Update on COVID-19 mitigating measures from Italian Patent and Trademark Office (UIBM) and European Union Intellectual Property Office (EUIPO)

By Alessandra Naia

03-2020

Our team in Italy provide an update in response to the disruption caused by COVID-19, the UIBM has taken the following measures.

Start dates and deadlines of some UIBM incentives have been postponed as follows (full article on UIBM website here):

  • Trade Marks: new start date for sending applications is 6 May 2020 at 9am (instead of 30 March 2020)
  • Designs: new start date for sending applications is 22 April 2020 at 9am (after being already postponed from 27 February to 19 March)

Proof of Concept 2020 (valuation of IPRs owned by universities and research centers): the deadline for sending applications has been postponed to 20 April 2020 at 12pm (after being already postponed from 27 February to 19 March).

Some UIBM services dedicated to users have been suspended for some time and are being reorganised to better assist users (full article on UIBM website here):

  • UIBM Call Center service has been suspended with a view to allowing Call Center operators to work from home;
  • User assistance via email (here) has been implemented;
  • UIBM Contact Center room is closed to the public; access is allowed only to submit urgent documents.

Expiration dates for deadlines related to UIBM procedures have been suspended until April 3, 2020 (full article in Italian here).

The communication is unclear about the extent perimeter of the provisions and clarification that has been asked to the IPTO. It appears evident that suspension does not apply to the following deadlines referring to the opposition proceedings in Italy:

  • deadline for filing opposition;
  • deadline for filing submissions and proofs in support of the opposition;
  • 2 month deadline, starting from the opposition filing, for the late submission of the POA

And to the deadline for filing appeal against the decisions of the UIBM:

It is doubtful if the suspension applies to the 30-day term (starting from date of the last notification of the appeal) for the submission of the appeal, together with the notifications receipts/related documents, before the IPTO. Clarification has been asked to the IPTO in this regard also.

The EUIPO has taken a similar measure on expiration deadlines: the Executive Director of the EUIPO has today (16 March) signed a decision extending all time limits, expiring between 9 March 2020 and 30 April 2020, that affect all parties before the Office to 1 May 2020 (you can access the decision here). Again, clarification is needed since it stated that all time limits "… that affect all parties in proceedings" are suspended.

We will keep you updated on any further changes.