New Policy Regarding Extensions of Time

The Irish Patents Office (IPO) has proposed the introduction of a new policy on the granting of extensions of time in respect of trade mark matters.

Towards the end of last year, the Controller of Patents, Designs and Trade Marks (Controller) expressed concern that applications for extensions of time were being submitted to the IPO routinely, not as a result of, or supported by evidence of, unusual or exceptional circumstances and that this was creating additional unnecessary work for the IPO.

Why Apply For an Extension of Time?

Extensions of time can be useful, for example, an applicant for a trade mark registration may be required to respond to an objection raised by the IPO to his/her application, e.g. a relative grounds objection. In such a situation the applicant may enter into negotiations with a prior rights holder and might therefore require an extension of time to respond to the IPO.

Proposed Guidelines

The Controller proposed the introduction of the following guidelines in early 2010.

*The Controller has acknowledged that certain circumstances may exist where extension periods of more than three months are warranted. Generally, however, three month time periods are standard.

In practice, the IPO is currently applying the above guidelines, although the guidelines are under review. The Controller invited feedback on the proposed guidelines from interested parties and a consultation procedure is presently underway. We shall circulate a further alert with an update when the finalised guidelines have been published by the IPO.

Conclusion

Parties dealing with the IPO should conduct their affairs in a prompt and efficient manner to ensure that matters are dealt with as quickly as possible and to avoid any prejudice to the trade mark(s) concerned.