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Tag: deadlines for patents

Extending Australian patent and trade mark deadlines amid COVID-19 (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 more updated information)

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.