Missed a patent deadline in Australia or New Zealand due to the Microsoft outage? Remedial action may be possible

The unprecedented Microsoft outage on the notoriously unlucky Friday the 13th caused offices around the world to come to a standstill. Not only did it expose vulnerabilities in tech-reliant workplaces (see IPKat), but it likely also caused patent deadlines to be missed because of the inability to send or receive urgent instructions. 

The good news is that Australia and New Zealand have relatively generous restoration provisions, including where a deadline is missed due to circumstances beyond the control of the applicant or their attorney. The respective IP Offices also have the power to remedy the problem by declaring an office closure date. 

Restoration in Australia 

Section 223 of the Patents Act 1990 (AU Act) provides for extensions of time to complete a "relevant act" required to be done within a certain time due to: 

  1. an error or omission by IP Australia (IPA);
  2. an error or omission by the applicant/patentee or their attorney; or
  3. circumstances beyond the control of the  applicant or their attorney.

Relevant acts may include, but are not limited to, entering the national phase, requesting examination, gaining acceptance, filing a divisional application, paying official fees (including renewal fees outside the six month grace period), relying on the grace period to file a complete application, and filing an application for patent term extension (see IPKat). Importantly, it is also possible to extend the time to file a Convention application and still the claim the benefit of a priority date more than 12 months earlier. 

IT outage Kat
While the grant of an extension in circumstances (2) and (3) is discretionary, where the Microsoft outage was the direct cause of a missed deadline in Australia, it is likely that an extension can be obtained under circumstance (3). The extension request must be filed without undue delay, together with completion of the relevant act, payment of the extension fee (AU$100 per month or part thereof) and any other necessary fees. A supporting declaration explaining the circumstances leading to the need for an extension must also be filed, but may be filed up to two months after the initial extension request. 

Restoration in New Zealand 

The restoration provisions under the Patents Act 2013 (NZ Act) are less straightforward and appear in various sections depending on the circumstances for missing a deadline: 

  1. missed renewal fees (s 117);
  2. unintentional failure to comply with a requirement under the NZ Act or PCT (s 125);
  3. an error or omission in the patents register by the Intellectual Property Office of New Zealand (IPONZ) (s 201) or by another person (s 202);
  4. delays by IPONZ (s 230); and
  5. delays in filing a complete or Convention application, or failure of a delivery method (s 231).

Circumstances (2) and (5) are most likely to apply in the case of the Microsoft outage. Like Australia, the restoration request must be filed without undue delay, together with completion of the act required to meet the deadline, and payment of the restoration request fee (NZ$600) and any other necessary fees associated with the required act. A supporting statutory declaration explaining the circumstances leading to the need for restoration must also be filed within three months of the restoration request. 

Can IPA and IPONZ mitigate the need for restoration? 

Both the AU Act (s 222A) and NZ Act (s 224) allow IPA and IPONZ, respectively, to declare an office closure date, either proactively or retroactively, so that deadlines falling due on that date are deferred to the next business day. Similar provisions also appear in the Trade Marks Act 1995, Designs Act 2003 and Plant Breeder's Rights Act 1994 in Australia, and at least the Trade Marks Act 2002 and Designs Act 1953 in New Zealand. 

Given the widespread impact of the Microsoft outage, the Intellectual Property Office of Singapore (IPOS) has already issued a Direction declaring this Friday the 13th an "excluded day", deferring all deadlines to Monday 16 November. The EPO has also indicated that Rule 134 applies (see IPKat). Ideally, IPA and IPONZ will follow suit shortly. Otherwise, the restoration provisions provide a viable fallback for applicants and patentees that were unable to meet deadlines as a direct result of the outage.


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