Update – Responding to Australian Intellectual Property Office deadlines during the coronavirus pandemic

We previously reported (1) that the Australian Intellectual Property Office (IP Australia) has a streamlined process to provide free extensions of time of up to three months to assist applicants impacted by the COVID-19 outbreak.  This arrangement is set to end on 31 March 2021.

Under the current streamlined process, anyone affected by the COVID-19 outbreak can apply for an extension of time of up to 3 months, by simply filing a short declaration outlining that a deadline cannot be met as a result of circumstances beyond the person’s control. No further supporting evidence or explanation is required when submitting the declaration.  IP Australia also waives the usual monthly extension fees.

Until 31 March 2021, this streamlined arrangement will continue to apply to most patents, trade marks and designs deadlines that were extendible under the existing provisions, such as requesting examination or obtaining acceptance.  This process is not applicable to extensions of time for payment of renewal or continuation fees.  Also, if an extension is requested during an opposition matter, IP Australia will give the other party an opportunity to comment on the request for an extension of time.

After 31 March 2021, those impacted by the COVID-19 outbreak will still be able to request extensions of time.  However, subject to any further developments in the pandemic, these requests will not be available via the streamlined process.  A declaration will be required to explain why the due date cannot be met, and such requests will be considered on a case-by-case basis.  It also appears that extension fees will no longer be routinely waived after this date.

We will continue to provide updates as they become available on the IP Australia website (2).

In the meantime, please do not hesitate to contact our team if you have any concerns or queries regarding your IP rights.

This article was written by Vanessa Yeung and Debra Tulloch.

2 March 2021