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Irish Patents Office: Routine Requests for Extensions
of Time in Trade Mark Matters Will Be Refused.
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:
| APPLICATION FOR EXTENSION
OF TIME |
IP CONSIDERATIONS
|
MAXIMUM TIME PERIOD |
| Initial application |
All initial applications will be granted automatically. |
3 months* |
Second application
|
Application will be considered only if it is accompanied
by evidence supporting claims of unusual or exceptional circumstances.
Granting of second application is discretionary. |
3 months*
|
Third application
|
Application will only be considered if accompanied
by evidence supporting any claims of unusual or exceptional
circumstances, which differs from the evidence supplied in support
of the second application. Granting of third application is
discretionary. If granted, it is deemed to be the final extension
unless certain circumstances prevail beyond the trade mark agent’s
control, which warrant a further extension(s) (e.g. the outcome
of negotiations or a Court decision). |
3 months*
|
*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.
For further information please contact Aine
Matthews or Aoife
Nic Lochlainn.
February 2010.
© 2003-2010 LK Shields Solicitors.
All rights reserved.
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