Meeting patent deadlines in Australia and New Zealand during the Covid-19 outbreak

Covid 19 virus and its impact on trade mark services around the world

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  • Naleesha Niranjan - Associate, Patent & Trade Mark Attorney
  • Associate, Patent & Trade Mark Attorney

We understand that this may be a difficult time for you and your clients. Deadlines for which your client may wish to seek an extension of time in Australia and New Zealand are as follows:

  • National phase filing deadlines
  • Convention application filing deadlines
  • Final acceptance deadline for a patent application
  • Opposition deadlines such as deadline for filing an opposition and filing evidence
  • Patent renewal deadlines

Australia

IP Australia has announced that they are currently open for business and working remotely.

In line with physical distancing rules, any oral hearings such as opposition hearings will be conducted by video conference, phone or written submissions.

Extensions of time are available for those deadlines for which an extension of time is normally available.

To get an extension of time, a formal declaration will be required setting out how the Covid-19 outbreak interfered with responding in time.  In some cases, IP Australia may waive some fees associated with the extension of time.

There is no extension currently available for establishing an initial filing date by, for example, by filing a provisional application. This means that the 12-month grace period for establishing a filing date after a public disclosure cannot be extended.

If you or your client requires an extension of time for a patent deadline and/or for more specific advice, please contact your associate at Baxter IP.

New Zealand

IPONZ has indicated that they are operating as usual and that any extensions of time requests will be assessed on a case-by-case basis and sufficient detail or evidence will be required to support a request made as specified in the relevant Acts and regulations.

Typically, deadlines such as the national phase entry deadline or for responding to an examination report may be extended by the Commissioner. However, typically the Commissioner cannot extend the deadline for having the patent application in order for acceptance or the final acceptance deadline.

Under NZ law, an extension of time for responding to an examination report on an abandoned application may be available under exceptional circumstances.

If you believe an extension of time will be required for an upcoming deadline or if a deadline has been missed, we recommend that you contact your patent attorney at Baxter IP in advance, if possible.


If you have any questions about the above, feel free to contact a patent attorney at Baxter IP.