Deadline extensions for patents responses due to COVID-19

Skip to main content.

Deadline extensions for patents responses due to COVID-19

This article provides additional clarification regarding IPONZ extending due dates for a number of cases and tasks in acknowledgement of the disruption caused by COVID-19.

IPONZ will automatically extend the following patent deadlines within two weeks before they occur:

2013 Act cases:

  • Requesting examination under section 64 and relevant regulations
  • Responding to a patent examination report under section 67 and regulation 78(3)
  • Placing an application in order for acceptance under section 71 and relevant regulations.

1953 Act cases:

  • Responding to a patent examination report under section 19.

Notification of automatic extensions

If IPONZ automatically extends any deadline, a general notification advising of the extension will be sent to the primary contact of the case via the IPONZ online system.

Please note: IPONZ will not issue a new examination report when a deadline is automatically extended. The new deadline can be confirmed by looking at your tasks in the IPONZ online system. As is usual for a task on the IPONZ system, this deadline is the final deadline for the action and includes any other extension periods the applicant may have requested under patents legislation.

The applicant does not need to request the extension for each of the following deadlines:

  • under section 64 to request examination
  • under section 71 to extend the deadline
  • under the 1953 Act to respond to an examination report.

For 2013 Act cases, the Commissioner will grant these extensions on the basis of exceptional circumstances (the COVID-19 pandemic) under regulation 147. For 1953 Act cases these extensions are granted under section 93(2).

Provisional extension to respond to patent examination report under section 67 (2013 Act)

Unlike extensions for requesting examination, and section 71 deadlines, the automatic extensions for responding to a patent examination report under section 67 are only provisional until such time as the applicant has formally requested an extension.

To benefit from the extension, applicants must include a request for an extension of time in their response to the examination report to satisfy the requirements of regulation 78(3). The request should make reference to the current COVID-19 situation as the reason for grant of the extension. As previously indicated, IPONZ will look upon such requests favourably.

If the extended deadline to respond to an examination report were to extend past the section 71 deadline, the section 71 deadline will be extended under regulation 147 (as above) and will correspond to the deadline to respond to the examination report as specified in the task.

When an automatic provisional extension of the deadline for an examination report occurs, two notifications are sent to the primary contact of the case via the IPONZ online system. The first is a general notification, which is the same as that explained in the previous section for all other extensions. The second notification is specific to extending the deadline of the examination report.

Extensions for other deadlines

IPONZ will also consider requests to extend other patent deadlines for COVID-19 related reasons that are not covered by the above specific scenarios, including where a deadline has already passed. Such requests will be considered on a case by case basis.

Postponement of acceptance

When the section 71 deadline of a 2013 Act case has been extended, IPONZ will not extend the postponement of acceptance date.

If an applicant wishes to extend the postponement of acceptance, they must submit a request for an extension under regulation 147 through the amendment function in the IPONZ online system, which will be considered on a case by case basis.

Requesting examination of divisional applications

The deadline to request examination for divisional applications filed before the expiry of the 5-year deadline will be automatically extended. The deadline will not be automatically extended for divisional applications filed after the 5-year deadline to request examination.

If an applicant wishes to request examination of a divisional application filed after the expiry of the 5-year deadline they must submit a request for an extension under regulation 147. This is done through the amendment function in the IPONZ online system. Each extension will be considered on a case by case basis.

For information regarding the introduction of this service, especially concerning the extension of deadlines for some trade marks, designs and proceedings cases, refer to our earlier article, IPONZ services during COVID-19, published April 15 2020.