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Covid-19 - Status Updates affecting IP Rights

23 March 2020 Last Updated: 24 July 2020

Caution: The information in this post may change rapidly.
We will endeavour to update this page as developments occur. However, we cannot guarantee the currency of information on this page. Please check the website of the relevant IP Office or contact us for further information.
For links to other business information sources, please see this related post.

Xuveo Legal Status: OPEN for Business

We remain OPEN for business at this time.

We are able to assist with pending trade mark applications currently before IP Australia and the Intellectual Property Office of New Zealand (IPONZ), as well as Madrid Protocol international trade mark applications originating from Australia. Please contact us for further information or assistance.

As the majority of work we complete is via online lodgement and electronic communications, Xuveo Legal is well-equipped for a remote work environment.

Due to Australian government restrictions on non-essential travel and gatherings, appointments will be conducted by telephone or video conferencing, wherever possible.

IP Australia Status - Australian Domestic Applications

At the time of writing IP Australia remains OPEN and is processing applications, however, this status may change at short notice. 

IP right applicants should be prepared for closures and processing delays due to service interruptions.

Closure of Canberra Office

As of 1 April 2020, IP Australia's Canberra office is unstaffed and has closed to the public.

IP Australia encourages customers to lodge online as they are unable to accept physical deliveries.

Extensions of Time on Covid-19 Impact Grounds

On 22 April 2020, IP Australia announced that free extensions of time of up to 3 months would be available to applicants affected by the Covid-19 Pandemic for most types of extensions. Fees for such extensions are to be waived (or refunded if paid), with the new arrangements in-place until at least 31 August 2020, subject to further monthly review.

Specific declaration wording is required to apply for the free extension, including a declaration that the applicant is unable to prosecute their application due to the impacts of the pandemic.

Importantly, the free extension does not apply to renewal (eg trade mark renewal) or patent continuation fees. In that case, IP right holders must still ensure that their IP Rights are renewed on-time or within the applicable renewal grace periods. Extension of time fees for renewals may still be payable unless waived at the discretion of IP Australia.

Extensions of Time on Other Grounds

Applicants and IP Right Holders should remain aware of existing deadlines (eg deadline for acceptance and renewal) and seek extensions of time as necessary.

Other extensions of time and fee waivers/refunds for hardship and other reasons will be considered on a case-by-case basis. Nevertheless, if an extension of time is necessary, applicants should endeavour to request extensions before the deadline passes wherever possible. Fees may continue to apply to requests for extension of time.

At this stage, IP Australia has not announced that extensions of time will be automatically applied to existing applications or registrations.

It should be noted that some deadlines are non-extendable due to legislative constraints.

Fee Exemptions

Following amendments to the Trade Mark Regulations in June 2020, the trade marks office has increased flexibility to waive certain trade mark fees in appropriate circumstances.

Hearings

As at 20 March 2020, Opposition Hearings are being proceeding by teleconference or video conference only, or via written submissions.

Further Information

Please refer to the IP Australia Covid-19 Status Page for further information.

International

WIPO Status - Madrid Protocol

At the time of writing, WIPO remains OPEN for business. However, applicants may experience processing delays due to operational restrictions.

Applicants should remain vigilant regarding deadlines, as WIPO has not announced that automatic extensions of time will apply. Requests for extensions of time may be considered on a case-by-case basis provided that sufficient reasons are supplied (eg disruption to mail or internet services, imposition of quarantine or lock-down.) Some types of extensions of time may be granted without requiring supporting evidence.

WIPO Announcements

WIPO has announced measures including:

  • suspension of physical mail due to government restrictions and international disruption to postal services;
  • notifications will continue to be delivered electronically, where applicants have supplied an email address;
  • restrictions on obtaining physical copy certified documents and extracts, and services for legalisation of documents

Limited postal services resumed at WIPO as of 13 July 2020, however, some documents will only be provided in physical copy if expressly requested.

WIPO has issued the following announcements:

Date Title
- WIPO Madrid Protocol (Trade Marks) News Release Webpage
- WIPO "In Focus - 2020" News Release Webpage
31 March 2020 Covid-19 Update: Madrid System (WIPO is continuing to update this page with information relating to Madrid Protocol trade marks.)
20 March 2020 Covid-19 Update: WIPO's IP Services (business continuity and maintenance of services)
20 March 2020 Covid-19: Remedies and Extension of Time Limits Available for Madrid System Users (replaced by subsequent announcements)
17 March 2020 Update on Covid-19 (cancellation of meetings and events, closure of offices to the public)
16 March 2020 WIPO Update on Covid-19: IP Service Operations Continuing; Remote Work Prioritized

Other International Intellectual Property Offices

Some international offices have announced closures and/or automatic extensions for processing IP right applications. Processing delays may also be experienced due to office closures or disruption to postal services.

IP Right holders and applicants should check the website of the IP Office in relevant jurisdction for up to date information.

The International Association for the Protection of Intellectual Property (AIPPI) has compiled a listing of links to international IP Office statuses and notices: here

Again, we caution that applicants should not rely upon automatic extensions being available at any given IP Office, and should endeavour to comply with existing deadlines wherever possible. In the event that an extension of time is necessary, appropriate requests should be made to the relevant IP Office as early as possible. It should be noted that some deadlines may be non-extendable.

This post is intended for general information only and is not intended to constitute legal advice. You should obtain appropriate professional advice for your circumstances or contact us for further assistance.

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