30/04/2020

As the world fights the COVID-19 pandemic IP Offices around the world, like IP Australia and the Intellectual Property Office of New Zealand (IPONZ), are accommodating the current reality. As with Courts and other governmental institutions, these offices have adopted measures such as relaxing some statutory deadlines and handling matters in accordance with social distancing practices. Unlike many overseas offices (such as in the USA and various Asian countries), there is no automatic extension of deadlines falling within different specified periods in Australia.  However, IP Australia has announced that as of 22 April, customers impacted by COVID-19 can submit requests for extensions of time (for up to three months) through eServices, free of charge.

Our Trade Mark and Patent Lawyers are also keen to accommodate at this challenging time and can assist you and your clients in liaising with IP Australia or IPONZ on any issues with IP applications (including International Registrations designating Australia), deadlines and/or hearings. We are fully operational working from home and can organise video conferences, calls and online meetings, as required.

Australia

In response to the COVID-19 pandemic, IP Australia has published a business continuity statement which sets out some useful guidelines on navigating the current situation and has announced that customers impacted by COVID-19 can submit requests for extensions of time (for up to three months) through eServices, free of charge. This applies to most patents, trade marks, and designs extensions of time requests (PBRs are dealt with on the ‘frequently asked questions’ page of IP Australia’s website).

Generally speaking, IP Australia is open for business as usual, having adopted working arrangements and necessary changes to comply with COVID-19 restrictions. Since IP Australia ordinarily operates in an advanced digital environment, we do not anticipate there will be significant changes in terms of how firms and clients communicate and work with IP Australia to accommodate social distancing and remote working arrangements. 

Nevertheless, as set out below, there are several important points to observe in terms of engaging with IP Australia during this time.

Most of IP Australia’s staff are now working remotely.  Correspondence (including Certificates of Registration), document lodgement and payments are dealt with electronically, predominantly via the eServices portal.

There may be however, some delays in fulfilling requests for documents, for example, under section 55 of the Patents Act 1990 (Cth) or section 217A of the Trade Marks Act 1995 (Cth), where such documents are kept in hard copy form only.

Hearings

In person hearings have ceased and will be conducted via video conferencing or by telephone. Web-based video conferencing accessed through an on-line link will be available to accommodate parties appearing remotely. Alternatively, the parties may opt to be heard ‘on papers only’ meaning that the decision will be made based on evidence and written submissions filed by the parties.

There has been no change to how written submissions are received – they are to be filed on-line in accordance with directions of the Hearing Officers. For proceedings that have been scheduled for face-to-face hearings, IP Australia will be in contact with the parties involved to discuss suitable alternatives.  As a substantial number of IP Australia hearings are already conducted in this way, we do not expect that this will result in a significant change in approach. 

In light of IP Australia’s caseload, we also understand that the current timeframe for a hearing is approximately 7 months from the date of request.  In appropriate cases, we believe it may be possible to accelerate this timeframe through the use of novel technological approaches and remote hearings which remove the need to physically attend hearings at IP Australia premises.  Cost savings can also be achieved by remote attendances. See ‘extensions of time’, for more detail, below.

To facilitate the preparation of written evidence during this period, we recommend that parties utilise a declaration under the Trade Marks Act 1995 (Cth) and the Patents Act 1990 (Cth) rather than a Statutory Declaration, which needs to be witnessed before a suitably qualified individual.

IP Australia’s overall approach to extensions of time – we’re monitoring

IP Australia recognises that the effects of the COVID-19 outbreak may have an impact on the ability of applicants and their representatives to process applications, stating that where an applicant cannot carry out an action within time due to the COVID-19 outbreak an extension of time may be available. 

Previously, IP Australia has stressed that certain time periods cannot be extended as there is no legislative provision for extensions.  This means that current practice should continue to be guided by the various Examiners’ Manuals and that parties must diligently pursue all matters before IP Australia.  Parties should not assume that procedural leeway will be given because of the COVID-19 outbreak and should instead proceed on the basis that the high bar to obtaining an extension (where one is permitted by legislation) requiring extensive supporting evidence remains the status quo.  If you have any uncertainty regarding managing deadlines and the approach that should be taken if your business has been affected by the COVID-19 outbreak please do not hesitate to contact us for further information.

As mentioned above, the organisation has now announced that customers may submit requests for extensions of time (for up to three months) and that this applies to most patents, trade marks, and designs extensions of time requests.

We will continue to monitor updates from IP Australia and provide further updates promptly to ensure that you are informed of all relevant developments in IP Australia practice.

Where extensions may be available

Broady, IP Australia has signalled that extensions of time may be available where applicants cannot carry out an action in time due to the COVID-19 outbreak (subject to an application being supported by a declaration setting out in detail how the COVID-19 outbreak interfered with responding in time) in situations, such as:

  1. seeking an extension of the acceptance deadline of a trade mark beyond the usual 21 months’ since the issuance of the first examination report;
  2. seeking an extension of time to oppose a trade mark/removal of the trade mark for non-use; and
  3. seeking an extension of time to file evidence in opposition or non-use removal proceedings.

Please note, however, that certain statutory deadlines may not be extended (eg, trade mark renewal deadlines). We can help you to determine what the situation is appropriate to your circumstances.

Timeframes

IP Australia is currently experiencing delays in the examination of trade marks (marks filed in November 2019 are currently being examined). Hearings are allocated to a Hearing Officer at least 7 months after a party requests to be heard in an opposition or a non-use removal matter.  

However, the turnaround of miscellaneous requests (eg. examination of divisional applications, recordals of change of name/ownership) has improved.

Further updates are available here.

New Zealand

IPONZ has issued a notice stating that, due to staff working remotely, typical processing and response timeframes will not be met.

However, extension of time requests will be treated favourably (and seemingly with less formality than IP Australia) and, where IPONZ does not respond in relation to a time-sensitive matter within the prescribed time (eg, in relation to submissions filed shortly before the acceptance deadline), the deadlines will be treated as conditionally met.

IPONZ has not announced any changes to how hearings will be conducted. Existing options include hearings conducted on the papers already filed, by filing written submissions and by video conference. In the absence of any announcements stating otherwise, it appears that these processes continue to operate.

Further information on IPONZ services during COVID-19 is available here.

WIPO

WIPO is continuing operations under the Madrid System for the registration of “International” trade marks, having adopted remote working arrangements.  In relation to the Madrid Protocol applications, WIPO has relaxed some deadlines and will only be automatically extending deadlines affected by closed IP Offices.

WIPO will only be accepting and sending electronic communications until further notice. Parties are strongly advised to use WIPO’s online services. WIPO will also be delivering certified copies of certificates for international registration and renewal, attestations, and detailed certified extracts electronically as PDFs.

Extensions of time

WIPO has indicated that some remedies and extensions of time will be available where applicants fail to meet time limits due to the COVID-19 outbreak. These include:

  1. A failure to meet a time limit for a communication may be excused where postal services or electronic communications are disrupted due to the COVID-19 outbreak. Parties must send that communication within five days of regaining access to postal services or electronic communications and provide sufficient evidence (such as an official announcement or an attestation by a certified physician) in order to be excused.
  2. Applicants or holders who have failed to meet certain processing time limits specified by WIPO may request continued processing by lodging a request in the relevant form set out in the regulations. If the request meets all prescribed requirements, WIPO will continue processing the international application, subsequent designation, payment or request instead of treating it as abandoned or cancelled.
  3. Time limits concerning a closed IP Office will be extended to the first subsequent day on which the IP Office is open to public.

Further information and updates on Madrid Protocol applications is available here.

Authors: Lisa Lennon, John Lee, Chris Williams, Mindaugus Skavronskas , Sidney Kung

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