IP Australia is providing free extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  The period for requesting such an extension has been extended until 28 February 2021.  Depending on the ongoing impact of the pandemic, both in Australia and overseas, this period could be extended further. 

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.

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, these COVID-19 extension provisions are not a simple free-for-all (see our earlier article here: https://shelstonip.com/insights/briefings/ip-australias-covid-19-extensions-of-time-a-word-of-caution/).  An element of discretion does apply and, if asked, a requestor must be able to provide genuine reasons and evidence to justify the grant of the extension.  The timing of the request can be of significance too.  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.

For more information, or if you have been affected by the COVID-19 pandemic and require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Gareth Dixon, PhD

The Principals and Staff of Shelston IP wish to thank you for your support in a year filled with challenges.

Throughout this season, and as we move into a new year, we would like to wish you, your family and colleagues strength, health, and as much happiness as these times can allow!

As part of our ongoing commitment to the community, we have made a donation to Aussie Ark, the largest independently owned and operated conservation organisation in New South Wales.

All the very best to you in 2021.


Office Closure

Shelston IP is closed during the Christmas and New Year period:

Friday, 25 December 2020

Monday, 28 December 2020

Tuesday, 29 December 2020 and

Friday, 1 January 2021.

The Australian Intellectual Property Office (IP Australia) will be closed from Friday, 25 December 2020, until Friday, 1 January 2021.

All deadlines that fall due during this time will automatically be extended to Monday, 4 January 2021.

The New Zealand Intellectual Property Office (IPONZ) will be closed from Friday, 25 December 2020, until Monday, 4 January 2021.

All deadlines that fall due during this time will automatically be extended to Tuesday, 5 January 2021.

IP Australia is providing free extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  The period for requesting such an extension has been extended until 31 January 2021 Depending on the ongoing impact of the pandemic, both in Australia and overseas, this period could be extended further.

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.

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.

Many deadlines for patents, trade marks and designs are covered by these 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.

For more information, or if you have been affected by the COVID-19 pandemic and require assistance with your IP Rights, please contact us.

Authored by Serena White, DPhil and Gareth Dixon, PhD

Counterfeiting can be a significant problem for brand owners and legitimate rights holders. It directly undermines legitimate business through lost sales revenue and has the potential to strain relationships between IP owners and their licensees. The sale of counterfeit products can also damage the value of the associated brand in various ways. This could be where the counterfeit products are defective or of poor quality compared with the genuine article; or where unauthorised trade mark uses disrupt brand owners from effectively controlling the use of their brands, resulting in brands being presented to the market unfavourably or in a way that is inconsistent with the brand owner’s interests.

Even consumers seeking to do the right thing by purchasing legitimate products can be confused about whether a particular product is authentic or being traded through an authorised channel. This is especially the case in the context of online retail.

To help with combatting counterfeiters, IP Australia has begun trialling its “Smart Trade Mark” initiative with industry and government partners. The expectation is that the Smart Trade Mark will become an effective tool to identify and authenticate genuine products and sales channels, thereby resolving the potential for consumer confusion and allowing consumers to be confident that they are purchasing the genuine article from a legitimate source.

What is Smart Trade Mark?

The Smart Trade Mark is a digital platform that uses blockchain technology to enable businesses to verify that certain products, sales channels and trade mark uses are legitimate by linking them to their registered trade marks as published on the Australian Trade Marks Register.

How Smart Trade Mark works

The platform currently being trialled involves 3 main steps:

  1. The trade mark owner submits certain product information and/or domain addresses to IP Australia;
  2. IP Australia stores the details and authenticates the trade mark by linking the details provided by the trade mark owner to the Australian Trade Marks Register; and
  3. A Trust Badge is displayed on the relevant websites notified to IP Australia. Consumers can verify the Smart Trade Mark digitally by referring to the Trust Badge, which links through to details of the registered trade mark and information confirming that the website is verified.

NRL

The NRL (Australian Rugby League Commission Limited) is one of the key industry partners trialling the Smart Trade Mark. Shaun McMartin, NRL’s General Manager Consumer Business, sees the Smart Trade Mark as a potential “game changer” for similar businesses, stating that:

NRL members and fans are the lifeblood of our sport who want to buy the genuine article when supporting their club – the Trust Badge helps NRL fans identify authentic and licensed products online

The Smart Trade Mark is currently used by the NRL at www.nrlshop.com and by one of its authorised distributors at www.savvysupporter.com.au to indicate that both are legitimate sources of authentic NRL merchandise.

Shelston IP is proud to act for NRL in connection with protection and maintenance of its trade mark portfolio. Along with the NRL, we are excited by the prospects of Smart Trade Mark becoming an effective tool in the fight against counterfeiters.

Smart Trade Mark will be made available to all Australian trade mark owners if the trials are successful. IP Australia has not provided a specific timeframe for completion of the trials. However, trade mark owners can register their interest and subscribe to receive further updates at – https://smarttrademark.search.ipaustralia.gov.au/.

Authored by Felipe Pereira and Michael Deacon

The Australian Trade Marks Office (‘IP Australia’) has recently announced official fee changes effective from 1 October 2020.

The most significant change is an increase to trade mark application fees.

The official fees payable (per class) for a standard application are being raised from AU$330 to AU$400. This provides an even greater incentive to utilise IP Australia’s option of a pick list of goods and services, whose classifications have been pre-approved. If the pick list option is selected at the time of filing, the official fees charged are only AU$250 per class. While the pick list does not allow for tailored or very precise descriptions, the broad descriptions available are suitable for use in a majority of cases.

Another key change is the modified fee schedule for trade mark hearings. Among other changes, parties seeking to rely solely on written submissions will need to pay a fee to have those submissions considered. There are also additional charges for attending a hearing in person (when those eventually become available), rather than by video or teleconference.

Further changes relate to the filing of International Registrations designating Australia, series applications, and the renewal of registrations in the unusual case of the application process taking more than 10 years. The full list of relevant fee changes being implemented may be found in the table below.

Shelston IP utilises the “Preferred Means” option for relevant items, which incurs lower fees than other means.

If you have any questions about these fee changes, or wish to file a trade mark application in Australia prior to the increases, please feel free to contact our team for advice and assistance.

Australian Trade Mark Fee Changes – from 1 October 2020

Fee Description

Old Fee (AUD)

New Fee (AUD)

Madrid Import Application – First Class*

*Please note: Changes to Madrid Import Application fees are not scheduled to commence until  12am AEDT, 7 November 2020

$350

$400

Madrid Import Application – Additional Classes*

$350

$400

Standard TM Application – First Class -No Pick List – Preferred Means

$350

$400

Standard TM Application – Additional Classes – No Pick List – Preferred Means

$350

$400

Series TM Application – First Class – No Pick List – Preferred Means

$480

$550

Series TM Application – Additional Classes – No Pick List – Preferred Means

$480

$550

Renewal of registration (registration delayed for 10 or more years after filing date) – Preferred Means

$450

$400

Late renewal of registration (registration delayed for 10 or more years after filing date) – Preferred Means

$450

$400

Trade Mark Hearing Fees

Request for a hearing under regulation 5.17, 6.9, 9.17, 9.20, 17A.34M, 17A.48S, 17A.48V or 21.20E

$600

Replaced by new item

Request for an oral hearing in relation to any other matter

$440

Replaced by new item

Attendance at an oral hearing under regulation 5.17, 6.9, 9.17, 9.20, 17A.34M, 17A.48S, 17A.48V or 21.20E

$600 for each day, or part of a day, less any amount paid under item 14in relation to the hearing

Replaced by new item

Attendance at an oral hearing to which item 16 does not apply

$400 less any amount paid under item 15 in relation to the hearing

Replaced by new item

Filing a request for a hearing

New item

$4000

Appearing and being heard at an oral hearing in person:
(a) for the first day
(b) if the hearing runs for more than a day

New item

$800 less any amount paid to request the hearing;
$800 for each day, or part of a day, after the first day

Appearing and being heard at an oral hearing in by means other than in person:
(a) for the first day
(b) if the hearing runs for more than a day

New item

$600 less any amount paid to request the hearing
$600 for each day, or part of a day, after the first day

Being heard on the basis of written submissions only

New item

$400 less any amount paid to request the hearing

Decision with reasons issued in accordance with section 55, section 101, regulation 17A.34N or 17A.48D

New item

$400 less any amount paid to request, attend or file submissions in relation to the hearing

Expedited Post Option for Document Requests

Expedited post option for urgent document requests

New Fee

$20

This article was written by Kasumi Champion, Trade Mark Assistant to Principal, Sean McManis at Shelston IP

Authored by Sean McManis

Official fees payable to IP Australia are changing as of 1 October 2020.  In this article, we cover off the changes in relation to patent fees only.  However, trade marks, designs and PBR fees will change also and will no doubt be the topic of other articles across our local industry.

Whereas the economic rationale for the increases appears sound, the timing of the changes is perhaps less than ideal.  That said, with a little forward thinking and proactive engagement from your patent attorney, the impact of the changes can perhaps be minimised.

Background

Following a fee structure review and public consultation in 2019 where over 80 submissions were made to IP Australia, a number of changes to official fees have made.  The fee changes are based on the feedback from public consultation and in accordance with the Australian Government Charging Framework and the relevant Productivity Commission recommendations.

An updated fee schedule will commence from 1 October 2020 affecting the gamut of Australian IP rights including patent, trade mark, design and plant breeder’s rights.  You can find the full list of changes to IP Australia’s fee schedule here.

The new fee schedule has been developed by IP Australia by considering at least the following factors:

  • Supporting innovators by balancing fees with costs of doing business;
  • Increasing flexibility and efficiency for IP Australia and stakeholders; and
  • Exploring the impact fees have on the quality of IP applications and competition in the marketplace.

The changes to fees will have the greatest impact on patent applicants.

Changes to patent fees

i) Excess claim fees

From 1 October 2020, excess claim fees will now be payable at acceptance at two tiers:

  • $125 for each excess claim greater than 20 and equal to or less than 30 claims; and
  • $250 for each excess claim greater than 30 claims.

Further, the official excess claim fee will be $250 for each additional new claim over 20 if the claims are added after acceptance (post-acceptance amendments).

These changes replace the previous excess claim fee of $110 for each excess claim over 20 which is an increase of over 200% in some cases.

The changes to excess claim fees are surprising only insofar as they have not closed off an exploitable (and indeed regularly exploited) loophole which allows for an applicant/attorney to rationalise the number of claims immediately prior to acceptance, thereby minimising the fee payable.  In an extreme situation (for instance, in the case of a large biotech specification) the Office may have to examine up to 200 claims, only to end up receiving payment for 20.  The economics of leaving this loophole open are a little puzzling – and we note that as recently as February 2020, the Intellectual Property Office of New Zealand (IPONZ) brought in a claim fees regime deliberately addressing this practice, whereby claim fees were made payable upon the maximum number of claims at any stage throughout prosecution.

ii) Renewal fees

While the majority of renewal fees will increase come 1 October 2020, the most significant hike will affect patents which have a pharmaceutical extension of term granted upon them (i.e., those extended beyond their regular 20-year term).

Pharmaceutical patent extended term

20th Year Renewal

21st Year Renewal

22nd Year Renewal

23rd Year Renewal

24th Year Renewal

Old fee*

$2,550

$2,550

$2,550

$2,550

$2,550

New fee*

$4,000

$5,000

$6,000

$7,000

$8,000

*online payment through IP Australia’s portal ($50 extra for other means of payment).

Again, the economic rationale behind these changes is understandable.  Any patent worth extending for up to five additional years should be able to readily absorb the increased annuities; this is, after all, the fabled “windfall” period of pharmaceutical patents. Of course, the increased fees can be avoided altogether by pre-paying all future annuities prior to 1 October 2020.

iii) Search fees

In good news for Australian innovators, IP Australia has significantly reduced the search fees for complete applications (patent voluntary preliminary search and opinion) from $2200 down to $950.

Commentary

As noted above, nobody appears to be questioning the need for IP Australia to better recover its overheads.  However, with the world in the grip of a pandemic, the timing of the changes may have raised one or two eyebrows.  That said, fee increases during times of COVID are not unprecedented, and it was only recently that the USPTO announced fee increases having effect from 2 October 2020.

Due to the significant impact the COVID-19 pandemic has had on business in Australia, it is not yet clear what impact these fee changes will have on Australian businesses in their IP strategy and management going forward.

Foreign applicants and instructors should look out for additional detail in otherwise “standard” letters being generated from Australian attorneys.  The new claim fees regime may take some getting used to at both your end and ours – and “claim-heavy” applications having an acceptance deadline in, say, October or November 2020 may require some proactive engagement and emergency surgery on your Australian attorney’s part.

If readers have any questions about the fee increases, please do not hesitate to contact any of our Shelston IP patent attorneys.

Authored by David Hvasanov, PhD and Gareth Dixon, PhD

For a number of years, Shelston IP has partnered with Girls Invent an organisation dedicated to inspiring and motivating girls to become successful innovators. At Shelston IP, innovation is our passion, and we are excited to support Girls Invent through our pro bono advice program in its mission to encourage innovation.

Girls Invent invited Allira Hudson-Gofers and Tam Huynh to take part in a podcast to discuss their successful careers and the influences that have shaped them to become the women they are today.

Tune in here to listen to what they had say.

Authored by Allira Hudson-Gofers and Tam Huynh

Innovation by small and medium enterprises (SMEs) plays a significant role in the Australian economy.  For such companies, it is important that they adequately capture and control the commercial path for each innovation so as to maximise their return on investment in research and development.

Many SMEs recognise that the starting point for capturing value in innovation rests in the various intellectual property (IP) systems – patents for inventions, trade marks for brands and copyright for original works to name a few.

In a bid to provide increased support for SMEs in relation to the various IP systems, IP Australia (the Australian Government agency tasked with administering IP rights and related legislation) has launched a new IP portal for SMEs – IP Australia’s SME Portal.

The SME Portal includes a number of useful tools and resources in one convenient location to assist SMEs in navigating the IP process.  The available resources include information on the fundamentals of IP (webinars, toolkits, how-to guides, etc) together with details of several programs and services designed to assist SMEs in the process of taking an innovation to market.

We believe the SME Portal will be a valuable resource of general information on IP for SMEs seeking to secure IP rights in Australia.  Should you have any specific questions concerning your current IP position, please contact us and we will be happy to assist.

Authored by Connie Land and Greg Whitehead

A number of New Zealand trade mark owners have recently received incorrect notifications in relation their International Registrations designating New Zealand (“IRNZ”).  The Intellectual Property Office of New Zealand (“IPONZ”) advise these incorrect notifications appear to be the result of a “system issue” concerning communications with the World Intellectual Property Organisation (WIPO) who are responsible for overseeing the International Registration system.

As a result, some IRNZ’s are currently displaying a different status on the WIPO and IPONZ databases.  For example, an IRNZ may have been accepted by IPONZ, but due to the “system issue” between IPONZ and WIPO, this mark may have (erroneously) been communicated to WIPO as a refusal.  Further, some trade mark owners have received notification from IPONZ and/or WIPO confirming their IRNZ has been formally (i.e. finally) refused, despite responding to the provisional refusal of the relevant IRNZ in good time.

IPONZ have now located the cause of this “system issue” and identified all relevant IRNZs where a notification was sent in error.  IPONZ are currently working with WIPO to reverse these transactions.  The current notifications on WIPO’s database are not expected to impact the status of the relevant IRNZs on the New Zealand Register of Trade Marks or IPONZ trade marks database.

If you or your clients are concerned about the current status of trade marks in New Zealand (including the status of any IRNZs), our firm can assist you by confirming the status of such marks or securing suitable trade mark protection in New Zealand.

Authored by Nathan Sinclair and Sean McManis

Shelston IP has been named as a finalist in the Australian Law Awards for Intellectual Property Team of the Year.  

Now in its 20th year, the Australian Law Awards, run in partnership with Principal Partner UNSW Law, bestows the industry’s most prestigious accolades recognising excellence across the entire legal industry.

The awards showcase professional development and innovation, celebrating both the individuals and firms that are leading the way in the industry.

Award recipients represent a true cross section of the legal industry, recognising the contributions of the profession’s most senior ranks through to its rising stars.

“It is our pleasure to mark the 20th year anniversary of the Australian Law Awards,” said Lawyers Weekly editor Emma Ryan.

“This annual event represents the premier benchmark for those operating in the business of law, covering vast practice areas, level of experience and contribution to the profession.

“I would like to congratulate all of the finalists for this year’s event. We look forward to celebrating with you soon.”

This recognition reinforces the strength of our service and dedication to our clients.

Authored by Duncan Longstaff