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Automated Extensions of time under New Zealand Patent Law due to COVID-19

The Intellectual Property Office of New Zealand (IPONZ) has begun automatically extending certain deadlines due to the COVID-19 pandemic. Due to the variety of provisions under the Patents Act 2013 there is no blanket extension, but currently some deadlines are being extended by three months approximately two weeks out from the deadline due to what have been deemed the exceptional circumstances of COVID-19.

In the table below we summarise the key extensions, including whether the extension is confirmed (i.e. no input from the applicant is required) or is provisional (i.e. requires a request from the applicant) and whether we believe the extension granted by IPONZ should be relied on by applicants.

Patents Act 2013
Provision	Deadline	Ground of extension	Confirmed/Provisional	Rely on
s64/r71	Deadline for requesting examination 5 years from filing date	r147 (exceptional circumstances)	Confirmed1	Yes
s67/r78	Deadline for responding to an examination report (set by examination report)	r78(3) (exceptional circumstances)	Provisional on applicant requesting2	If necessary3
s71/r80	Deadline for placing an application in order for acceptance	r147	Confirmed4	Yes
Patents Act 1953
s19	Deadline for placing an application in order for acceptance	s93	Confirmed	Yes

1 Applies to originating applications and divisional applications filed prior to the five year deadline. For divisional applications filed after the deadline a separate request for extension will be required.

2 IPONZ will extend the deadline in the IPONZ case management system but a request must be made when the response is filed stating that the applicant could not have practically met the original deadline due to COVID-19. This is not expected to be a high bar.

3 We recommend the original deadline be met if possible, as it is not clear whether there are circumstances when the extension will be denied. In addition, in most cases (see 4 below) the deadline for placing the application in order for acceptance will not also be extended, resulting in a shortened prosecution period.

4 Usually this deadline will be automatically extended in the two weeks preceding the deadline. However, in a special circumstance, if the deadline for filing a response is extended, and that extension would extend beyond the r80 deadline, the r80 deadline will be extend to match the response deadline. It is important to note that extension of the r80 deadline does not extend the postponement of acceptance period set under r83.

Mechanics

In all cases IPONZ issues a discussion through the case management system notifying the contact (usually the agent) that an extension of time has been granted. Where the extension is provisional in nature a second discussion will issue indicating this. The new deadline is not stated in the discussion and no examination report will issue. It is necessary to navigate to the task in the case management system to identify the new deadline. It is important to note that this deadline is the 'final' deadline in that it includes any extensions which can be requested (e.g. under reg 78(2) (Patents Act 2013) or s93(3)(Patents Act 1953).

Continuation of extensions

These automated extensions will continue to be reviewed as the COVID-19 pandemic continues in New Zealand and around the world. IPONZ recognizes that many applicants are not in New Zealand and will have regard to the situation elsewhere, and especially the positions in other major patent offices. IPONZ will advise prior to the current extension policy being discontinued.

The IPONZ summary of these extensions can be found here.

EXTENSIONS OF OTHER DEADLINES

Other deadlines are not extended automatically and extensions will need to be requested. These will be on a case by case basis and depend on circumstances. If you have a deadline you wish to be extended please do not hesitate to contact us. In certain cases it may be possible to request an extension even if the deadline has passed.

If you have any questions, please do not hesitate to contact us.

David Nowak - 8 May 2020