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The adjustment of time limits in intellectual property administrative and court proceedings

24/03/2020 - Articles and publications

The adjustment of time limits in intellectual property administrative and court proceedings

 

The health context related to the spread of the Covid-19 epidemic led the intellectual property offices as well as French and European courts to adjust their functioning so as to take into account the constraints experienced both by their employees and by the individuals and companies which are parties to proceedings pending before them.

In addition, Article 11 (2) of the “Emergency Act to face the Covid-19 epidemic” voted on March 22, 2020 by the French Parliament empowered the government to take ministerial orders so as to (i) adjust time limits and proceedings before administrative authorities (§a), and (ii) “adapt, stop, suspend or extend time limits relating to nullity, lapse, foreclosure, statutes of limitations, unenforceability, loss of a right […]” (§b) – which the government did in the Order No. 2020-306 of March 25, 2020.

This complex framework makes it necessary to draw up an inventory of all these measures (which are not similar before all the IP offices and courts), so as to ensure an effective monitoring of the proceedings pending, and those to be introduced, before these courts and offices.

1. The time limits adjustments ordered by the French government in its Order No. 2020-306 of March 25, 2020

First it must be specified that this order, taken by the French government, of course only applies to time limits provided for by French law, i.e. the French Intellectual Property Code and the French Civil Procedure Code as far as intellectual property matters are concerned. It does not apply, therefore, to any time limit arising under international agreements or EU law (e.g. EUTMR No 2017/1001).

Pursuant to this order, all such time limits pertaining to “any act, lawsuit, formality, registration, declaration, notification or publication provided for by law under penalty of nullity, lapse, foreclosure, expiry of a statute of limitations, unenforceability, expiration of a right or action, automatic withdrawal, application of a specific regime or termination of a right” that were meant to expire between March 12, 2020 and one month after the end of the state of health emergency (hereafter the “Suspension Period”) shall be extended as follows:

  • The time limits whose initial duration was 1 month shall expire 1 month after the end of the Suspension Period (e.g. if the state of emergency ends on May 5, 2020, those time limits will expire on July 5, 2020);
  • And the time limits whose initial duration was 2 months or more shall expire 2 months after the end of the Suspension Period (e.g. if the state of emergency end on May 5, 2020, those time limits will expire on August 5, 2020).

In practical terms, before the French Industrial Property Office (INPI), those extensions will apply to time limits for opposing French trademark applications, renewing French trademarks and designs, paying French patents and trademarks renewal fees, etc.

And before French courts, those extensions will apply to time limits for docketing cases, filing appeals, serving court decisions, applying penalty payments, etc.

2. The time limits adjustments decided by the intellectual property offices in their functioning

Before the French Industrial Property Office (INPI), the following rules apply (as per a decision of the General Director of the INPI dated March 16, 2020, supplemented by a second decision dated March 26, 2020):

  • The time limits provided for under the French Intellectual Property Code (notably those pertaining to renewals, as well as all time limits in opposition proceedings), are extended as set forth in Order No. 2020-306 of March 25, 2020, as explained under § 1. above; and
  • The time limits laid down by the INPI in trademarks and designs proceedings that were still pending on March 16, 2020 are extended for a period of 4 months (it being specified that, throughoutthe whole duration of this health crisis, all the time limits laid down by the INPI in its notifications to the parties will be for a 4-month period).

Before the European Union Intellectual Property Office (EUIPO), all time limits expiring between March 9 and April 30, 2020 (included) are automatically extended to May 1, 2020, that is to say to May 4, 2020 since that will be the first business day after May 1 which is a public holiday (as per a decision of the EUIPO Executive Director dated March 16, 2020).

Before the European Patent Office (EPO), all time limits expiring as from March 15, 2020 are extended until April 17, 2020 (as per an EPO announcement dated of March 15, 2020).

And lastly, the World Intellectual Property Organization (WIPO) has announced on March 16, 2020 that the “processing of applications filed via WIPO’s Global IP Services has not been affected by the Covid-19 outbreak“.

3. The time limits adjustments decided by French and European courts in their functioning

In addition to the time extensions resulting from Order No. 2020-306 of March 25, 2020 described under § 1. above;

The 3rd Chamber of the Civil Court of Paris (Tribunal judiciaire de Paris), specialized in intellectual property and which has exclusive jurisdiction in France over EU trademarks as well as patents, has indicated that:

  • All civil hearings are cancelled as from March 16, 2020 (including hearings in summary proceedings and withdrawal summary proceedings, as well as procedural and pre-trial hearings). The cases that should have been examined during those hearings are or will be postponed to later dates which the parties will be informed of when the functioning of the Court has returned to normal. In the meantime, no further action is required from any party.
  • All the rulings that were to be issued as from March 17, 2020 are postponed to later dates to be communicated later.
  • New dates for enrollment of writ of summons will be issued, and summary proceedings as well as search and seizures will be authorized anew as soon as the functioning of the Court has returned to normal.

Before the Court of Appeals of Paris (Cour d’appel de Paris), all procedural hearings are postponed (except for “vital hearings”). Pleading hearings that were scheduled up to April 30, 2020 are also postponed – except for hearings in summary proceedings and those relating to motions for urgent matters – and the cases at stake will be rescheduled as from September 28, 2020.
It must be noted that all rulings that were to be issued as from March 16, 2020 are postponed to the week of June 15, 2020.

The same applies to proceedings pending before the Civil Court of Nanterre (Tribunal Judiciaire de Nanterre), examined by the Court of Appeals of Versailles (Cour d’appel de Versailles) on appeal: since March 18, 2020, the Civil Court of Nanterre has only been reviewing “urgent” matters, while all other cases have been postponed until further notice; and all hearings scheduled between March 16 and April 20, 2020 (included) before the Court of Appeals of Versailles are also postponed to later dates which the parties will be informed of “as soon as possible”.

Before the French Supreme Court (Cour de cassation), all time limits are extended until further notice and, as far as civil matters are concerned, all hearings that were meant to take place during the period of containment ordered by the French government will be systematically postponed.

Lastly, and until further notice, the General Court and the Court of Justice of the European Union (CJEU) will only review utterly urgent matters. Nevertheless, in all other cases, it is still required that the parties comply with their procedural deadlines (including appeal deadlines).
The pleading hearings scheduled until March 27, 2020 (as far as the CJEU is concerned) and April 3, 2020 (as far as the General Court is concerned), are postponed to later dates.

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Altana’s IP & Digital Team naturally remains available to right owners to provide any additional information regarding the functioning and the time limits adjustments decided by other French or European offices and courts, to answer any question during this challenging period, and to accompany them in their projects.

 

Contacts :
chebertsalomon@altanalaw.com
fvalentin@altanalaw.com