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Author: Ben Mott

Extending Australian patent and trade mark deadlines amid COVID-19 (update 4)

Three-month extensions of time for COVID-19 related delays are now freely available for most Australian patent and trade mark deadlines.

Deadlines that cannot be met due to COVID-19 related ‘circumstances beyond the control of the person’ can now be extended with a simple electronic request via an electronic portal and without official fees.

Justifying the extension is now a matter of ticking a box. From the electronic portal:

These new arrangements apply to requests for extension filed by 31 July 2020 and this date may well be extended in due course. IP Australia (our Intellectual Property Office) plans to regularly review the new arrangement considering the severity of the COVID-19 disruptions.

In addition to these new arrangements, Australia’s (generous) ordinary extension provisions remain in place (see here).

Extending Australian patent and trade mark deadlines amid COVID-19 (update)

(See here for the latest update)

Three-month extensions of time for COVID-19 related delays are now freely available for most Australian patent and trade mark deadlines.

For now, IP Australia (the Australian Patent and Trade Marks Office) has:

  • provided standard text to be used in support of requests for extension of time;
  • agreed to refund the usual $100 per month extension fees (see here).

The standard text includes a range of options, each to the effect that the deadline cannot be met “due to the disruptive effects of the COVID-19 pandemic”. The Institute of Patent and Trade Mark Attorneys (IPTA) has circulated an email suggesting that the standard text will be deemed to justify an extension.

These new arrangements will apply until at least 31 May 2020. Currently the new arrangements apply to requests for extension filed by 31 May 2020 and it seems that this date may well be extended in due course.

The extension process should be streamlined in the coming days. IP Australia plans to upgrade its IT systems by the end of April to enable extensions to be requested without paying the fee. IPTA suggests that at the same time the standard text will be replaced by a simple online tick-box.

In addition to these new arrangements, Australia’s (generous) ordinary extension provisions remain in place (see here).

Extending Australian patent and trade mark deadlines amid COVID-19

(See here for the latest update)

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