Managing Your IP Deadlines

The legal framework

Intellectual property law is full of time limits. Some run from an event, such as filing or publication. Some are fixed by an office in a letter. Others are set by statute and cannot be extended. The consequences of missing one range from a surcharge to the permanent loss of a right.

Statutory periods

These are the most important periods, and they are fixed by law.

• Priority: 12 months from the first filing for patents and designs, and six months for trademarks, to file abroad with the same priority date (Paris Convention; Art. 87 EPC for patents).
• Opposition against an EU trademark: three months from publication of the application (Art. 46 EUTMR). Benelux trademark oppositions must be filed within two months from publication.
• Opposition against a European patent: nine months from the publication of the mention of grant (Art. 99 EPC).
• Appeal against an EPO decision: two months from notification of the decision, with the statement of grounds due within four months (Art. 108 EPC). A similar appeal system applies to EUIPO decisions.
• Unitary effect: one month from publication of the mention of grant.
• Renewal: see renewal management for IP portfolios.
• Non-use of a trademark: five years after registration, after which the mark becomes vulnerable to revocation.

Periods set by an office

Examination reports and objections come with a period for reply set by the office. The EPO, for example, sets the period for reply to communications in examination, often four months. Some of these periods can be extended on request, others cannot. The request for extension itself has a deadline, usually before the original period expires.

Remedies

Remedies exist but are limited. Further processing (Art. 121 EPC) can save an application from some missed time limits on payment of a fee and within a short period. Re-establishment of rights (Art. 122 EPC) requires proof that all due care was taken, and does not apply to every time limit. In trademark matters, EUIPO offers restitutio in integrum on similar conditions. Because both depend on showing diligence, the safest remedy is not to miss the date.

Computing the date

Dates are computed from the rules of the relevant instrument. A period "of three months" ends on the corresponding day of the third month after the event. If that day falls on a weekend or a day on which the office is closed, the period normally runs to the next working day. These rules vary by office and instrument, which is why every computed date must be checked by a person.

In practice

A Hasselt manufacturer learns that a competitor has applied for an EU trademark similar to its own. The application is published on 3 March. Opposition has to be filed before the end of the three-month period, that is by 3 June. No extension is available. If the date is missed, the company cannot oppose, and its only recourse is invalidity proceedings, which are more expensive and slower. The company's attorney records the publication date, computes the opposition deadline, has it confirmed by a second person and sets reminders at several points before the end.

The same applies to the 12-month priority period. A start-up files its first patent application at its national office and wants protection in the US and Europe. If it files abroad on day 366, the priority claim is lost. The patent application is then judged against anything published in the meantime, including the start-up's own first application.

A reliable process has a few elements: one single docket for all rights and all offices, so that nothing depends on a personal calendar; dates computed from the triggering event and checked by a second person; reminders that escalate as the date approaches and are sent to a named person; and recognition of incoming office correspondence, since a letter can start a new period. Our portfolio and deadline system works this way, with four escalation levels and confirmation by a person, and you can follow the dates in the client portal. Where a deadline depends on a budget decision, the cost estimator provides the figure.

Frequently asked questions

Can I get an extension if I miss an opposition deadline?

No. Opposition periods are statutory and cannot be extended. If the date has passed, other routes such as invalidity or cancellation may exist, but they are different and more costly.

Does the office remind me of deadlines?

Not as a rule, and where it does, there is no right to receive a reminder. The responsibility for the date is yours or your attorney's.

What is the difference between further processing and re-establishment?

Further processing is available for certain missed periods on payment of a fee and does not require a justification. Re-establishment requires showing that all due care was taken and is available only in specific cases. Neither covers every deadline.

How do I know which dates apply to my portfolio?

By recording each right with its filing date, status and office, and having the dates computed from those facts. A list of rights without their dates is not a deadline system.

How this connects

Deadline monitoring is a central element of IP portfolio management, where each computed date is confirmed by a person and escalated until it is dealt with.