IP Australia is providing free, streamlined extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19. Whilst the maximum length of extension that can be requested at one time is three months, additional extensions of time of up to three months are available if needed.
The period for requesting a streamlined extension has been extended until 31 March 2021. However, IP Australia now indicates that, subject to any further developments in the COVID-19 pandemic, streamlined extensions will not be available after 31 March 2021.
What are the streamlined extensions?
IP Australia has implemented a streamlined process for requesting an extension of time of up to three months when an IP Rights holder is unable to meet a deadline due to the disruptive effects of the COVID-19 pandemic. No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic.
However, the streamlined extensions are not a simple free-for-all (see our earlier article here). If asked, a requestor must be able to provide genuine reasons and evidence to justify the grant of the extension. In addition, IP Australia warns that a false declaration could put the validity of an IP right at risk.
Many deadlines for patents, trade marks and designs are covered by the streamlined extensions of time, including deadlines associated with oppositions and hearings processes (such as periods to file evidence). However, there are some exceptions. For example: these extensions of time do not apply to deadlines for payment of renewal fees for patents, trade mark and designs, for which the usual 6 month grace period applies. For trade marks, these extensions are also unavailable for filing of divisional applications.
What if I want to request an extension of time after 31 March 2021?
If you are unable to meet a deadline due to the COVID-19 pandemic, it will still be possible to request an extension of time after 31 March 2021. However, such an extension will not be available via the streamlined process and a declaration will be required to explain why you cannot meet the deadline.
The grant of an extension of time due to the effects of the pandemic does involve an element of discretion. Such extensions fall under section 223(2)(b) of the Patents Act 1990, according to which an extension of time “may” be provided if a deadline is missed because of “circumstances beyond the control of the person concerned”.
Requests for extensions of time due to COVID-19 made after 31 March 2021 will be considered on a case-by-case basis and the Commissioner’s/Registrar’s review will consider the impacts of the pandemic.
We can help
For more information about extensions of time in Australia, see our earlier article here.
If you require assistance with your IP Rights, please contact us.
Authored by Serena White, DPhil and Gareth Dixon, PhD