IP Australia has announced that, as of 22 April 2020 up until at least 31 May 2020, most deadlines associated with Australian patent, trade marks, and design rights – including evidence deadlines in opposition matters – can be extended by up to three months, at no charge, if the extension is required ‘due to the disruptive effects of the COVID-19 pandemic’. Free extensions are also available for many deadlines associated with plant breeder’s rights (PBR), although due to specifics of procedures and the PBR legislation these are being handled differently, and often on a case-by-case basis.
The streamlined process for requesting an extension of time involves filing the request online, via the eServices portal, and specifying that the extension is required for ‘circumstances beyond the control of the person’ concerned. The only supporting documentation required is a simple declaration stating that the reason the existing deadline cannot be met is ‘due to the disruptive effects of the COVID-19 pandemic’. IP Australia has provided a proforma document containing standard text that may be used for this purpose. At present, eServices still requires the usual fees to be paid, however IP Australia will refund the fee, and is working to update eServices so that the fee can be waived. It anticipates that this change will be in place by the end of April.
This streamlined process, and the waiving of fees, are (to my knowledge) unprecedented. It is particularly notable that the process and fee waiver apply to extensions of time to file evidence in opposition proceedings, for which the normal extension fees are A$500 per month, and extensions have been significantly more difficult to obtain since commencement of the Raising the Bar reforms in 2013.
In ‘normal’ times, a party requesting an extension of time is required to provide substantive evidence, in the form of a declaration along with any supporting documentation, which may be subject to close scrutiny by IP Australia to determine whether the extension is justified. Depending on the circumstances, and the type of extension being sought, other interested parties may have the opportunity to comment and/or oppose the grant of an extension. In oppositions, in particular, it is common for other parties to the opposition to challenge requests for extensions of time.
In these ‘abnormal’ times, however, I suspect that challenges to COVID-19 extension requests are unlikely to be entertained by IP Australia. Requests for extensions under section 223 of the Patents Act 1990, need not be advertised for opposition purposes if they are for no more than three months – as is the case under the streamlined process. Regarding extensions to patent opposition deadlines under regulation 5.9, it appears that IP Australia intends to accept at face value requests based on the standard text, without requiring any further evidence or documentation, which may leave other parties with no real basis to challenge the justification for the extension. In any event, if challenges to streamlined requests are permitted, they will cease to be streamlined, which would defeat the purpose of the process!
Further Details, Limitations, and Exceptions
There are some limitations and exceptions to the streamlined extension process. Firstly, the practice only applies to time periods that are already extendible under the existing legislation and regulations. It does not permit extensions of time to be obtained where these are not otherwise available.Furthermore, the process does not apply to extensions of time to pay maintenance fees (i.e. continuation and renewal fees). Extensions of up to six months are automatically available, as of right, for payment of maintenance fees, which rights-holders will be able to take advantage of, as usual, to help them defer costs during COVID-19 lockdown. In this case, however, the normal extension fees of A$100 per month will be payable along with the delayed maintenance fees, when they are eventually paid.
The streamlined process also does not apply to payment of patent attorney registration fees (which will, in any case, not fall due until 1 July 2020, with an effective final deadline of 31 July 2020 – outside the period during which streamlined extensions are currently being offered), or to applications for an extension to the term of a patent. And it does not apply to deadlines that are beyond IP Australia’s powers, including time periods in matters before the courts or the Administrative Appeals Tribunal, and deadlines relating to international applications where IP Australia is acting as Patent Cooperation Treaty (PCT) Receiving Office.
With regard to PCT deadlines, however, IP Australia has indicated that it intends to follow the recommended practice of the World Intellectual Property Organization (WIPO) contained in its recent interpretation of PCT Rule 82quater.1. This Rule provides for delays in meeting PCT time limits to be excused due to ‘war, revolution, civil disorder, strike, natural calamity… or other like reason’. WIPO’s position is that the current global pandemic should be considered to be a ‘natural calamity … or other like reason’, and that it will ‘treat favorably any PCT Rule 82quater request made citing COVID-19 related issues and not require evidence to be provided that the virus affected the locality in which the interested party resides.’ In practice, therefore, IP Australia will treat requests to extend PCT deadlines similarly to its streamlined process for national deadlines.
There are additional restrictions on the availability of streamlined extensions for trade marks and, as I have already noted, PBRs are necessarily treated differently due to differences in process and legislation. Further details can be found on IP Australia’s website.
Finally, my understanding is that the streamlined process fully applies only to an initial three month extension of time. The formal notices of the fee exemptions for patents, trade marks, and designs, specifically require that ‘[t]he request relates to an extension of time of 3 months or less (taking into account any previous extensions)’ (emphasis added). Accordingly, where a further extension of time is being requested to an already-extended deadline, it appears that the fee exemption will not be available for any period exceeding three months in total. It is not clear whether the relaxed evidentiary requirements will continue to apply in such cases. IP Australia would retain discretion in this regard, since – in contrast to fee exemptions – no formal notification of the practice is required.
As I noted at the outset, the streamlined process and fee waivers are currently in effect up until 31 May 2020. I expect that, like other organisations and government authorities, IP Australia will continue to monitor the situation, and may consider maintaining the practice beyond this date if business conditions remain challenging due to the COVID-19 pandemic.
Tags: Australia, COVID-19, Extensions of time, Patent Office
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