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Category: Intellectual Property News

Best wishes for a safe and very happy new year!

Holiday opening hours

Our office will be closed for the holidays from midday Thursday 24 December 2020 and will reopen on Monday 4 January 2021.

We will be available for urgent matters between these dates. If you have an urgent enquiry during this time, please forward an email, marked urgent, to mail@wadesonIP.com.au and we will respond.

Best wishes for a safe and very happy new year!

Belinda Wadeson and Ben Mott

 

Update on IP Australia’s response to the COVID-19 outbreak  (update 8)

The COVID-19 pandemic is continuing to affect many of our customers.

As such, IP Australia’s streamlined process to provide free extensions of time to assist customers impacted by the COVID-19 outbreak will be continued until 30 November 2020.

If you have previously received a streamlined three month extension and subsequently find that you need a further extension due to the impact of the COVID-19 pandemic, then you can apply for a further streamlined extension of time for up to 3 months.

We also recognise that restrictions in Victoria may be causing our customers additional disruptions. If you need more flexibility than the streamlined process for extensions of time offers, please contact us to discuss your circumstances and how we may be able to assist you.

The streamlined process for extensions of time is temporary and its continuation is being regularly reviewed considering the severity of the COVID-19 pandemic disruptions. We will provide at least one week’s notice before it is ended.

The service does not guarantee registration of your trade mark and is not a business or legal advice service. For advice on the trade mark system and how it might be best used in your business, we will recommend you to advisers such as trade mark attorneys or other professionals.

Extending Australian patent and trade mark deadlines amid COVID-19 (update 7)

(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.

Deadlines that cannot be met due to COVID-19 related ‘circumstancesg 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 October 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 6)

(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.

Deadlines that cannot be met due to COVID-19 related ‘circumstancesg 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 30 September 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 5)

(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.

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 August 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 3)

(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.

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 30 June 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).

The demise of the innovation patent confirmed

The demise of the innovation patent has been confirmed and a date has been set.

Described by IP Australia as a ‘phase out’, innovation patent applications can still be filed but must benefit from an Australian non-provisional filing date (e.g. international filing date) no later than 25 August 2021; e.g. divisional patent applications for innovation patents can be filed after 25 August 2021. The last innovation patents will expire 25 August 2029.

Whilst nothing changes until 25 August 2021, forward planning is recommended. Ensuring that a suitable non-provisional filing is made by 25 August 2021 will preserve the option of utilising the innovation patent system to obtain rights immune to lack of inventive step attack.

The innovation patent is Australia’s utility model. Innovation patents have long been a prominent feature of the Australian patent landscape. Now that they are being phased out, we wait to see how long it is before an alternative low-cost short-term patent is suggested. In the meantime this will not be the death of local innovation. Nor will it be the end of effective protection for local innovators.

Local innovators are left with the standard patent and its inventive step requirement and compulsory examination. An inventive step is not insurmountable by local innovators. Rather it’s a low bar requiring something more than obviousness. Compulsory examination entails costs but usually occurs years after filing by when applicants should have a better idea as to whether ongoing investment is warranted.

Extending Australian patent and trade mark deadlines amid COVID-19 (further 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.

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 May 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.