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Author: Ben Mott

Extending Australian patent and trade mark deadlines amid COVID-19

IP Australia (the Australian Patent and Trade Marks Office) has not yet announced any measures specific to COVID-19.

Fortunately, most* Australian patent and trade mark deadlines can be extended if they are missed, or cannot be met, “because of:

a)  an error or omission by the person concerned or by his or her agent or attorney;

or

b)  circumstances beyond the control of the person concerned…”.

Official extension fees of A$100 (about US$62) per month are payable. A request for extension should be filed promptly once the failure (or inability) to meet the deadline is recognised.

Securing an extension typically requires a “full and frank” declaration evidencing an intention to meet the deadline and a causal connection between an error, omission or circumstance resulting in the failure (or inability) to meet the deadline. Traditionally, a shortage of funds has not been enough to secure an extension.

Whilst measures specific to COVID-19 are yet to be announced:

  • no doubt an extension could be secured if, for example a deadline was missed because relevant people were suddenly hospitalised; and
  • we would also expect to secure an extension if a deadline was missed due to a miscommunication related to an urgent shift to employees working from home; although
  • we would be surprised if an extension could be secured for reasons that essentially boiled down to a lack of business confidence.

Similar provisions apply in New Zealand.

 

* More onerous provisions apply in the context of opposition proceedings.

Business as usual at Wadeson

Here at Wadeson, it’s business as usual as we remain fully operational during the worldwide COVID-19 crisis. All principals and staff now have remote working capability, and we have the systems and processes in place to provide continued service and support to all our clients and associates throughout this difficult time.

Rest assured that all deadlines are being monitored and met, and our team is working hard to provide the same high standard of service you expect from us.

We remain available by telephone as per usual, and can arrange client meetings using video conferencing platforms as appropriate.

As we will be working from our homes (on Government advice), we request that for the time being you do not send us any documentation in hard copy by post – please forward all communications by email instead.

As far as Australian deadlines are concerned, IP Australia’s current position is as follows:

 

IP Australia recognises that the effects of the COVID-19 outbreak is an unprecedented situation that may have an impact on the ability of applicants and their representatives to process applications.

Where an applicant cannot carry out an action within time due to the COVID-19 outbreak an extension of time may be available. Requests for extensions of time will need to be made in the normal way, accompanied where required by a declaration setting out how the COVID-19 outbreak interfered with responding in time. Requests for waiver or refund of the fee for the extension of time will be considered on a case by case basis as per our current practice.

 

More on extending Australian patent and trade mark deadlines amid COVID-19.

We sincerely hope that you, your colleagues and families stay safe and well, and your businesses remain strong.

Innovation into Profit Program

A series of experts discuss the route from a new idea to a commercial return and the tools available to make it easier and improve the prospects of success.

View the flyer

Learn more

Attend the event (free)

Register Here

Event Details

17 MARCH 2020

William Buck
Level 20, 181 William Street Melbourne VIC 3000
8:30am to 1 :30pm

Presenters

  • Dr Mal Clark
  • Dr Kevin Thomson
  • Lauren Morcom
  • Ian Cattanach
  • Ben Mott
  • Joe Barber
  • Belinda Sigismundi
  • Dr Rite Choueiri
  • David Menzies

Description

Experts from a wide range of backgrounds will bring their unique perspectives, panel discussions and Q&A will draw it all together.

Topics covered include:

  • Patents, designs and trade marks – pros, cons and costs
  • Confidentiality and protecting your trade secrets
  • How to maximise the value of your business
  • Lessons from experience at the coal face
  • Using R&D and Export Market Development grant to boost your business
  • Other government support programmes
  • Cash flow management and product costing

At this free workshop, participants will access the key drivers for a profitable business and the opportunity to discuss with industry experts.

We wish you a Merry Christmas, and a safe and happy holiday season.

Thank you for your continued support over the last year. We value it highly.

Best regards
Belinda Wadeson and Ben Mott

HOLIDAY OPENING HOURS

Our offices will close at 5pm on Tuesday 24 December 2019 and
reopen on Thursday 2 January 2020.

Any urgent matters will be attended to over the holiday period.
Please ensure any such matters are marked accordingly, and copied to mail@wadesonip.com.au.

New Zealand patent fees to increase in 2020

New excess claim fees and how to avoid them

The Intellectual Property Office of New Zealand (IPONZ) has announced significant patent fee increases to take effect in 2020 as detailed here.

Most of the changes take effect 13 February 2020, although the new maintenance and renewal fee rates apply to fees due on or after 13 May 2020.

The fee increases are enormous in percentage terms – New Zealand’s patent fees are currently modest, whilst the increases are significant in absolute terms, e.g.:

  • the final renewal fees increase from 350 NZD to 1000 NZD – a 186% increase, and
  • the fee for restoring a patent application increases from 100 NZD to 500 NZD – a 400% increase.

Excess claim fees will be introduced. The new fees will:

  • apply if examination is requested on or after 13 February 2020,
  • cost 120 NZD for each 5th claim after the 25th based on the maximum number of claims at any point during the examination process, and
  • be payable after acceptance (allowance).

Filing a voluntary amendment to reduce the number of claims prior to requesting examination would avoid the fees and may well be economic if there are 40 claims or more – a 150 NZD fee and professional charges are applicable to voluntary amendments. IPONZ has confirmed that filing a voluntary amendment and then requesting examination on the same day will avoid the fees (unless of course the claims are subsequently reinstated).

AU & NZ patent attorney services for the world.

National phase translation requirements to be simplified & clarified

Australia patent translation requirements

On 25 September 2019 amendments to Australia’s patent regulations will take effect to simplify and clarify the requirements for translations when entering the national phase in Australia.

At present, if an international patent (PCT) application is not in English, a verified translation of the specification must be filed by the 31-month deadline. The current regulations are not entirely clear, although it is routine to proceed with:

  • a verified English translation of the specification as amended during the international phase; OR
  • separate verified English translations of the specification as filed and of any amendments filed during the international phase; OR
  • a verified English translation of the specification as filed (in which case the amendments during the international phase will be disregarded although corresponding amendments could be made to the Australian national phase application).

A verified translation is a translation accompanied by signed certificate confirming that the translation is a true and complete translation. The Australian Patent Examiner’s Manual includes a sample certificate.

From 25 September 2019, certificates of verification will not be required to enter the national phase:

  • a simple translation “of the specification of the PCT application as filed (with or without any rectifications under Rule 91 of the PCT)” will suffice; although
  • translations of any amendments filed during the international phase should also be filed if those amendments are to be taken into account in Australia.

The Australian Patent Office (APO) will have power to call for a certificate of verification, although:

  • we anticipate that this power will be used sparingly, most likely only when APO examiners have reason to suspect that a translation is inaccurate; and
  • such a call could be met with a corrected translation accompanied by a certificate of verification.

 

Further reading

Be.Bendigo Invention + Innovation Awards – Prizes and Deadlines

Ben Mott, patent attorney and mechanical engineer, is again judging the Be.Bendigo Invention + Innovation Awards. Wadeson is proud to be a Partner of the Bendigo Invention + Innovation Festival 2019.

Entries are now open and close on Monday, 15 July 2019, and the panel of judges will give feedback on all applications.  Shortlisted entries can attend a 4 day La Trobe Accelerator Program bootcamp program.

Bendigo Invention and Innovation Festival 2018

The Bootcamp provides intensive training and coaching on website design, entrepreneurial marketing, value proposition, business model canvas, sustainability, pricing, social entrepreneurship, global success, wellness, IT platforms and pitching. It also includes an opportunity to pitch for a place on the 12 week La Trobe Accelerator Program and up to $10,000 in non-equity seed funding.

The Be.Bendigo Invention + Innovation Awards and a pitch event will be held on Tuesday, 3 September 2019. Prizes up to $2,500 will be awarded across the categories of Youth, Environmental Sustainability, Health, and Open. The overall winner prize is $5,000 and direct access to the 12 week La Trobe Acclerator Program – Advanced Stream.

Established in 2010, the awards have given away over $100,000 in prizes and seen many entries go on to global success.

David Hughes, Project Director

Bendigo boasts a thriving manufacturing sector including key players in mining and industrial casting, rubber manufacturing and military vehicles. The Bendigo Invention + Innovation Festival is an initiative of Bendigo’s peak industry body, Be.Bendigo.

We look forward to seeing you at the Awards!

 

Patent attorney judging at the Bendigo Invention + Innovation Festival 2019

We are proud supporters of Bendigo and are pleased to be part the Bendigo Invention + Innovation Festival 2019 (BIIF).

Bendigo is Victoria’s fourth largest city and boasts a thriving manufacturing sector including key players in mining & industrial casting, rubber manufacturing and military vehicles.

The BIIF is an initiative of Bendigo’s peak industry body, Be.Bendigo. Festival Director David Hughes explains:

Our vision is that Bendigo is internationally regarded as an innovation hotspot that quickly identifies and offers solutions to issues with a social impact. A place where problems are shared, ideas are freely discussed and solutions are collaborated on. There is a strong entrepreneurial culture that is supported by local government policy, infrastructure, access to funding and networking opportunities. Ideas are supported to commercialisation through a strong talent pool and access to capital.

This year our Ben Mott is proud to be one of the judges. We look forward to seeing you there.

 

Further reading

Patent attorney takes another swing for charity

We are again proudly supporting the City of Greater Dandenong’s ‘Take a Swing for Charity‘ golf day.

The City of Greater Dandenong through its business networking unit SEBN (South East Business Networks), together with key corporate sponsors, holds an annual afternoon of golf followed by dinner and a charity auction to raise funds for local beneficiaries. Over the past decade, the event has raised over $350,000 in support of local charities.

This year’s charity recipients are AvoCareCornerstone and We Care, who will work collaboratively to support the community.

Related reading

The end is nigh for innovation patents

The end is nigh for innovation patents – 30 November 2017

The Australian innovation patent is an 8 year patent for which there is no inventive step requirement. Routine technical developments can be validly covered (more).

In August 2015 we published ‘The death knell for the Australian innovation patent?‘. Since then the anti-innovation-patent sentiment has continued to mount. Almost certainly, innovation patents will be phased out in the coming years.

IP Australia (aka the Australian Patent Office) has released draft legislation for phasing out the innovation patent (see here).  The draft legislation protects:

  • the rights of those who hold innovation patents; and
  • the rights of those who have the right to file for an innovation patent based on a patent application filed prior to the commencement date of relevant provisions.

It appears likely that:

  • divisional innovation patents can be filed for years to come; although
  • no ‘new’ innovation patent can be filed after about July 2019; and
  • the last innovation patent will likely expire by about July 2027.

Submissions on the draft legislation can be made up until 4 December 2017. Then the legislation will be presented to Parliament and may well be passed during Parliament’s winter sitting in late June 2018. If so, the legislation will likely receive Royal Assent in early July 2018.

According to the draft legislation, the relevant provisions will commence 12 months after Royal Assent – i.e., the commencement date will likely be about July 2019. Those provisions will require:

  • innovation patents to have a patent date prior to the commencement date; and
  • each claim of an innovation patent to have a priority date prior to the commencement date.

A patent’s date is typically the earliest of its filing date and the filing date of its earliest divisional predecessor (e.g. filing an international patent application (PCT) can establish the patent date of a subsequent innovation patent). An innovation patent’s 8 year term is calculated from its patent date.

Innovation patents are an important part of the Australian patent landscape and will remain so for years to come. They are being phased out in part because they are too pro-patentee. Until they are gone, patentees should use the innovation patent system to its fullest. It may well be prudent to ensure that suitable applications are filed prior to the commencement date to at least preserve the option of filing for innovation patents in the years to come.