Extensions due to COVID-19
Wednesday 27th May 2020
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.
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.
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.
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.
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 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.
Need more information?
If you have any questions, or need more information on the extensions provided by IPONZ and IP Australia, please contact us to speak to our specialists.