Legal Update – June 2020
by Katarina Klaric and Peter Divitcos, Stephens Lawyers & Consultants
IP Australia is the Australian Government agency responsible for the administration of the intellectual property rights system and legislation and registration of patents, trade marks, designs and plant breeder’s rights (“PBR“).[i] IP Australia has recognised the impact of COVID-19 on many IP rights holders seeking to protect and maintain their IP rights. The agency has implemented a number of measures to streamline its processes and to comply with the COVID-19 restrictions to ensure the safety of its customers, staff and the public. With the COVID-19 situation constantly changing in response to government directions or mandates, it is recommended that users of IP Australia’s services check for regular on-line updates concerning IP Australia’s response to COVID 19 – www.ipaustralia.gov.au
IP Australia, as the Office and Authority in Australia under the Patent Cooperation Treaty (PCT), has indicated that it intends to follow the World Intellectual Property Organisation (WIPO) recommendations contained in the recent interpretation of PCT Rule 82quater.1 (“the Rule“). The Rule provides that reasons of force majeure (“war, revolution, civil disorder, strike, natural calamity…or other like reason“) is an excuse for delay in meeting PCT time limits. The International Bureau of WIPO considers the COVID-19 pandemic to be a “natural calamity…or other like reason“.[ii] However, WIPO have acknowledged that the Rule is not “an effective remedy in a situation in which an international application had lost its legal effect as a result of having been declared considered withdrawn” such as a failure to pay fees within a prescribed time limit.[iii]
IP Australia is also a participant of the COVID-19 Policy Tracker launched by WIPO which provides information on measures adopted by IP offices on a country or region basis in response to the pandemic.[iv]
In summary all IP Australia services for filing, opposition to, registration and renewal of IP rights continue to operate as normal, with some modifications to processes in response to COVID 19, which are outlined below.
Measures introduced by IP Australia in response to COVID-19
IP Australia eServices Platform – Filing documents, Payments and Correspondence
IP Australia operates an online service platform, known as eServices (“IPA eServices“) for applying for, obtaining, amending and renewing IP rights.[v] IPA eServices was available before the outbreak of COVID-19.
IP Australia’s eServices can also be used to make all necessary payments to IP Australia.[vi]
In response to COVID 19, as of 1 April 2020, IP Australia ceased to accept documents and payment in person. Individuals and companies have been required to use IP Australia’s online eServices platform for all filings and payments.[vii] An Australian agent is required, where the individual or company seeking to use IP Australia’s services is located outside of Australia.
Where postal services in a location are interrupted by COVID-19, individuals and companies can register to receive official correspondence from IP Australia digitally via IP Australia’s eServices platform.[viii]
Online searches of IP registers maintained by IP Australia
The IP Australia website allows users to undertake electronic searches of the patents, trade marks, designs and plant breeder’s rights (“PBR“) registers and records maintained by IP Australia. Searches could be undertaken by users before COVID-19.
Contacting IP Australia during COVID 19
IP Australia is responding to requests and enquiries during COVID 19 through its online service and contact centre:
Telephone (Local): 1300 651 010
Telephone (International): +61 2 6283 2999
Email enquiries via the Contact Us Form: https://www.ipaustralia.gov.au/about-us/contact-us-form
IP Australia continues to respond to requests and enquiries as quickly as possible during COVID-19. To date, there have not been delays in delivery of IP Australia’s services.
Trade Mark COVID-19 Hotline
IP Australia have introduced the Trade Mark COVID-19 Hotline to provide information to businesses affected by COVID-19 about the options available to them in relation to trade mark registration. The service can be accessed by sending an email to firstname.lastname@example.org including contact details, information about the individual’s or company’s existing or new trade marks, an overview of how COVID-19 has affected their business and specific questions about the registration process.[ix]
Streamlined Extensions of Time to Respond to deadline
IP Australia has established a new streamlined process for extending the time to respond to a deadline, where the timeline cannot be met due to disruptions caused by COVID 19. [x]
|IP Right||What time periods are not able to be extended by streamlined extensions?|
Under the current patents, trade marks and designs legislations, some time periods cannot be extended by streamlined or ordinary extensions.[xiii]
From 22 April 2020 until at least 31 July 2020, applicants can request an extension for a period up to three months at no charge.[xiv] IP Australia has undertaken to review the impact caused by COVID-19 and determine whether the streamlined extensions will be provided beyond 31 May 2020.[xv]
Applicants may request a streamlined extension through the IPA eServices platform by:
- Selecting an extension of time for ‘circumstances beyond the control of the person’; and then
- Ticking the box to declare an inability to meet a deadline due to disruptions caused by COVID-19 pandemic.[xvi]
The streamlined extensions do not apply to applications in relation to PBR’s.[xvii] Instead, it is at the discretion of the Registrar to allow further time.[xviii] Nonetheless, in relation to PBR’s, IP Australia have stated that “extra time will be available for:
- Providing a detailed description of the plant variety;
- Period for grantee to establish a variety be declared essentially derived variety;
- Providing an answer to an objection to an application for a PBR;
- Period to submit evidence in objection proceedings“.[xix]
IP Australia will allow the other party seven business days to make a representation or comment in opposition to the request for a streamlined extension.[xx]
Applicants may, for a fee, still apply for an ordinary extension not covered by streamlined extensions if it is available under existing patents, trade marks or designs legislation. For applicants who require an extension for longer than 3 months IP Australia suggests applying for a streamlined extension first and then applying for an ordinary extension if it is required.[xxi]
IP Australia Hearings
To comply with COVID-19 restrictions, IP Australia hearings are being conducted by video conference, over telephone or via written submissions.[xxii] IP Australia hearings have not been delayed or postponed. The time frame for hearings at IP Australia remains at approximately 6 months from the date of the request for a hearing. Parties to a scheduled hearing can request to defer hearings on the basis of COVID-19 reasons.[xxiii]
Streamlined extensions are available for oppositions and hearings for patents, trade marks and designs. This includes periods to file evidence.[xxiv] Streamlined extensions do not apply to all time periods in matters before the courts and the administrative appeals Tribunal.[xxv]
Authored by Katarina Klaric and Peter Divitcos, 18 June 2020
© Copyright June 2020 — Stephens Lawyers & Consultants
Disclaimer: This update is not intended to replace obtaining legal advice
For Further Information contact:
Stephens Lawyers & Consultants
Suite 205, 546 Collins Street
Melbourne VIC 3000
Phone: 61 3 8636 9100
All Correspondence to:
PO Box 16010
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Melbourne VIC 8007
[ii] International Bureau of the World Intellectual Property Organisation, ‘Interpretative Statement and Recommended Patent Cooperation Treaty (PCT) Practice Changes in light of the COVID-19 Pandemic‘, 9 April 2020, https://www.wipo.int/export/sites/www/pct/en/covid_19/82quater.pdf.
[iv] Word Intellectual Property Organisation, ‘COVID-19 IP Policy Tracker – Australia’, 30 April 2020, https://www.wipo.int/covid19-policy-tracker/#/covid19-policy-tracker/by-country?officeId=751.
[v] See IP Australia eServices Home Page https://services.ipaustralia.gov.au/ssoda/UI/Login?realm=/IPA_EXTERNAL&goto=https%3A%2F%2Fservices.ipaustralia.gov.au%3A443%2FICMWebUI%2F.
[vii] IP Australia, ‘Business continuity and the Coronavirus disease (COVID-19) outbreak“, 20 May 2020, https://www.ipaustralia.gov.au/about-us/news-and-community/news/business-continuity-and-coronavirus-disease-covid-19-outbreak.
[ix] IP Australia, ‘Introducing the Trade Mark COVID-19 Helpline’, 19 May 2020, https://www.ipaustralia.gov.au/trade-marks/managing-your-trade-mark/introducing-trade-mark-covid-19-helpline?utm_source=IPAweb&utm_medium=newsarticle&utm_campaign=COVID19&utm_content=TMhelpline.
[x] IP Australia, ‘Free streamlined extensions of time for COVID-19 disruptions‘, 15 May 2020, https://www.ipaustralia.gov.au/free-streamlined-extensions-time-covid-19-disruptions.
[xxii] IP Australia, ‘Business continuity and the Coronavirus disease (COVID-19) outbreak“, 20 May 2020, https://www.ipaustralia.gov.au/about-us/news-and-community/news/business-continuity-and-coronavirus-disease-covid-19-outbreak.
[xxiii] Word Intellectual Property Organisation, ‘COVID-19 IP Policy Tracker – Australia’, 30 April 2020, https://www.wipo.int/covid19-policy-tracker/#/covid19-policy-tracker/by-country?officeId=751.
[xxiv] IP Australia, ‘Free streamlined extensions of time for COVID-19 disruptions‘, 15 May 2020, https://www.ipaustralia.gov.au/free-streamlined-extensions-time-covid-19-disruptions.