Extensions in the time of COVID - Commissioner of Patents warns against prospective extensions

In recognition of the interruptions to business and difficulties with accessing business documents, IP Australia has provided a streamlined process for extension of time requests. Associated fees are waived to assist those impacted by the COVID-19 outbreak.  The extension is simply sought by "ticking a box" and there is no need to provide any additional written explanation. That the requestor has been impacted by COVID-19 is accepted unless there are sound reasons to question their veracity.

An extension of time of up to three months is available and further extensions of time for up to 3 months are now available if required.

This arrangement applies to most Patents, Trade Marks, and Designs extension of time requests and this streamlined process has been in place since April 2020 and is currently in place until 28 February 2021. IP Australia will access the ongoing need for such extensions as this date approaches.

However, the streamlined extensions should not be treated as a general power of extension. The extensions should only be available where COVID-19 has prevented the relevant person from performing the act in the required time. If the granting of the extension is objected to, the requestor needs to provide full and frank disclosure of the circumstances that justify the request for an extension at that time, including the reasons why no strategies were available to mitigate the impacts: Shell Internationale Research Maatschappij B.V. v Yara International ASA [2020] APO 55.

In contested proceedings, if the other party to the proceedings objects the Registrar of Trade Marks / Commissioner of Patents will have to consider if there were grounds under the relevant legislation (Trade Marks Act 1995 / Patents Act 1990) to grant the extension. Under both the Trade Marks Act and the Patents Act there is a discretion to grant an extension of time in limited specified circumstances.

In circumstances where the request for the extension was made prospectively, based on circumstances that might arise in the future rather than a retrospective disclosure of circumstances, this counted against the requestor. This was because the Commissioner was of the view that if a party can anticipate on-going delays then presumably they can also plan and take action to mitigate their impact. The Commissioner was concerned that a party obtaining an upfront extension and working to an extended deadline may not be as diligent in completing their work, or as motivated to consider and implement mitigating strategies that could enable them to meet the original deadline.

If you have a deadline at IP Australia approaching and the impacts of COVID have meant that you are unable to meet that deadline, contact us to discuss your strategy moving forward.

Elena Szentiványi - 26 January 2021

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