Extensions of time and protection of third parties (patents and trade marks)

Issue summary

IP rights holders and applicants can apply to extend a number of time periods in the IP legislation under various circumstances. Some extensions are required under international treaties. The extension of time system needs to balance the interest of IP applicants and rights owners, who may risk losing their rights by not completing actions on time, with the interests of third parties, who need certainty about whether IP rights are in force.

There are three broad issues with the extension of time system. The first issue is the differences in the number and types of extensions available between the IP rights. This increases complexity and confusion as to which extension is applicable and what evidence is required for supporting the request in a given situation. The second issue is the administrative burden placed on customers and IP Australia.

Short extensions rarely have a significant impact on third parties, yet require the same declarations from applicants and assessment by IP Australia as long extensions. The third issue is that the protection for third parties that used an invention or trade mark while the IP application or right was lapsed or ceased can be inadequate or burdensome to obtain.

History

• On hold 4 September 2017
• Priority reviewed August 2020

Comments

Public consultation on this issue took place from November 2016 - February 2017.

In light of stakeholder feedback, and high priority proposals resulting from the Government's response to the PC inquiry this proposal has been downgraded to low priority. This issue has been placed on hold for further consideration at a later date.

Please note, extensions of times under the Plant Breeder’s Rights Act and Designs Act are being progressed as separate issues.