COVID-19 IP update: impact on litigation

Spain section updated

The Hogan Lovells IP & Media Technology team is closely following the impact of COVID-19 on the operation of Courts around the world and what this means in practice for clients engaged in or contemplating litigation, with respect to upcoming hearings, deadlines, and limitation periods. We will keep you up to date on court guidance as it develops and share our expectations and experiences as we go through this challenging time.

** Indicates latest update.

China

In February, during the peak of the COVID-19 epidemic in China, the Supreme People’s Court issued a statement that courts at all levels were to assist parties in litigation to file cases or mediate disputes online, and encouraged judges to use online systems, including for case filing and issuing judgments. Fortunately, as the intensity of the epidemic in China has significantly lessened over the last weeks, the Chinese courts are gradually resuming their normal activities. This means that the volume of accepted cases and issued judgments is gradually increasing to a normal level. Nevertheless, specific health and safety measures still apply to various courts. For instance, for administrative IP litigation, the Beijing IP Court still encourages filings of new cases via mail, and most hearings in February and March were postponed, and have not yet been rescheduled. This means that the impact of the pandemic will still be felt by parties in China IP litigation for the near future. We are following these developments closely and can advise clients on how to best navigate these changes .

Authored by Helen Xia

 

Court of Justice of the European Union (CJEU)

The CJEU has announced​ temporary changes to its working arrangements. Judicial activity will continue, but priority will be given to those cases that are particularly urgent, such as urgent proceedings, expedited proceedings and interim proceedings. Procedural time limits for instituting proceedings and lodging appeals continue to run, but time limits prescribed in on-going proceedings – except for particularly urgent proceedings – are extended by one month. Until further notice, the time limits that are to be fixed by the registry will also be increased by one month. Hearings that are listed between now and 3 April 2020 are adjourned until a later date. Parties are asked to consult regularly the website of the CJEU (Curia). Once it has resumed its judicial activities as normal, the CJEU will contact representatives regarding the next stages of the proceedings.

 

France

By an implementation regulation issued on 16 March 2020 , the Ministry of Justice has declared the closure of the courts, except for criminal and civil emergency services. This measure involves both the suspension of court hearings and the exceptional closure of courts registries.

On 22 March 2020, Parliament finally adopted Emergency Law n°2020-290 of 23 March 2020, enabling the Government to legislate by means of ordinances to adapt the rules of procedure to the constraints resulting from the COVID-19 health crisis. On 25 March 2020, four Ordinances were issued by the Minister of Justice: one relating to the extension of the time limits that expired during the health emergency and the other three relating to the adaptation of the rules of criminal, civil, commercial and administrative procedure.

Specifically, Ordinance n°2020-306 extends the deadlines (notably procedural) "which expire between 12 March 2020 and the expiry of a period of one month from the date of cessation of the declared state of health emergency".

This extension shall apply to acts, legal actions, appeals, formalities, registrations, declarations, notifications or publications prescribed by law or regulation on pain of nullity, sanction, lapse, foreclosure, prescription, unenforceability, inadmissibility, lapse, application of a special regime, forfeiture of any right, and which had to be carried out within this period.

Following a decision of the Director of the French patent and trademark office ("INPI") from 16 March 2020, deadlines applicable to designs, patents and trademarks proceedings before the Office, not yet expired on 16 March 2020, are increased to four months, except for deadlines applicable to trademarks opposition proceedings.

The Paris Bailiffs' Chamber is now offering minimal services (mainly service of documents) in view of the national health context and the containments and restrictions measures implemented by the government. Combined with the closure of the Paris Judicial Court, this means no infringement seizure may be ordered for the time being.

Authored by Stanislas Roux-Vaillard, Adrien Bonnett and Alexandra Schellino
 

Germany

In Germany the courts remain open for new filings and urgent matters will be handled. Judges are mostly working remotely, are available for calls and to give guidance to litigants over the phone.

 

As regards hearings that are scheduled for the imminent future, the courts have given different guidance. In the patent field, the Dusseldorf court has stated its intention to continue to hold some hearings but with appropriate precautions in place, while others are cancelled. The Munich District Court follows a similar approach. And the Hamburg court has limited oral hearings to urgent matters.

 

The Mannheim court has informed us that currently hearings scheduled until the end of the 16th calendar week (ending Friday 17 April 2020) are being cancelled and rescheduled for later this year. The expectation is, however, that the court will not resume its hearing schedule until later this year. New actions that are being filed are currently expected to be scheduled for a hearing within the first couple of months of 2021.

 

Federal Patent Court: The German Federal Patent Court has said that the court is closed for the public and that all oral proceedings scheduled between 23 March until 3 May 2020 are abrogated. However, the court will further operate in an emergency mode and thus, requests, pleadings and complaints can be filed as normal.  

Authored by Andreas von Falck

 

Italy

On 17 March 2020, the Italian Government issued Law Decree No. 18/2020 to comprehensively address the COVID-19 pandemic emergency in Italy. Law Decree No. 18/2020 has stayed most civil and criminal proceedings, including IP cases.

Updates

Law Decree No. 23/2020 (issued on 8 April 2020) prolonged the stay of civil and criminal proceedings by amending Law Decree No. 18/2020. The following paragraphs reflect the situation as of 10 April.

Postponement of scheduled hearings

All hearings scheduled between 9 March and 11 May 2020 in civil proceedings, before all Courts, shall be postponed ex officio to a date after 11 May.

Moreover, in order to counter the epidemiological emergency from COVID-19 and contain its negative effects, the heads of judicial offices are allowed to adopt additional measures for the period between 12 May and 30 June 2020.

In particular, from 12 May to 30 June 2020, hearings in civil proceedings may be held remotely (using video-conference software) or replaced by the filing of short briefs, or even postponed to a date after 30 June.

Therefore, most civil hearings – also in IP cases – will be significantly delayed. For instance, the Court of Rome has already postponed to December some hearings in IP matters which were initially scheduled for April.

Stay of deadlines

Additionally, from 9 March to 11 May 2020, all deadlines to carry out defensive activities in civil proceedings are stayed. This includes all deadlines for filing new actions and for appealing decisions.

The stay of deadlines implies that the days between 9 March and 11 May 2020 are not considered or calculated in the time available for a given defensive activity. By way of example, in case a party has a 30-day time limit to file a defensive brief starting on 17 February 2020, the ordinary filing date would fall on 18 March. Due to the stay, the deadline would now expire on 21 May 2020 (as if the days between 9 March and 11 May 2020 did not exist).

Exceptions and urgent proceedings

Law Decree No. 18/2020 provides for a limited number of exceptions to the above rules in civil matters, essentially concerning serious family law issues and the protection of minors. In those cases, Courts will not apply stays or postponements.

Instead, "normal" urgent proceedings – such as preliminary injunction proceedings or urgent declaratory non-infringement actions – are halted at least until 12 May. Urgent proceedings may be filed only with respect to "fundamental personal rights".

The only exceptions are cases where the delay may cause a serious harm to the parties. In such cases, the Court may declare a case to be urgent upon request by the interested party. However, it is not yet clear how stringently these exceptions will be interpreted. While ordinary IP matters will hardly meet this requirement of "exceptional urgency", patent and trademark cases related to the COVID-19 outbreak may be admitted to urgent trials before 12 May.

Authored by Federico Fusco and Luigi Mansani

 

Japan

On 7 April 2020, the Japanese government declared a state of emergency in seven prefectures, due to the on-going COVID-19 pandemic. Subsequently, on 16 April 2020, the Japanese government declared a state of emergency in Japan's remaining forty prefectures. The country-wide declaration is currently effective until 6 May 2020, and may be extended. Based on the declaration, certain courts, especially those located in the original seven prefectures, have cancelled civil hearings, both public and private, scheduled up to 6 May 2020, except for those of an urgent nature, such as proceedings for civil provisional remedies and certain civil enforcement procedures that are especially urgent. In respect of criminal proceedings, we understand that many hearings and related procedures in jury trials have either been cancelled or postponed. Under Japanese law, whether and how a hearing date is fixed or rescheduled ultimately depends on the judge or panel of judges in charge of the particular case.

 

All courts, including courts whose hearings have either been cancelled or postponed, appear to be continuing to accept submissions, such as complaints.

 

In parallel, the courts are encouraging parties and counsel who are due to attend a hearing to let the relevant court know if any attendee has symptoms such as a fever. In such case, the court will take a flexible approach and reschedule any relevant hearing dates, or take any other appropriate measures, in order to prevent further propagation of Covid-19. In addition, the courts have requested that any potential visitors to the court to refrain from doing so if they have any symptoms such as a fever. Most courts are instructing courtroom visitors to leave sufficient distance between individuals to minimise the propagation of Covid-19 in courtrooms.

 

Further, most courts are requesting all visitors (including those attending hearings) to let the court know if they need to appear in court but have health concerns (such as feeling unwell, being relatively older, or having an underlying disease). In that case, we reasonably expect that the court would make appropriate accommodations to the extent possible. Most courts are alsoencouraging  visitors to wear masks while they are in a court building.

 

Given the rapidly changing situation, the courts of Japan may further adjust their position as appropriate. We recommend following the press releases of the courts and more general news sources in the coming days and weeks.

Authored by Mitsuhiro Yoshimura

 

Mexico

The Mexican Supreme Court, all Federal, local and administrative courts closed last Wednesday March 18, 2020.  So far, it is said they will resume work on April 20, 2020.  They are only open to attend urgent matters. Therefore, no legal terms are running.


As the Mexican Trademark Office and Copyright Bureau are still open, actions related to trademark, patent and copyright infringements can still be filed as the first instance is carried out before them.  Officers in charge of first instance cases can still be reached.

Authored by Edgar M. Mata

 

Netherlands

 

Proceedings on the merits in the Netherlands are continuing as normal as possible. This means that new cases can be filed and the exchange of written submissions continues as usual. Oral hearings are for the time being replaced by the exchange of written pleading notes, a hearing by video conference or a combination thereof. The Courts also continue to render judgments.

               

Preliminary relief proceedings can also still be filed. The Judge will assess whether the case is sufficiently urgent. Under normal circumstances, preliminary relief proceedings take about 6-8 weeks until a decision is rendered and this may still be possible under the current circumstances. The hearing may be in the form of an exchange of written pleading notes or in the form of a video conference. This depends on the wishes of the parties, but is ultimately at the discretion of the Judge. Certainly in larger cases, it is to be expected that the Judge will opt for a video conference. Requests for seizures, such as asset seizures, seizures for the surrender of infringing goods or evidence seizures, can also still be filed as usual.

 

The District Court of The Hague, the sole competent court in cases concerning patents, community trademarks and community designs, has made a (non-binding) policy for preliminary relief proceedings in the current COVID-19 situation. The policy sets out that the Judge will set a date for the defendant to submit a statement of defense. The Judge will then decide on the next steps of the procedure. The Judge may give an opportunity for a second exchange of submissions and may ask questions to be answered in that second round. The Judge may also decide not to request a second round of submissions and schedule a hearing instead. This hearing may be a remote hearing, for instance a video conference. The attorneys of the parties must attend the hearing and the parties themselves can also attend.

Authored by Ruud van der Velden

 

**Spain

The Spanish Government declared on 14 March the state of alarm and lockdown of the country, aimed at facing the health emergency caused by the coronavirus COVID-19. The state of alarm, initially ordered until 29 March and subsequently extended, has been further extended until 7 June by means of Royal Decree 537/2020, published on 23 May. A number of extraordinary measures were taken under the Central Government's authority, including the suspension of the courts' deadlines -with few exceptions relating to urgent proceedings. The suspension will be lifted on 4 June and all deadlines will start running again from that day.

In line with the declaration of the state of alarm, on 14 March the General Council of the Judiciary agreed to the suspension throughout the national territory of scheduled procedural acts, hearings and procedural deadlines while the state of alarm is in place, guaranteeing the essential services of the Administration of Justice -amongst others, criminal proceedings, labor-law proceedings and protection of fundamental rights- which would not be affected by the suspension. Judges and courts may conduct and/or hold any acts or procedures the suspension of which could cause irreparable damage, including preliminary injunctions. The General Council of the Judiciary has agreed to maintain the above measures in view of the further extensions of the lockdown.

The Ministry of Justice and the General Council of the Judiciary have agreed to allow the electronic filing of briefs and their further processing by courts from 15 April. As a result, judicial activity has progressively reactivated, with the parties filing briefs and courts processing them in an increasingly agile way, although the suspension of proceedings and deadlines will be maintained until 4 June. In practice, this means that, for instance, parties may initiate proceedings by filing their respective claims, the latter will be assigned to the competent courts which may acknowledge receipt but the defendant will not be summoned to file its response until the suspension be lifted.

Moreover, by means of Royal Decree-Law 16/2020, in force from 30 April, the Government approved, through an urgent legislative procedure and further to the input received from, inter alia, the Governing Body of the Judiciary and the General Councils of Lawyers and Court bailiffs, a number of procedural and organizational measures aimed at speeding up the operation of the Administration of Justice once the lockdown (and the suspension of judicial proceedings) is lifted.

The measures include, amongst others, making part of August (from 11 August onwards) a working and operative period (Spanish courts are traditionally in their summer recess throughout the whole month of August), clarifying that all deadlines suspended during the state of alarm will start running after the suspension, extending the deadlines to appeal the court rulings handed down during the state of alarm or within 20-working days after the lifting thereof and proposing specific measures to handle urgent proceedings in family, employment-law or insolvency cases. Also, during the state of alarm and in the three-month period following the lifting thereof, all procedural acts and hearings will preferably be carried out by telematics means (provided that the Courts have the appropriate technical means to do so), the public access to –live– hearings will be limited, contacts with the Courts shall be conducted primarily by phone or email and an afternoon working shift will be established for the Courts' personnel.

On 28 April, the Government approved a de-escalation plan for the transition to the "new normality". The plan is divided into four phases which started on 4 May and will be gradually and individually implemented by the different territories, with the aim of lifting all measures at the end of June. A specific de-escalation plan for the Administration of Justice was published on 9 May, establishing a series of phases for the progressive recovery of the normal activity of Courts. If the plan goes as planned, the ordinary activity of the Administration of Justice (with 100% of the staff working again) should be restated by the beginning of June. Courts are now working out their agendas in order to reactivate the proceedings and reschedule the hearings that were suspended -some of them will be held by videoconference. Some delay in the processing of cases is to be expected.

Authored by Inmaculada Lorenzo

 

UK

The position of HM Courts and Tribunals Service (HMCTS) and the Lord Chief Justice is that, while the continued smooth running of UK courts is an essential public service, it can no longer be business as usual.  This is particularly the case in light of the closure of UK schools and the requirement for everyone to stay at home if they can - it is recognised that this will have an immediate impact on the ability and willingness of people to attend court. 

Accordingly, the default position in the civil courts - including for IP cases - is that hearings (including final hearings, hearings with contested evidence, and potentially appeals) should be conducted remotely.  Otherwise, the Lord Chief Justice has stated that "there will be no hearings and access to justice will become a mirage".  To this end, judges have been advised that they must make as much use of current technologies as possible, and HMCTS is working urgently to increase the capacity of technology available to the courts.  In addition, many more procedural matters may now be resolved on paper.

Ultimately, the decision as to how a hearing is conducted is a matter for the judge, who will determine how best to uphold the interests of justice (including considering issues for both participants and public access arising from use of video/audio technology).  The courts have provided a protocol, advising on the listing and conduct of hearings as remote hearings. We are already seeing this approach being implemented in practice, with patent hearings being scheduled and heard by telephone or Skype, while a seven day trial in the commercial court is proceeding remotely, notwithstanding the need to cross-examine witnesses. Where it is not possible for a hearing to be heard remotely (including hearings for breach of an injunction) hearings should only take place if arrangements can be made to ensure the safety of those attending.  Before adjourning any hearings, judges have been advised to explore with the parties the possibility for compromise to avoid an intolerable backlog if too much court business is simply adjourned. 

While the UK IP courts appear to be proactively following the new guidance, we recommend that if Covid-19 will make it difficult or impossible to comply with existing directions, clients should consider with their legal teams the need to agree with the other parties and/or ask the court for an order varying directions for hearing arrangements (such as to provide for attendance by video-link or phone) and/or varying upcoming deadlines.

Authored by Katie McConnell

 

US

United States Federal Courts have been monitoring the national response to COVID-19, including guidance provided by the Centers for Disease Control and Prevention (CDC), Administrative Office of the United States Courts, and individual state departments of public health. Over the past week, courts have widely instituted orders to govern courtroom logistics, including mandates to postpone jury trials and in-person hearings in some jurisdictions. We have seen new orders being issued increasingly over the past few days, particularly in view of President Trump’s recent declaration of a National Emergency and the CDC’s recommendation to cancel events consisting of fifty people or more.

While the orders can vary by jurisdiction, most trial courts have postponed jury trials for several weeks, some over a month (into the first week of May). The trial court orders are subject to change as the situation evolves, but once jury trials are allowed to resume, criminal trials will generally be prioritized over civil trials, due to constitutional rights of criminal defendants to speedy trials. Thus, trials for IP cases may not resume until Summer of this year, or later. Additionally, in most jurisdictions, if the assigned trial judge believes a hearing is necessary, then the judge has been urged, or in some jurisdictions mandated, to conduct such hearings by telephone or video conference. Matters or issues that can be decided on the papers will generally continue to be handled as such.

For now, we have not seen the same level of restrictions for appeals courts. Mostly, oral hearings and arguments are being permitted to carry on as scheduled. We have, however, seen advisory notices and administrative orders issued restricting public access to certain appeals courts and allowing only counsel and parties to appear at the courthouse for their respective scheduled argument or hearing.

With court orders being instituted across the country, clients should be mindful that there will likely be new restrictions and limitations on in-person courthouse activities in the near term. We generally expect judges to be flexible with case rescheduling, as may be necessary and practicable on a case-by-case basis. Most of the restrictions we have seen so far, however, apply mostly to trials and in-person hearings. Already-pending case schedules and procedural rules establishing other deadlines (e.g., for motions, discovery, other written submissions) may not be suspended by these new administrative orders.  The court in the Eastern District of Texas recently declined to extend discovery deadlines in a case in view of COVID 19 concerns, urging instead that the parties conduct depositions by video or other means. Therefore, it will be important for clients to consult with legal counsel to understand the specifics of any new directives in the jurisdictions for their respective cases.

Authored by Corey T. Leggett

 

How we can help

We hope that we will be able to overcome this emergency very soon and that we will be stronger than ever. We thank you for your support and are available for any clarification you may need.

For further advice and insights to help your business respond to the legal and contractual challenges coronavirus presents, please visit our COVID-19 Topic Centre.

 

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