Update From IP Australia

On 22 April 2020, IP Australia released measures to assist customers “struggling with the impacts of COVID-19”. The measures focus on two main areas:

Free Extensions of Time for Patents, Trade Marks and Designs

IP Australia released a simplified system for extending time to respond to office deadlines if an applicant is affected by COVID-19. The system provides free extensions of time for up to three months for patents, trade marks and designs matters, including extensions of time to file evidence in oppositions.

To get such an extension, all that is required is a one-sentence declaration that the applicant is unable to meet the deadline due to disruptions from the COVID-19 pandemic.

What periods can I use streamlined extensions for?

Streamlined extensions apply to any period that can currently be extended under Australia’s current patents, trade marks and designs legislations, with the exception of:

the period to pay renewal or continuation fees; and
some periods that cannot be extended under the current legislation, either by streamlined or ordinary extensions. Those periods are identified by IP Australia as follows:

IP Right	What time periods are not able to be extended by streamlined extensions?
Patents	Renewals (note that a grace period is still available) WIPO deadlines where IP Australia is acting as Patent Cooperation Treaty (PCT) Receiving Office (IP Australia in its capacity as an Office and Authority under the PCT also intends to follow the recommendations of WIPO contained in the recent interpretation of PCT Rule 82quater.1. Further information can be found on the WIPO website) Patent attorney registrations and discipline Applications for extension of the term of a patent All-time periods in matters before the courts or the Administrative Appeals Tribunal (contact those organisations directly to discuss your case).
Trade marks	Renewals (note that a grace period is still available) Extensions of time for acceptance that are granted without requiring any reason for the extension. Simplified extensions of time for acceptance in this period are still available if a declaration is provided – in eServices, select “Extension of Time (Other)”, not “Extension of Time for Acceptance” WIPO deadlines where IP Australia is acting as Madrid Office of Origin (note that continued processing may be available from WIPO) Meeting minimum filing requirements Filing an application with convention priority (under the Paris Convention), and claiming convention priority Filing a divisional application Requesting renewal or registration outside the ‘grace period’ Amendment of an application before its particulars are published Certain periods relating to border control measures and administered by the Australian Border Force (Customs) relating to trade marks on imported goods Responding to a notice or advertisement by the Australia Competition and Consumer Commission in relation to an application for a certification trade mark Periods relating to Headstart applications Periods relating to trade mark attorney registrations and discipline Filing a notice of opposition to an extension of time Time periods in matters before a Court or the Administrative Appeals Tribunal (contact those organisations directly to discuss your case)
Designs	Renewals (note that a grace period is still available) Time periods in matters before a Court or the Administrative Appeals Tribunal (contact those organisations directly to discuss your case)

Where the extension concerns a period that is not covered by streamlined extensions

Extensions continue to be available on a case-by-case basis for anything not covered by the streamlined extensions (where available under existing legislation).

Applicants simply need to apply for an ordinary extension of time in the ordinary manner, paying the relevant fee. In such situations, IP Australia has advised that “Where we have discretion we will seek to apply it.”

Extensions for longer than 3 months

Applicants can seek an extension for longer than three months by applying for a streamlined extension for three months and then later on applying for an ordinary extension of time for a longer period if needed.

Alternatively, applicants can simply apply for an ordinary extension of time for a period longer than three months, if it is available. However, such an application will attract applicable fees. Where such an extension is sought IP Australia has advised that “Where we have discretion we will seek to apply it”.

Time Limits for applying

Streamlined extensions will be available initially from 22 April 2020 until at least 31 May 2020.

Flexibility of PCT deadlines

Regarding the flexibility of Patent Cooperation Treaty (PCT) deadlines, IP Australia intends to follow the recommendations of WIPO contained in the recent interpretation of PCT Rule 82quater.1.

The Rule provides for excuse of delay in meeting PCT time limits (which may relate to the submission of documents and/or the payment of fees), due to reasons of force majeure (“war, revolution, civil disorder, strike, natural calamity… or other like reason”). The position of the International Bureau of WIPO is that the current global pandemic should be considered to be a “natural calamity …. or other like reason”

IP Australia has adopted a similar interpretation of the wording of PCT Rule 82quater.1 and considers the COVID-19 global pandemic a “natural calamity …. or other like reason”. Therefore, extensions of time requested under PCT Rule 82quater.1 may cite COVID-19 related reasons and will not be required to provide evidentiary detail of the COVID-19 impact in their locality.

IP Australia as a Receiving Office will also delay the processing of notifications of withdrawal under PCT Article 14(3)(a)) due to late or non-payment of fees until 31 May 2020. IP Australia will also delay such notifications for at least one further month in relation to deadlines which have expired over two months previously.