Patent Office Deadlines and COVID-19

/ Madderns / Important Updates

With much of the world in some form of lockdown in a bid to control the spread of the coronavirus, normal daily functions can be severely hampered. What does this mean for deadlines relating to intellectual property (IP), such as patents, trade marks and designs?

If you use intellectual property systems around the world, you will no doubt be aware that obtaining IP protection is driven by many deadlines which need to be met to keep your rights alive.

In some countries, lockdown measures have seen Patent and Trade Mark Offices closed, unable to receive or process any actions relating to IP protection. In many cases, any deadlines that fall during the period in which the respective office is closed are deferred until the day of re-opening of the office in that country. Any of those required actions can be performed on the first day the office re-opens.

In some countries, deadlines for specific actions have been deferred, but deadlines for other actions remain in place and must be met as they arise.

The provisions are also changing rapidly in response to the spread or containment of the coronavirus, and it is important to keep up to date with the prevailing requirements in any given country.

In other countries, the Patent and Trade Mark Offices remain fully operational with staff working remotely and in compliance with the prevailing distancing restrictions, to process actions via electronic remote systems. In some of these cases, there is no deferment of deadlines, and all actions must be performed by their normal deadlines to avoid lapsing or the matter being abandoned.

The Australian Patent Office (IP Australia) and the New Zealand Patent Office (IPONZ) have both remained open and have been operating as usual. Accordingly, there has been no deferment of any deadlines and all actions must be taken when normally due. The offices however, recognise the unusual circumstances under which we are all operating and have made provisions in cases where Applicants are having difficulties meeting timeframes because of the coronavirus outbreak, to allow for an extension in some circumstances. An application to the office setting out the relevant circumstances in which the Applicant is struggling to meet timeframes is likely to be treated favorably when considering whether an extension should be granted.

Where the ability to meet a legislated deadline has been impacted by the coronavirus, IP Australia (the Australian Patent Office) is providing a streamlined process for applying on-line for extensions of up to three months. Extension fees are also being waived. However, these extension provisions do not apply for renewal fee payments. These provisions will be in place until at least 31 May 2020.

Your IP attorney will be able to keep you advised of the prevailing requirements for your matters in different countries as they adapt to the changing conditions of the pandemic.