Pressing pause on your intellectual property: Part two – litigation

This three-part series examines how intellectual property protection can continue in a productive and effective way, during this time of remote working, shifting priorities, uncertainty and change.

The process of protecting intellectual property is, unsurprisingly, dependent on inventors, innovators and lawyers having access to their physical workspace – a lab, a shop floor, a workshop, or a courtroom.

Restricted movement in the UK and beyond makes progressing a legal matter in the usual way, very difficult. In the UK, the courts and tribunals are still open, albeit remotely. The Intellectual Property Office is still operational, again, only digitally. Those circumstances present new challenges for intellectual property owners engaged in disputes.

Pressing pause on litigation

At this testing time, litigants may strongly consider abandoning or settling the dispute. That may be attractive in the short-term, but IP rights can last for decades, if not longer. Any settlement should accordingly consider the long-term consequences of doing so.  Conversely, pushing on prematurely without proper input from inventors, designers or other stakeholders may dilute the investment which has been made so far.

Another, possibly more attractive option, is to extend the lifecycle of the dispute process, effectively “pressing pause” on the legal proceedings. With cashflow for most businesses now stretched, buying time becomes a priority. The effective administration of justice is fundamental to society and so it cannot stop indefinitely, but requests for extensions of time or moratoria on proceedings are likely to be considered favourably until we adjust to the new normal.

Consider:

  • Legal triage whereby matters are ranked according to their potential implications may help. If the business’s long-term objectives remain unchanged, then stability can be found in pursuing those same goals, but over a longer timeframe rather than unravelling everything for a short-term solution.
  • Seek extensions of time, with the co-operation of the other side if possible. Some deadlines have already been extended by courts – see below.
  • Has the other side’s position altered? Perhaps post-COVID-19 economics have changed its motivation or priorities? Does that present a new opportunity to achieve your goal?

Extended deadlines

Trade mark offices and intellectual property courts in the UK and the EU have had to quickly adapt to COVID-19-related disruption. The extended deadlines and increased flexibility are a welcome relief for many clients. The current situation means that the policies adapted by local offices remain fluid, but as at the time of writing (6 April 2020), the following procedures are in place:

UK Intellectual Property Office (UKIPO)

  • Commencing 24 March, all days, until further notice, have been declared “interrupted days”. Any deadlines falling on an interrupted day (including 24 March) will be automatically extended for an indefinite period until the IPO notifies users of the end of the interrupted day period.
  • A period of four months will be allowed to respond to new examination reports, not the current two.
  • The period to respond to design examination reports will not be increased, but extensions are available.
  • There may be a delay in publishing marks for opposition due to the need to notify owners of earlier UK marks, which is currently done only by post.
  • Paper forms are still accepted, but users are encouraged to use online services. For services not historically available online, users can email paperformcontingency@ipo.gov.uk.
  • Hearings will be conducted by telephone, Skype or other online channel. In-person hearings will not be booked before 1 June 2020, subject to review.

European Union Intellectual Property Office (EUIPO) 

  • All deadlines falling between 9 March 2020 and 30 April 2020 have been automatically extended until 4 May 2020. The official deadline is 1 May but this is a non-working day.
  • This extension does not apply to appeals to the General Court.

World Intellectual Property Office (WIPO)

  • No change to deadlines yet and, although procedures are in place to request extensions, users may be required to provide evidence explaining why any deadline was missed.

Intellectual Property Enterprise Court/High Court/Court of Appeal

  • Remote hearings will be arranged wherever possible.
  • Social distancing measures introduced in courts.
  • Staff and judges continuing with essential work but will focus on urgent matters.
  • Deadlines will remain but the courts will use their discretionary powers to allow extensions of time if a party is adversely affected.

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