The Intellectual Property Office of New Zealand (IPONZ) and IP Australia have acknowledged that circumstances related to COVID-19 have affected the ability of applicants to respond to deadlines. Both offices have provided further updates on how their practices have been modified to extend deadlines.
IP Australia
IP Australia recognises that the ability of applicants and their representatives to process applications may be impacted. If circumstances related to COVID-19 have affected the applicant’s ability to meet a deadline, an extension of time may be requested.
IP Australia have provided a streamlined process for extension of time requests. This streamlined process is as follows:
- From 22 April 2020, customers impacted by COVID-19 can submit a request for extension of time through eServices. There is no need to provide any additional written explanation.
- An extension of time of up to three months is available and is free of charge. The usual fee is now waived automatically in eServices.
- This arrangement applies to most patents, trade marks, and designs extension of time requests. This arrangement does not apply to extensions of time for payment of renewal fees.
- Please note that where legislation requires it, the other party in an opposition matter must be given an opportunity to comment on the request for an extension of time. The comments must be made by way of written submissions only and must be submitted to us in seven business days.
These arrangements will be in place until 31 July 2020.
Fee exemption regulations
With changes made to the Intellectual Property Laws Amendment (Fee Exemptions) Regulations 2020, (“the Regulations”), IP Australia have more flexibility to offer certain fee exemptions for affected businesses in appropriate circumstances.
These Regulations were registered on 12 June 2020 and amend the Plant Breeder’s Rights Regulations 1994 and the Trade Marks Regulations 1995.
Hearings
Hearings will be conducted by video conference, telephone or written submission. Parties who have scheduled face-to-face hearings will be contacted by IP Australia regarding these options. We are already seeing hearings being scheduled by video conference and it would appear that hearings will go ahead if they can.
Further updates from IP Australia regarding COVID-19 can be accessed on its website.
IPONZ
IPONZ has recently updated the range of cases and tasks whose due dates may be extended in acknowledgement of disruption caused by COVID-19.
Due dates will be extended by three months for the following tasks:
- Deadlines for responding to provisional refusals and subsequent compliance reports, for international trade mark registrations designating New Zealand (NZDs).
- Deadlines to respond to patent examination reports (for both Patents Act 1953 cases and Patents Act 2013 cases);
- Deadlines to request examination for patent applications;
- Section 71 deadlines for patent applications;
- Deadlines to respond to design examination reports; and
- Deadlines to respond to trade mark compliance reports (for national trade mark applications).
Extensions for qualifying deadlines will be applied every Monday for any case or task due dates for the upcoming week. IPONZ will continue providing extensions in this manner until 31 July 2020.
When a deadline is extended by IPONZ, the primary contact in the IPONZ system will receive a notification of the extension.
IPONZ will not automatically extend deadlines for trade mark owners to file their counterstatement and evidence in revocation proceedings for non-use of a trade mark.
If circumstances related to COVID-19 have affected the ability to meet a deadline, an extension of time may be requested. IPONZ have advised that it will treat any such request favourably.
Further updates from IPONZ regarding COVID-19 can be accessed on its website.
James & Wells is closely monitoring any developments and notifications from both IPONZ and IP Australia and will provided updates where necessary. Please get in touch with us if we can be of any assistance.
