End of streamlined extension process for COVID-19

For the past year, IP Australia (our Intellectual Property Office) has been offering three-month COVID-19 related extensions for most Australian patent and trade mark deadlines. Deadlines that could not be met due to COVID-19 related “circumstances beyond the control of the person” could be extended with a simple electronic tick-box request via an online portal and without official fees.

This streamlined extension process ended on 31 March 2021. Extensions of time are now available to customers on a case-by-case basis.

Australia’s (generous) ordinary extension provisions remain in place. Fortunately, most* Australian patent and trade mark deadlines can be extended if they are missed, or cannot be met, “because of:

a) an error or omission by the person concerned or by his or her agent or attorney;

or

b) circumstances beyond the control of the person concerned…”.

Official extension fees of A$100 (about US$62) per month are payable. A request for extension should be filed promptly once the failure (or inability) to meet the deadline is recognised.

Securing an extension typically requires a “full and frank” declaration evidencing an intention to meet the deadline and a causal connection between an error, omission or circumstance resulting in the failure (or inability) to meet the deadline. Traditionally, a shortage of funds has not been enough to secure an extension.

With regard to applicants who are still being significantly impacted by COVID-19:

• no doubt an extension could be secured if, for example a deadline was missed because relevant people were suddenly hospitalised; and
• we would also expect to secure an extension if a deadline was missed due to a miscommunication related to an urgent shift to employees working from home; although
• we would be surprised if an extension could be secured for reasons that essentially boiled down to a lack of business confidence.

Similar provisions apply in New Zealand.

* More onerous provisions apply in the context of opposition proceedings.