Why is it not good to postpone the protection of intellectual property for the time “after the virus”?

Why is it not good to postpone the protection of intellectual property for the time “after the virus”?

29 April 2020 - Helena Gajek
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The Coronavirus epidemic caused a downtime in the work of courts and offices. Official and court time limits have been officially suspended in most cases on the basis of the regulations of anti-crisis shield. Does it mean that we should put off all matters connected with the protection of industrial and intellectual property and return to them after the epidemic ends?

Helena Gajek explains: No, certainly not. We cannot think in this way. Indeed, the Act on the anti-crisis shield, among many regulations laid down in order to facilitate the operation of firms in the times of economic downtime caused by the coronavirus epidemic, contains the provisions pertaining to industrial property matters. Some time limits provided for in the Act on Industrial Property Law, the Act on filing European patent applications and the effects of the European patent in the Republic of Poland are suspended or interrupted.

From March 8, 2020 until June 30, 2020 the time limits for filing an opposition against the registration of a trademark, for submitting a translation of the European patent into Polish with the Polish Patent Office, for submitting a translation into Polish of the limited or amended European patent do not run or start to run. We need to differentiate between the aforementioned exceptions where after June 30, 2020, the time limits for carrying out the aforementioned activities will run anew, and the other cases, such as the deadline for payment, for claiming priority, for submitting a position on the matter, where the time limits will continue to run. This means that the time limits which started to run before March 31, suspended for the time of the pandemic, will be extended only for the part which has not run in the period of suspension. We must be very careful about this. At the same time, the Polish Patent Office emphasizes that all activities undertaken by entrepreneurs at that time are valid and effective, encouraging them to continue all ongoing proceedings as before.

Does it mean that we may file with the Polish Patent Office an application for registration of a trademark or a request for the grant of a patent?

HG: Yes, it is possible and even recommended, mainly due to the requirement of novelty when it comes to inventions, and in the case of trademarks, a very significant matter of priority. It is still the most important thing that the new solution is not disclosed anywhere and that no other competitor applies for the protection of an invention or a sign before us. It needs to be emphasized that most activities in industrial property proceedings may be handled through electronic channels of communication, i.e. without leaving home. Currently we are observing a new wave of entrepreneurs’ activity related to filing for protection of the solutions that are to support the fight against the pandemic.

It is a good news, since, despite the hard times, the creativity of entrepreneurs may not only translate into the situation of a specific entrepreneur, but also the health and safety of the entire society.

And what is the situation abroad?

H.G.: The European Union Intellectual Property Office (EUIPO) also extended the time limits until May 1 (in practice May 4) due to the epidemic, but it strongly recommends undertaking regular actions in this time. It needs to be remembered that the electronic means of communication have been the basic way of contacting the EUIPO for many years. As one of  the top users of the EUIPO (JWP is at the forefront of the ranking of representatives most often filing EU trademark applications online), we can confirm that the Office in Alicante possesses perfectly prepared tools for cooperation with users via the Internet. The European Patent Office also reacted quickly to the global situation. The EPO has extended the time limits (once again) for performing actions that fall due during the epidemic (i.e. after March 15) until May 4. It also introduced special remedies for users from areas particularly affected by the epidemic. Some procedures requiring the presence of representatives are conducted by videoconference (hearings). It cannot be excluded that the deadlines will be extended again if the situation so requires. It should be emphasized that both the EUIPO and EPO work, even in these difficult times, “normally”.

Why do we need to proceed? Wouldn’t it be better to wait, since the time limits are suspended by statute?

HG: All the aforementioned Offices, including the Polish Patent Office, encourage entrepreneurs to undertake planned actions on a regular basis, also in order to avoid excessive accumulation of matters after the end of the pandemic. We may only imagine the adverse effects of this type of “piling up”. Many firms and persons who wait until “the return to normality” may face a situation of a significant slowdown of the Office’s work, for obvious reasons. Settling various matters related to the protection of intellectual property, important for entrepreneurs, may be difficult then, and for certain decisions, undoubtedly, they will have to wait longer. This can be avoided by not giving up the ongoing matters and by initiating new ones if such an initiative (new solution, new idea for a product, sign, design) is born during this particular period. We should remember that many enterprises operate as they have done so far, only adapting their activities to the applicable sanitary requirements, and therefore the Offices also work as usual, although in a slightly changed manner.

The majority of firms, including law offices, is closed. Where to look for assistance in intellectual property matters?

HG: Some law firms have been physically closed for some time, but observation of the market shows that many of them operate efficiently by means of “home office”. Our office is working (remotely) at full capacity. On April 20 we launched free online consultations through which entrepreneurs may contact experts at a convenient time without leaving home. The forms for booking meetings are posted on our website. Our experts conduct patent and trademark searches on an ongoing basis, prepare applications, opinions and correspond with clients. Despite the difficult situation, we are happy that we live in the times when the technology is so supportive. We have improved communication channels, including, among others, teleconferences with clients.

Therefore, nothing stands in the way of continuing matters related to the protection of industrial property. Please remember that in the end intellectual property is an instrument of a market play, a valuable asset, it is to serve entrepreneurs and support them in achieving business goals. The market and the economy are still functioning, they are only in a state of temporary slowdown. We hope that we will be back to normal soon and we will not only pass this test, but also be stronger afterwards.

The content of the article is intended to provide general information related to a given topic. In specific cases, you should seek specialist advice which takes into account individual circumstances.

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