IPONZ and IP Australia services during COVID-19

Both IPONZ and IP Australia provide all their services through electronic portals. Therefore, it is business as usual for filing applications and other correspondence with either office. However, both offices recognise the unprecedented nature the effects of the COVID-19 outbreak is having on businesses and have modified their processes and practices to support businesses and where possible will extend deadlines.

Updated practices implemented by IPONZ

While a number of transactions will be possible in the usual course of events, if circumstances related to COVID-19 has affected the IP owner's ability to respond by a deadline any extension of time sought will be treated favourably by IPONZ.

IPONZ is taking proactive action in relation to the due dates for a number of cases and tasks in acknowledgement of the disruption caused by COVID-19 and extending the deadline for certain types of responses automatically. These include the following:

  • 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
  • Deadlines for having a patent application in order for acceptance (Patents Act 2013, section 71)
  • Deadlines to respond to design examination reports
  • Deadlines to respond to trade mark compliance reports, provisional refusals and subsequent compliance reports (national and international trade mark applications)
  • Deadlines to file evidence for proceeding cases (oppositions, revocations, applications for invalidity) apart from the initial deadline for an owner to file its counter-statement and evidence in response to an application for revocation on the ground of non-use (extensions can be requested).

Any qualifying due date will be automatically extended by three months. Such extensions are applied by IPONZ every Monday for any case or task due date for the upcoming week. IPONZ will continue providing extension in the above manner until 31 July 2020. IPONZ has advised that they will no longer provide the automatic extensions for cases and tasks whose due dates take place after 31 July 2020.

For more detailed information about extension of deadlines for patent matters please see our further article here.

IPONZ is closely monitoring incoming correspondence and dealing with any time sensitive matters. In the event IPONZ has not been able to deal with a time-sensitive matter within the prescribed time the deadline will be treated as having been conditionally met and the IPONZ delay in processing will be taken into account if further action is required.

Updated practices implemented by IP Australia

IP Australia continues to provide its services, modified where needed, to ensure compliance with COVID-19 restrictions. IP Australia acknowledges that the effects of the COVID-19 outbreak may impact the ability of applicants and their representatives to process applications.

In relation to any deadline, IP Australia has advised that where an applicant is having difficulties meeting timeframes because of the COVID-19 outbreak an extension of time may be available. Where IP Australia has discretion under the relevant legislation they will seek to apply it.

It is important to note that not all time periods can be extended so contact us if have an impending deadline and consider that you have basis for an extension.

In relation to extensions of time IP Australia has set up a streamlined process for extension of time requests. Associated fees are now waived or refunded to assist those impacted by the COVID-19 outbreak.

  • From 22 April 2020, customers impacted by COVID-19 can submit a request for an extension of time based on standard wording IP Australia has made available. .
  • An extension of time of up to three months is available and IP Australia has waived their usual fees for extensions.
  • 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.
  • These arrangements will be in place until 31 August 2020.
  • IP Australia are regularly reviewing these temporary arrangements and assessing whether they will be continued beyond 31 August 2020. The office advises that they will provide at least one week's notice before they cease.

We are closely monitoring any developments and notifications from both IPONZ and IP Australia and will provide an update to this article

If we can assist in any way please contact us.

Updated 22 July 2020

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