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Category: Intellectual Property News

Welcome to BRM Patent Attorneys

BRM is a new firm with a long history. BRM’s experienced professionals together have well over a century of experience providing outstanding patent attorney services.

Some of you may know our professionals from Wadeson. In 2019, Wadeson celebrated its 10th anniversary as a proudly independent Australian patent and trade mark attorney firm. As of 1 July 2021, Wadeson’s patent team commenced trading as BRM1 and Wadeson2 is focusing solely on trade marks.

We look forward to working with you.

 

1 BRM Patent Attorneys Pty Ltd; ACN 649 973 204
2 Wadeson IP Pty Ltd; ACN 623 567 760

25 August 2021 – a key deadline for all Australian innovators

Following from our earlier articles reporting on the demise of the Australian innovation patent, the 25 August 2021 deadline is drawing nearer. If an Australian patent application is part of your plans, you would be well advised to ensure that you have a suitable patent application in place by then.

Anyone with an interest in securing Australian patent rights is advised to keep this date in mind. An innovator who files their first Australian non-provisional patent application1 by that date will be in a much better position than innovators filing after that date, because they will have the option of using the innovation patent system.

The innovator who files by 25 August 2021 will be better off even if the innovator doesn’t plan to use the innovation patent system. Standard patent applications are often pending for four years or so. During this time, the standard patent application can be converted to an innovation patent or provide basis for a ‘divisional patent application’ for an innovation patent.

If an infringement appears in the market during the (about) four-year pendency, a divisional patent application for an innovation patent is often a better option than expediting examination of the standard patent application, because:

  • usually, an innovation patent can be made enforceable faster than the standard patent application;
  • the owner of an innovation patent can ‘trump’ a competitor’s efforts to challenge the patent before the Patent Office by initiating court proceedings (see section 101(K) and 101(P));
  • an innovation patent is more likely to be valid as it cannot be held invalid for want of an inventive step; and
  • the pending standard patent application can remain on hand to provide a flexibility during the enforcement procedures.

 

1 For example, a standard patent application, an innovation patent application or an international (PCT) patent application

We’re moving!

After more than a decade at 101 Collins Street we are moving to:

Level 14
333 Collins Street
Melbourne VIC 3000

This historic building was a grand banking headquarters during Melbourne’s boom in the 1890’s and is famous for its majestic domed foyer. We look forward to welcoming you to our beautiful new office space.

26 April 2021 will be our first day in our new home. Please update your records accordingly.

End of streamlined extension process for COVID-19

For the past year, IP Australia (our Intellectual Property Office) has been offering three-month COVID-19 related extensions for most Australian patent and trade mark deadlines. Deadlines that could not be met due to COVID-19 related “circumstances beyond the control of the person” could be extended with a simple electronic tick-box request via an online portal and without official fees.

This streamlined extension process ended on 31 March 2021. Extensions of time are now available to customers on a case-by-case basis.

Australia’s (generous) ordinary extension provisions remain in place. Fortunately, most* Australian patent and trade mark deadlines can be extended if they are missed, or cannot be met, “because of:

a) an error or omission by the person concerned or by his or her agent or attorney;

or

b) circumstances beyond the control of the person concerned…”.

Official extension fees of A$100 (about US$62) per month are payable. A request for extension should be filed promptly once the failure (or inability) to meet the deadline is recognised.

Securing an extension typically requires a “full and frank” declaration evidencing an intention to meet the deadline and a causal connection between an error, omission or circumstance resulting in the failure (or inability) to meet the deadline. Traditionally, a shortage of funds has not been enough to secure an extension.

With regard to applicants who are still being significantly impacted by COVID-19:

  • no doubt an extension could be secured if, for example a deadline was missed because relevant people were suddenly hospitalised; and
  • we would also expect to secure an extension if a deadline was missed due to a miscommunication related to an urgent shift to employees working from home; although
  • we would be surprised if an extension could be secured for reasons that essentially boiled down to a lack of business confidence.

Similar provisions apply in New Zealand.

 

* More onerous provisions apply in the context of opposition proceedings.

Extending Australian patent and trade mark deadlines amid COVID-19 (update 9)

(See here for the latest update)

Three-month extensions of time for COVID-19 related delays are now freely available for most Australian patent and trade mark deadlines.

Deadlines that cannot be met due to COVID-19 related ‘circumstances beyond the control of the person’ can now be extended with a simple electronic request via an electronic portal and without official fees.

Justifying the extension is now a matter of ticking a box. From the electronic portal:

These new arrangements apply to requests for extensions filed by 28 February 2021 and this date may well be extended in due course. IP Australia (our Intellectual Property Office) plans to regularly review the new arrangements considering the severity of the COVID-19 disruptions.

In addition to these new arrangements, Australia’s (generous) ordinary extension provisions remain in place (see here).

Update on IP Australia’s response to the COVID-19 outbreak  (update 8)

The COVID-19 pandemic is continuing to affect many of our customers.

As such, IP Australia’s streamlined process to provide free extensions of time to assist customers impacted by the COVID-19 outbreak will be continued until 30 November 2020.

If you have previously received a streamlined three month extension and subsequently find that you need a further extension due to the impact of the COVID-19 pandemic, then you can apply for a further streamlined extension of time for up to 3 months.

We also recognise that restrictions in Victoria may be causing our customers additional disruptions. If you need more flexibility than the streamlined process for extensions of time offers, please contact us to discuss your circumstances and how we may be able to assist you.

The streamlined process for extensions of time is temporary and its continuation is being regularly reviewed considering the severity of the COVID-19 pandemic disruptions. We will provide at least one week’s notice before it is ended.

The service does not guarantee registration of your trade mark and is not a business or legal advice service. For advice on the trade mark system and how it might be best used in your business, we will recommend you to advisers such as trade mark attorneys or other professionals.

Extending Australian patent and trade mark deadlines amid COVID-19 (update 7)

(See here for the latest update)

Three-month extensions of time for COVID-19 related delays are now freely available for most Australian patent and trade mark deadlines.

Deadlines that cannot be met due to COVID-19 related ‘circumstancesg beyond the control of the person’ can now be extended with a simple electronic request via an electronic portal and without official fees.

Justifying the extension is now a matter of ticking a box. From the electronic portal:

These new arrangements apply to requests for extension filed by 31 October 2020 and this date may well be extended in due course. IP Australia (our Intellectual Property Office) plans to regularly review the new arrangement considering the severity of the COVID-19 disruptions.

In addition to these new arrangements, Australia’s (generous) ordinary extension provisions remain in place (see here).

Extending Australian patent and trade mark deadlines amid COVID-19 (update 6)

(See here for the latest update)

Three-month extensions of time for COVID-19 related delays are now freely available for most Australian patent and trade mark deadlines.

Deadlines that cannot be met due to COVID-19 related ‘circumstancesg beyond the control of the person’ can now be extended with a simple electronic request via an electronic portal and without official fees.

Justifying the extension is now a matter of ticking a box. From the electronic portal:

These new arrangements apply to requests for extension filed by 30 September 2020 and this date may well be extended in due course. IP Australia (our Intellectual Property Office) plans to regularly review the new arrangement considering the severity of the COVID-19 disruptions.

In addition to these new arrangements, Australia’s (generous) ordinary extension provisions remain in place (see here).

Extending Australian patent and trade mark deadlines amid COVID-19 (update 5)

(See here for the latest update)

Three-month extensions of time for COVID-19 related delays are now freely available for most Australian patent and trade mark deadlines.

Deadlines that cannot be met due to COVID-19 related ‘circumstances beyond the control of the person’ can now be extended with a simple electronic request via an electronic portal and without official fees.

Justifying the extension is now a matter of ticking a box. From the electronic portal:

These new arrangements apply to requests for extension filed by 31 August 2020 and this date may well be extended in due course. IP Australia (our Intellectual Property Office) plans to regularly review the new arrangement considering the severity of the COVID-19 disruptions.

In addition to these new arrangements, Australia’s (generous) ordinary extension provisions remain in place (see here).

Extending Australian patent and trade mark deadlines amid COVID-19 (update 3)

(See here for the latest update)

Three-month extensions of time for COVID-19 related delays are now freely available for most Australian patent and trade mark deadlines.

Deadlines that cannot be met due to COVID-19 related ‘circumstances beyond the control of the person’ can now be extended with a simple electronic request via an electronic portal and without official fees.

Justifying the extension is now a matter of ticking a box. From the electronic portal:

These new arrangements apply to requests for extension filed by 30 June 2020 and this date may well be extended in due course. IP Australia (our Intellectual Property Office) plans to regularly review the new arrangement considering the severity of the COVID-19 disruptions.

In addition to these new arrangements, Australia’s (generous) ordinary extension provisions remain in place (see here).