Australia Provides Free Extensions
17 September 2020
Due to the effects of COVID-19, IP Australia is providing free extensions of time of up to three months if a deadline cannot be met. While the maximum length of extension that can be requested at one time is three months, additional extensions of time of up to three months are available if needed.
Currently, these free extensions of time can be requested until 31 October 2020. Depending on the ongoing impact of the pandemic, both in Australia and overseas, this period could be extended.
“Many deadlines for patents, trademarks and designs are covered by these streamlined extensions of time, including deadlines associated with oppositions and hearings processes (such as periods to file evidence),” says Serena White, Senior Associate, Shelston IP. “However, there are some exceptions. For example, these extensions of time do not apply to deadlines for payment of renewal fees for patents, trademarks and designs, for which the usual 6 month grace period applies. For trademarks, these extensions are also unavailable for filing of divisional applications.”
According to White, In normal circumstances, when requesting an extension of time in Australia it is necessary to pay an official fee and provide a declaration to justify the request for an extension of time. She says that for example, when requesting an extension of time under section 223(2) of the Patents Act 1990, the declaration must provide full and frank disclosure of (a) all the surrounding circumstances that led to the relevant act not being done in time as a result of an error or omission or (b) the circumstances beyond the control of the person concerned. “The request is then assessed against IP Australia’s various criteria before being allowed or rejected,” she says.
But under the streamlined procedure, no declaratory evidence or fee is required - all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic. The requested extension is allowed automatically.
“The purpose of these extensions is to ensure that IP rights are not adversely affected as a result of the global pandemic,” says White. “IP deadlines can be unforgiving, so the provision of these free extensions of time in these unprecedented circumstances is a really positive step for IP rights owners.”
How has COVID affected Australia in general?
“As in many professions, there has been a transition to working from home,” says White. “This transition to remote working was made easier by our work environment already being largely paperless. In addition, many client meetings which would previously have been held in person have taken place by videoconference. Broadly speaking, the number of new filings for patents, trademarks and designs over the past few months has been within the boundaries of what we would expect in a usual year based on historical data. The lapse rate of patent applications has also been within the normal range. The filing rate of innovation patents in Australia is up significantly, but this is not an effect of COVID-19; it is a predictable consequence of the upcoming abolition of innovation patents in Australia.”
She adds, “I would say that the future of IP in Australia is bright. IP is key for the protection of innovation and remains an important part of a business’ value.”
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