-limit was one month)[5].
The abovementioned Ordinance[6], which is general in scope, applies in particular to the civil time-limits provided for by French law on intellectual property[7].
Simultaneously, intellectual property offices and courts are adapting their organizations and/or postponing time-limits for administrative and judicial proceedings.
Despite the lockdown ease, INPI maintains the closure of its sites to the public beyond 11 May 2020 and at least until 2 June 2020. The examination, issuance of industrial property titles and dissemination of the National Register of Commerce and Companies (RNCS) by the INPI (French National Institute of Intellectual Property) are still being carried out remotely.
Online services remain available for all of the following procedures: filing of patents, trademarks, designs and models, e-Soleau; renewal of trademarks; payment of patent annuities; registration; geographical indications, etc. Thanks to procedures' dematerialization, INPI continues to examine and issue industrial property titles through working remotely. Until at least 2 June 2020, official copies of documents are provided only in PDF format with authentication by electronic signature. Moreover, despite the health crisis, INPI was able to implement within the planned schedule, the reforms that came into force on 1 April 2020: the introduction of an administrative procedure for trademark invalidity or revocation and of a procedure to oppose a patent.
By decision of 16 March 2020, the INPI had decided that the time-limits subject to its discretion, which had not expired as of 16 March 2020, were all (with the exception of trademark opposition proceedings) extended to 4 months. However, Decision No. 2020-33 of 26 March 2020 revoked these initial provisions, due to the intervention of the aforementioned Ordinance of 25 March 2020, which therefore also applies to the time-limits set by the INPI. According to a press release from the INPI, the postponement thus concerns the time-limits for opposing a trademark, renewing a trademark, extending a design and benefiting from the corresponding grace period, filing an administrative or judicial appeal, replying to a notification from the INPI, paying a patent annuity, etc.
On the other hand, the priority periods for an international extension, the payment periods for filing a patent application and the periods for filing a supplementary protection certificate (which are subject to supranational provisions) are not concerned.
The EUIPO (European Union Intellectual Property Office) ensures that, as far as possible, its business continues as usual.
In other words, trademark and design applications continue to be received, examined and published, and the EUIPO continues to send communications and set deadlines. Bulletins continue to be published.
By decision of the Executive Director of EUIPO No. EX-20-3 of 16 March, all time limits expiring between 9 March 2020 and 30 April 2020 affecting all parties before the Office have been extended until 1 May 2020 (i.e. in practice until Monday 4 May 2020, given that 1 May is a public holiday). A new decision (No. EX-20-4) published on 29 April 2020 extends until 18 May 2020 all time limits expiring between 1 May 2020 and 17 May 2020. On 15 May 2020, the Office indicated that there would be no further extensions. In order to assist users facing persistent difficulties due to the Covid-19 pandemic, the Office issued a note summarizing the relevant procedural provisions on time-limits: extension of time-limits in adversarial and non-adversarial proceedings, suspension of proceedings, restitution in integrum.
The EPO (European Patent Office) reports that its search, examination and opposition divisions continue to operate.
The Boards continue to issue written decisions, notifications and summons to oral proceedings.
With regard to examination proceedings, a Decision of the President of the EPO, dated 1 April 2020, established the principle that oral proceedings are now held in the form of videoconferences before Examining Divisions. This rule applies to all oral proceedings for which the summons is served on or after 2 April 2020, as well as to those served before that date and which are to be held after 17 April 2020 or for which the applicant has agreed to be held by videoconference.
With regards to proceedings before Opposition Divisions, a pilot project also allows, on a voluntary basis, for oral proceedings to be held by videoconference. With the exception of proceedings held by videoconference already confirmed, the EPO is postponing until further notice the oral proceedings scheduled until 14 September 2020. As of now, it intends to maintain the oral proceedings scheduled to be hosted in the EPO's premises, after 15 September 2020,
As from 18 May 2020, Appeal chambers shall resume the holding of oral proceedings in their premises, to a limited extent. Oral proceedings before the Appeal chambers may also be conducted by videoconference, with the agreement of the interested parties.
Finally, deadlines expiring on or after 15 March 2020 were initially extended to 17 April 2020 and then to 4 May 2020. These deadlines are subject to a further extension until 2 June 2020.
In two communiqués of 16 and 17 March 2020, the WIPO (World Intellectual Property Organization) announced that it continues:
In addition, WIPO indicated in a communiqué of 9 April 2020, on PCT patent applications, that it considered the current pandemic to be a case of force majeure which could be invoked in the event of failure to comply with a time-limit before the Office. In a communiqué of 21 April 2020 on international trademark applications, it indicated that it would receive favorably any request submitted under Rule 5 of the Regulations (request to excuse a failure to meet a time-limit) referring to difficulties relating to Covid-19, without requiring the applicants, holders or offices to provide proof of such difficulties. In general, WIPO has also compiled relevant information on the remedies available against disruption or failure to meet a time limit for the PCT, Madrid and Hague systems.
INPI maintains a table[8] of Covid-19-related provisions taken by various foreign national intellectual/industrial property offices (the latest version on line is dated 29 May 2020). This table covers thirty-five countries as well as the African Intellectual Property Organization (OAPI) and the African Regional Intellectual Property Organization (ARIPO).
Since Monday 16 March 2020, all civil or commercial cases have been postponed until further notice, except for litigation considered essential (criminal hearings in particular) which does not include intellectual property litigation.
Hearings of cases pending before the specialized chambers of the Paris Judicial Court (the 3rd), or the Paris Court of Appeal (division 5), applications for seizure for counterfeiting, the assignations en référé (summons for urgent proceedings), etc., are thus postponed until further notice.
The files that were to be examined at these hearings have been or will be referred to a waiting list. The parties will be informed of the date of such referral as soon as the situation returns to normal.
Ordinance No. 2020-304 of 25 March 2020[9] provides that for most civil cases, the courts may decide that the proceedings will take place without hearings. Parties have 15 days to oppose such a decision, except for certain procedures (notably summary proceedings). On 27 April and 29 May 2020, the President of the Paris Judicial Court issued orders stating that in most cases where the pleadings were scheduled for the 16 March - 10 July period, the judgment will be rendered without an oral hearing, failing opposition by a party, thereby generally resulting in the postponement of the hearing to a later date. Other Ordinances taken by the President of the Paris Judicial Court dated 7 and 29 May 2020, specified that summary proceedings regarding intellectual property matters, to be heard at hearings scheduled between 17 March and 1 June, will be decided on without any oral submission, and that hearings scheduled between 2 June and 10 July 2020 may be decided without oral submission. Since 11 May 2020, it is possible to file submissions for infringement seizure in court.
These are dealt with without a hearing, as the magistrate reaches out to the counsel by mail or telephone if he deems it necessary to obtain further information. As regards the first president of the Appeal Court, he issued an Ordinance on 23 April, indicating that pleadings scheduled for the 16 March - 24 May period would be processed without hearings, subject to one of the party's objection.
Deliberations scheduled during this period will be extended to a date to be communicated at a later date.
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[1] Ordinance No. 2020-306 of 25 March 2020 on the extension of time limits during the period of health emergency and the adaptation of procedures during the same period.
[2] Ordinance No. 2020-427 of 15 April 2020 laying down various provisions on time limits for dealing with the covid-19 pandemic.
[3] Law No. 2020-546 of 11 May 2020 extending the state of health emergency and supplementing its provisions.
[4] Ordinance No. 2020-560 of 13 May 2020 setting the time-limits applicable to various procedures during the state of health emergency crisis.
[5] Due to the complexity of the rules on computing time-limits, there could be an uncertainty margin of one day, as the additional time-limit may start running from the day after the end of the legally protected period.
[6] However, th Ordinance excludes from the scope of its provisions, time limits and measures resulting from the application of rues of criminal law and criminal procedure, as well as some other specific time limits not related to intellectual property matters.
[7] With the exception of those resulting from international agreements or European texts.
[8] Available here
[9] Ordinance No. 2020-304 of 25 March 2020 adapting the rules applicable to judicial courts ruling in non-criminal matters and to co-ownership management contracts.
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