Extension of time for Australian Patents due to COVID-19– by Dr Justin Sweetman


Following on from my article of 6 July 2020 relating to extension of time for missed deadlines, if an applicant is having difficulties meeting a deadline on an Australian patent or patent application for undertaking certain actions due to COVID-19, then an extension of time may be available.

IPAustralia announced on 22 April 2020 a stream-lined process for extension of time requests. Request approval is automatic via a request submitted through eServices based on standard text declaration to be ticked that you are unable to meet the deadline due to disruptions from the COVID-19 pandemic. Fees are waived for an extension of time of up to 3 months. This stream-lined process is in operation until 31 March 2021 (to be reviewed on the last week of March 2021). Extensions will still be possible for disruptions due to the COVID-19 pandemic after this date but will not be actioned under the streamlined process and instead will be assessed on a case by case basis.

Applicable deadlines for which the streamlined COVID-19 extension of time is available include:

  • Deadlines to respond to patent examination reports
  • Deadlines to request examination for patent applications
  • Deadlines to pay fees due to financial difficulty on a case-by-case basis if related to Covid-19 circumstances (not streamlined)
  • Deadlines relating to oppositions and hearings processes for patents, trademarks and designs, including periods to file evidence
  • Also available for trademark & design deadlines.
  • Note Plant Breeders Rights (PBR) deadlines are not covered by the streamlined process but the Registrar has discretion to allow further time for some actions at no cost to the applicant

Patent time periods cannot be extended for patent renewal deadlines (although a 6 month grace period is available), applications for extension of the term of a patent and WIPO deadlines where IP Australia is acting as Patent Cooperation Treaty (PCT) Receiving Office. However an ordinary extension of time may be available under the existing patents legislation as outlined in my article of 6 July 2020.

If a streamlined extension for three months has already been obtained it will be possible to apply and obtain a further 3 month extension if needed due to the impact of the COVID-19 pandemic. Alternatively, it will be possible to apply for an ordinary extension of time for a period longer than 3 months, if it is available under the existing patents, trademarks and designs legislation. However, you may have to pay the applicable fee.