UPDATE: IP Australia response to COVID-19
27 April 2020
In light of the ongoing economic impacts arising from the current COVID-19 pandemic, Griffith Hack is pleased to advise that Australia’s patent office (IP Australia) has recently announced a streamlined process for extension of time requests for applicants adversely impacted by by COVID-19.
After lobbying by the Institute of Patent and Trade Mark Attorneys (in which Griffith Hack is an active participant) IP Australia has instituted these adjustments in addition to the previously highlighted changes (see here).
The following provides a summary of the features of these new measures:
- An extension of time of up to three months is available free of charge via a streamlined process which includes filing of a pro-forma Declaration stating that they are unable to (i) fully consider the prosecution of this right, (ii) pay the fee or (iii) undertake a some other action due to the disruptive effects of the COVID-19 pandemic.
- From 22 April 2020, customers can submit a request for extension of time through eServices using standard declarations. This includes most actions for patents, trade marks, and designs. For plant breeder’s rights, comparable measures for customers to obtain extra time are in place.
- Extensions of time for payment of renewal fees are not included. The six month grace period for renewals remain in place if applicants need to defer these fees, but standard late fees will apply.
- As per our earlier communication, extensions continue to be available on a case-by-case basis for anything not covered by the streamlined extensions (where available under existing legislation).
Griffith Hack encourages its clients and associates to get in contact if you benefit from any of these announced changes. We would however highlight the importance of ensuring that any extension application made on the grounds of business disruption due to COVID-19 is factually correct and not misleading because if the IP right is ever litigated, the opposing party might seek to examine the circumstances in which the extension application was made and allege that it was misleading.
For those looking for additional ways to free up working capital due to the impact of COVID-19, please see below Part 1 and Part 2 in our series outlining practical tips to help reduce IP portfolio expenses without compromising the protection of your IP.