29 March 2021

Free, Streamlined Extensions of Time to End at IP Australia, but COVID Impact Can Still be Considered Under ‘Normal’ Procedures

First aidSince April last year, IP Australia has provided a streamlined process under which most deadlines associated with Australian patent, trade marks, and design rights – including evidence deadlines in opposition matters – could 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’.  That program ends on 31 March 2021.  From 1 April 2021, extensions of time will still be available for those impacted by the COVID-19 outbreak, but will be considered on a case-by-case basis.

Under the streamlined program, a party seeking an extension of time has been required only to tick a box in order to make a declaration that the impacts of COVID-19 had prevented a relevant act from being carried out within time.  This is much simpler (and cheaper) than the usual process, under which detailed evidence is required – typically in the form of a formal declaration or affidavit, along with any relevant accompanying exhibits – demonstrating exactly how events and/or circumstances have prevented the deadline from being met.  Additionally, official fees have been waived under the streamlined program.  These are typically based on the number of months of additional time requested, and can be quite substantial, e.g. up to A$1500 for a three-month extension of time to file evidence in a patent opposition.

While a blanket waiver of fees is unusual, it is clearly within the power of IP Australia to choose not to levy a fee for any service that it provides.  However, it is not within the agency’s power to waive the requirements of the Patents Act 1990 or the Patents Regulations 1991 (or corresponding legislation and regulations relating to other IP rights) with regard to the grounds upon which extensions of time may be legitimately granted.  In principle, therefore, streamlined extensions have generally been considered under existing provisions allowing for deadlines to be extended where ‘circumstances beyond the control’ of the responsible person(s) have prevented an action from being taken within the required time.  Ticking of the ‘COVID-19 box’ has thus been treated as prima facie evidence that the pandemic was, indeed, the cause of a failure to meet a deadline, with IP Australia warning that a false declaration could put the validity of the applicant’s IP rights at risk.

The initiative to make obtaining COVID-19 extensions simpler and cheaper was further complicated by the fact that in proceedings involving other parties, IP Australia is usually obliged to give those other parties an opportunity to comment on, and/or object to, the grant of an extension of time.  This obligation could not be suspended, and there were at least two patent matters in which objections were lodged.

With practices and procedures for requesting extensions of time returning to normal (or, at least, ‘COVID-normal’), it is to be expected that any party requiring an extension as a result of the impact of COVID-19 will bear a greater onus to demonstrate exactly why an extension is justified.

Streamlined Process Did Not Suspend Substantive Requirements

The fact that the underlying provisions and procedures governing extensions of time were unchanged by the streamlined request process has been demonstrated by two published Patent Office decisions, both of which resulted from objections filed by other involved parties. 

  1. In Shell Internationale Research Maatschappij B.V. v Yara International ASA [2020] APO 55, the patent applicant (Yara) objected to a request by Shell for a three-month extension of time within which to file a Statement of Grounds and Particulars (SGP) in its opposition to the grant of a patent to Yara.  Unusually, Shell made its request at the same time that it filed its Notice of Opposition, i.e. in advance of the period for filing of the SGP.  This was presumably in anticipation of the impact of COVID-19 on the responsible person within the company (who was located in the UK).  In responding to the objection, Shell prepared and filed more detailed evidence of the impact of the pandemic – as would have been required anyway in ‘normal’ circumstances – and was ultimately granted the requested extension.
  2. The other decision, Andrew Bodlovich and Kevin Gleeson v Green Camel Pty Limited [2021] APO 6, concerned a request for an extension of time to file evidence in an entitlement dispute under section 36 of the Patents Act.  In this case, no additional evidence of the need for additional time was filed, beyond the ticking of the ‘COVID-19 box’ when making the request.  Nonetheless, the Commissioner’s Delegate granted the extension, finding the tick-box declaration similar to ‘a doctor’s certificate – although ephemeral on detail it has indubitable evidentiary value in establishing that COVID did have a material effect on the Applicant’s preparation.’

Both of these decisions were, I think, generous, and might not have gone the same way in ‘normal’ circumstances.  This is, however, consistent with the fact that the streamlined process was intended to be generous, and – in common with other government programs – to make special allowance for the unique circumstances of the COVID-19 pandemic.  I doubt that it is a coincidence that IP Australia’s program is ending at the same time as the Australian government’s JobKeeper wage subsidy scheme, as the country moves back to a more ‘business as usual’ footing.

Conclusion – Returning to ‘COVID-Normal’

Parties to proceedings before IP Australia, including residents of other countries that are continuing to experience significant outbreaks of COVID-19 with ongoing restrictions and lockdowns, may continue to apply for extensions of time for any valid reason, including effects of the pandemic.  However, those requests will now be subject to the ‘normal’ rules and procedures.  Official fees will once again be payable, and substantive evidence will be required to justify the grant of an extension – whether or not any objections are raised by third parties.  In most (if not all) cases, a conclusory declaration to the same effect as the ‘tick box’, stating merely that the impacts of COVID-19 prevented a required action from being carried out within time will not be sufficient.  While such statements will generally be accepted as being true, in the absence of sound reasons to believe otherwise, in normal circumstances they are not enough to enable IP Australia to decide whether or not an extension is justified.  Typically, a time-line must be established making clear the intentions of the party requesting an extension, the actions (if any) that were taken towards meeting the deadline in question, and the specifics of how the pandemic prevented the time limit from being met.

My expectation would be that in cases where COVID-19 has clearly disrupted the ability of a party to work efficiently towards completing an action within the required time, IP Australia will continue to take a reasonably generous view of the evidence provided.  However, nobody requesting an extension of time will be entitled to presume – as has largely been the case for the past year – that it will be enough merely to point the finger at COVID-19 in order for an extension to be granted.


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