IP Australia have recognised that some businesses are not financially in a position to continue to protect their intellectual property (IP) rights and are offering a life line, but you need to be quick to take advantage.
If you have valuable IP it is worth exploring whether or not you can defer or be exempt from payments under the changes made to the Intellectual Property Laws Amendment (Fee Exemptions) Regulations 2020, (“the Regulations”). You must act now though as you only have until 31 July 2020 to apply.
IP Australia now has more flexibility to offer fee exemptions for extensions of time to respond to an IP Australia request for affected businesses in the following circumstances:
If you are unable to:
- fully consider the prosecution of your rights or
- pay the fee or
- undertake another relevant action
due to the disruptive effects of the COVID-19 pandemic, then you may apply for an extension of time by making a tick-box Declaration to this effect. It is not necessary to provide any additional written explanation. Associated fees will be waived or refunded. Indeed, the fee will be automatically waived when the appropriate tick-box application is made through eServices by you or your agent.
In some cases, the new exemption powers will continue to benefit applicants and rights holders after the pandemic ceases.
This arrangement applies not only to trade marks but also to most patents and designs.
If you are in a position where your trade mark has been opposed by another party IP Australia must give the other party an opportunity to comment on your request for an extension of time. Any comments must be in writing.
It is important to note that the arrangement does not apply to any extension of time to pay renewal fees so you must not let a renewal deadline slip or you risk your trade mark lapsing.
These temporary arrangements are being reviewed and assessed as to whether they will be continued beyond 31 July 2020. IP Australia will provide at least one week’s notice before they cease.
International (WIPO) Applications
Similarly, if you have a pending international application through the World Intellectual Property Office (WIPO) you will be familiar with your application, the need to meet deadlines and may have received notices explaining what is required to overcome any issues raised.
If you are experiencing communication problems because you are in lockdown, quarantine or self-isolation, and you have failed to meet a time limit, you may be excused if you contact WIPO in writing within five days after regaining access to mail, delivery services or email.
In any event, WIPO must receive your written contact within six months of your original time limit.
The WIPO extensions of time relate to where:
- an IP Office forwards an international trade mark application (or a subsequent designation to an additional country or area) to WIPO;
- an IP Office notifies you of a provisional refusal of your trade mark or
- you (as an applicant or an IP rights holder) or an IP Office remedies an irregularity in an international application or in a request for recording information.
Indeed, WIPO will favourably treat a request citing COVID-19 related issues and not require applicants, holders of IP rights and IP Offices to supply proof of these problems.
These exemptions also apply to the time limit to pay any fee to WIPO including the grace period to pay renewal fees for an international registration.
Applicants, IP rights holders and IP offices are encouraged to take prompt action so that WIPO receives written contact or payment within six months of your original time limit.
These changes are beneficial if, as an owner or holder of IP rights, you are experiencing communication or financial difficulties as a result of this pandemic.