The impact of the public health emergency on intellectual property rights and contracts

* This date is subject to change if the public health emergency, which ends on 24 May 2020, is extended or ended early by decree.  

In detail

I. The French courts

• Extension of litigation deadlines

Since Monday, 16 March 2020, business continuity plans have been activated in all jurisdictions to prevent the spread of the virus. The courts are therefore closed, except for the handling of essential litigation.

As an extension of this measure, the government has issued Orders Nos. 2020-304 and 2020-306 of 25 March 2020, which aim in particular to introduce flexibility into the rules governing civil procedure during this particular period. The terms and conditions of application of these orders were then clarified by two circulars from the Minister of Justice on 26 March 2020. 

Pursuant to these texts, the deadlines for initiating action are extended, if they are due to expire during the Period.

In practice, this means that all time limits for initiating action, filing brief before courts, filing appeals, and more generally for any procedural step which if not taken could produce legal effects (sanction, limitation, forfeiture of a right, etc.), are extended. 

In addition, if an action cannot be carried out during the Period, it can be performed at the end of the Period, within the period normally provided for, and at the latest within two months following the end of the Period.

Parties can nevertheless stick to the time limits initially set, if they so wish. Here, it will be necessary to adapt to the arrangements set up in each jurisdiction.

For example, some courts, such as the civil chambers of the Paris court have announced that messages sent through RPVA (private professional network for lawyers and French courts), which enable communication with the courts and the exchange of briefs between the parties, will not be processed during this period. 

As a result, the procedures for the exchange of briefs and exhibits have been simplified during this Period. These documents may now be communicated by any means, provided that the court is able to ensure that the adversarial process is followed (e.g. by means of official e-mails between lawyers). 
 

• The fate of measures which are due to expire during the public health emergency

Article 3 of the Order lists the administrative and jurisdictional measures which are automatically extended for two months, i.e. until 24 August 2020*. This concerns, in particular, protective measures and prohibition or suspension measures which were not pronounced as a sanction and which expire during the Period. 

The Order gives the court or the competent authority the possibility of adjusting, on a case-by-case basis, measures that were ordered before 12 March 2020 and which do not benefit from this automatic deferral.

II. The INPI

Order No. 2020-306 of 25 March 2020 provides that all deadlines falling during the Period are postponed to:

• one month after the end of this period if the initial time period was one month, and 
• two months after the end of this period if the initial time period was two months or more.

This Order applies to all time limits provided for in the Intellectual Property Code, except those resulting from international agreements or European legislation¹.

This extension thus concerns the deadlines for paying a patent annuity, renewing a trademark or design, responding to a notification from the INPI or filing an opposition to a trademark.

In addition, by way of example, all opposition deadlines that were due to expire between 12 March and 24 June 2020 are extended to 24 August 2020*. 

Pursuant to Article 3 of the Order, the same rule applies to the time limits for the resumption of opposition proceedings after a suspension. 

Thus, deadlines that would have expired during the public health emergency will all be postponed to the same dates (24 July 2020 and 24 August 2020*). This is why we recommend that you do not wait until these new deadlines have expired to continue proceedings or carry out steps that can be dealt with now, in order to avoid overburdening the Office at the end of this period. 

The INPI has also communicated on its website to this effect, reminding everyone that its teams are mobilized and teleworking and continue to process requests made through the online portal as usual.  

¹ Time limits governed by supranational provisions such as priority periods for an international extension, deadlines for payment for the filing of a patent or deadlines for filing a supplementary protection certificate are therefore not covered by this extension.

III. The EUIPO

By Decision No. EX-20-3 of 16 March 2020, the Executive Director of EUIPO extended all the time limits expiring between 9 March 2020 and 30 April 2020 to 1 May 2020, i.e. de facto until Monday, 4 May 2020, Friday, 1 May 2020 being a public holiday. 

This extension is automatic and with immediate effect, which means that no formalities are required for its application.

The EUIPO issued a statement on 19 March 2020 providing clarification on the extension. 

The Office stated that all procedural deadlines are covered by this extension, whether they were set by the Office (notification, observations, etc.) or fall within the time limits provided for in the European Regulations on Industrial Property (opposition, renewal, etc.). Time limits provided for in international treaties are also covered by this extension. This concerns, for example, the priority periods relating to the filing of a European Union trademark.

It is important to note that this extension of deadlines only concerns proceedings before EUIPO and does not cover, for example, appeals before the General Court.

Like the INPI, the EUIPO teams continue to work during this period. The Office points out that ongoing proceedings continue to be examined in the regular manner.

IV. The WIPO

In a notice of 19 March 2020 (7/2020), supplemented by a communiqué of 20 March 2020, WIPO indicated that it would ensure the continuity of the operation of its various departments and reminded the offices and Member States that they could pay their monthly and annual fees according to the usual schedule.

The Office nevertheless provides for the automatic extension of deadlines in the event that an intellectual property office of a contracting party is not open to the public. Deadlines expiring during this period will be extended to the first subsequent day following the reopening of that office. 

In addition, due to the suspension of postal service between Switzerland and a number of countries and to the need to comply with guidance by public health authorities, the WIPO indicated that it is not able to send or receive communications by postal mail until further notice. 

WIPO will continue to send communications under the Madrid System to applicants, holders and representatives who have opted to receive electronic communications by providing an e-mail address to WIPO. Should the Office not be able to notify an irregularity by electronic means, the period to remedy this irregularity will not begin until the applicant, holder or representative provides an e-mail address to WIPO.

V. Contracts

Order No. 2020-306 of 25 March 2020 also has consequences in contractual matters, since it provides for the suspension of time limits relating to breach of contracts and their termination and cancellation, until 24 June 2020*.

In practice, this means that:

• Clauses that are intended to sanction the breach of an obligation within a given time period (penalty payments, penalty clauses, termination clauses, etc.) will be deemed not to have begun to run or to produce their effects if this time period expires during the Period.  
  
  These clauses will resume their application within a period of one month following the end of the Period, i.e. as of 24 July 2020*.
  
  As a result, breach of contract occurring between 12 March and 24 June 2020* cannot be sanctioned if the contracting party then performs its obligation before 24 July 2020*. The period between 24 June and 24 July, which is quite uncertain at the moment, will have to be carefully examined. 

• Penalty payments and the application of penalty clauses which took effect before 12 March 2020 are also suspended during this Period. They will start running again on 24 June 2020. . 

• Deadlines for termination or cancellation expiring during the Period will be extended until 24 August 2020* (e.g. license agreements which must be terminated, before tacit renewal for two more years, within a set time period expiring during the Period, may be terminated until this new date).

Should difficulties in contract performance persist following the public health crisis, it will always be possible to resort to the mechanisms provided for under ordinary law (force majeure and unforeseen circumstances in particular). It will then be necessary to make assessments on a case-by-case basis, depending on the situations encountered.