Baldwins COVID-19 update

Monday 23rd March 2020

Baldwins has activated its business continuity plans to ensure uninterrupted delivery of services to our clients. Baldwins staff have returned to the office with flexible schedules in place during Alert Level 1. We look forward to reconnecting with our clients and suppliers in person by appointment, or alternatively via virtual meetings. Electronic correspondence remains a preferred method of written communication for efficiency.

We continue to monitor the situation of COVID-19 closely and understand how this may be an uncertain time for many. As we navigate through this evolving situation, we would like to keep you updated on the procedures put in place to protect the wellbeing of our people, as well as ensuring our clients and agents receive the same consistent and reliable service.

Detailed below is the current available information on particular Intellectual Property Office closures and extended deadlines that may affect our clients and agents.

Intellectual Property Office updates and extended deadlines information:

Both the Intellectual Property Offices of New Zealand (IPONZ) and Australia (IP Australia) are providing some extensions due to the ongoing disruptions from COVID-19.


Updated 9:55am, Friday 29 May 2020

IPONZ

IPONZ is applying automatic extensions of time every Monday for some matters with due dates falling within the next 10 working days. IPONZ advises that this practice will continue until at least 31 July 2020. The following extensions will be provided.

 

Patents

Extensions are provided for:

  • requesting examination (1);
  • responding to a patent examination report (2); or
  • placing an application in order for acceptance.

(1) The deadline for requesting examination of an application is within five years from its filing date. For a divisional application, this is calculated from the antedated filing date. An automatic extension to the deadline for requesting examination is provided for already filed application, including divisional applications. However, an extension to the deadline for requesting examination of an already filed application does not automatically extend the examination request deadline for a divisional application that has not yet been filed. A request for the examination of a divisional application filed after the five year deadline will be considered on a case by case basis.

(2) This is a provisional extension and the applicant must make a formal request for the extension when responding to the report. The request must cite COVID-19 as the reason the extension is required.

IPONZ will also consider, on a case by case basis, requests to extend other deadlines due to COVID-19 related reasons. These requests can be submitted where a deadline has already passed.

 

Trade marks

Deadlines to respond to trade mark compliance reports for national trade mark applications will be automatically extended by three months. Moreover, from 25 May 2020, three-month extensions will also be automatically given to deadlines for responding to provisional refusals and subsequent compliance reports for international trade mark registrations designating New Zealand. 

As of 25 May 2020, automatic deadline extensions will not be available for trade mark owners to file their counterstatement and evidence in revocation proceedings for non-use of a trade mark. However, a request for an extension of time can be made if the owner is impacted by COVID-19.

 

Designs

Deadlines to respond to design examination reports will automatically be extended by three months.

 

Additional information and updates are available on the IPONZ website.

IP Australia

IP Australia is providing a streamlined process for requesting extensions of time of up to three months, including waiving or refunding fees for extensions. An extension of time is available for most patent, designs, and trade mark actions. The free extensions of time will continue until 30 June 2020. It is important to note that the extension is not available for the payment of renewal fees, although there is a six month grace period available.

 

Extensions of time may also be available for plant breeder’s rights (PBR) actions. Information about PBR extensions is available here.

Click here for live updates on overseas IP office closures and extension of deadlines.

 

We will update this page as we receive new information, so please continue to visit this page to stay up-to-date. Please be guided by the information provided however, for advice relating to specific matters, please liaise with your normal point of contact or:

 

For patent matters:

Wes Jones
+64 9 359 7747
wes.jones@baldwins.com

 

For trade mark matters:

Penny Catley
+64 4 910 6505
penny.catley@baldwins.com

 

For litigation and commercial matters:

Paul Johns
+64 9 359 7733
paul.johns@baldwins.com

Need more information?

Contact a member of our team:

Contact us

Key contacts

  • Wes Jones
    Partner, Auckland

  • phone+64 9 359 7747
  • phonelink_ring+64 21 666 703
  • mail_outline.(JavaScript must be enabled to view this email address)
  • Penny Catley
    Partner,

  • phone
  • phonelink_ring+64 21 660 645
  • mail_outline.(JavaScript must be enabled to view this email address)
  • Paul Johns
    Head of Dispute Resolution, Auckland

  • phone+64 9 359 7733
  • phonelink_ring+64 27 558 5866
  • mail_outline.(JavaScript must be enabled to view this email address)