In November 2018, IP Australia released its largest ever business transformation and technology capability designed to aid in our commitment to deliver world-leading digital services for the benefit of all Australians. To support internal operations that moved to this new platform a substantial migration exercise accompanied the release of this new capability.
IP Australia is proud of its searching and information platforms. We continue to work hard to resolve issues which have been encountered to take full advantage of the modernisation of our ICT systems.
Since the release we have taken measures to minimise interruptions to our customers who depend on a reliable public database, publication systems, Objective Connect, Business-to-Business (B2B), and eServices. However, it is clear the transition is taking longer than expected and we recognise that users may have experienced problems or difficulties since the transition.
We thank individuals who have provided feedback on the changes and appreciate the information you have brought to our attention regarding areas for improvement. The feedback that we have received has been thoroughly and carefully considered. Your feedback is valuable in supporting our continuous improvement. It provides us great opportunities to better meet customer expectations.
IP Australia is committed to providing you with high quality products and services. We understand that when these processes do not work as expected it can cause you additional unnecessary work, and provide a sense of confusion and frustration for you and your clients. Please be assured we have a continued focus on improving the reliability of the new platform so that these problems do not continue.
To further support you during this transition a new temporary email box has been set up to specifically focus on resolving the issues detailed in this document, and to provide you with routine updates of data fixes that are not attended to during normal procedural matters.
If you require any further information contact MDB-ITGChange&Communications @ipaustralia.gov.au for direct contact to the IT department working on these issues. This additional temporary contact point complements the methods available on our current contact us webpage.
Assistance in the identified areas of focus affecting the system, how issues are likely to impact users, and the measures that IP Australia has taken, are provided below.
Data anomalies related to migration
To support internal operations that moved to this new platform a substantial migration exercise accompanied the release in November 2018. This exercise was broader than simply moving all trade marks (live and dead) dating as far back as the 1900s to the new system. It was necessary to also move the entire backlog of pending trade mark applications, opposition proceedings, records of assignments of ownership, and other various matters that were before the Trade Marks Office on the day of the migration.
It is not possible to precisely script a migration ahead of time as the data constantly changes. Requests are lodged with the Trade Marks Office every day. Registered trade marks expire and pending applications lapse based on prescribed timelines. Requests are constantly progressing and there can often be complex relationships between various tasks.
Careful planning and regression testing in the months prior to the release was undertaken to identify common patterns and scenarios required to ensure that data was transposed accurately to the new system. The correct sequence of actions was also an area of focus during the preparation. For example an application for an extension of time may need to be moved before other work to prevent an action from taking place.
Some migration strategies and processing logic that were in place during the release, and are planned to continue to be in place moving forward, have not been as successful as others. Resolving issues in this area is a primary focus for us.
Issues have been reported where applications and oppositions are not represented accurately in Australian Trade Mark Search or have been unintentionally processed. In some circumstance, this resulted in notices being issued and subsequently recalled. Issues of this nature gradually are reducing in frequency as the Trade Marks Office has actioned the backlog of work in December 2018 and January 2019. There are however ongoing issues that we are working hard to resolve.
To attend to the migration data anomalies and instances where ICT processes that have been executed out of sequence, there are two streams of work in place to identify and resolve remaining issues.
- The first stream is assigned to a post implementation review of the migration that will make bulk changes to key areas when a broader pattern is identified and can be resolved accurately via automated scripting or software patching.
- The second stream of work involves an issue management process dedicated to the review of issues and will correct data on a case by case basis. If you find data anomalies please contact us and we will work with you on a resolution.
Data anomalies occur with new capabilities
IP Australia has continued to fine tune our new capabilities. There have been occasions where new ICT processes have not set the details as expected, or details from the operational areas of IP Australia have not made its way to Australian Trade Mark Search as expected.
This issue appears to be most prevalent in events in the History & Publications area of a trade mark that relate to incoming correspondence. The event may be dated later than the actual receipt date of that correspondence. For example, the date of the Application Received event in the History & Publications area may be later than the day the trade mark application was received. Again, we are working to resolve this inconsistency. The authoritative reference for dates, such as the Filing Date of a trade mark, is within the Dates area of the detailed view of a trade mark.
Trade mark opposition matters
Following the upgrade, some customers will experience minor delays in the office processing of trade mark opposition matters. Parties should be prepared for delays in the processing of Statements of Grounds and Particulars and Extensions of Time to file Notices of Intention to Oppose.
IP Australia is working hard to ensure that opposition matters proceed as efficiently as possible, and thanks its customers for their patience in this transition. If you have any queries, please contact us.
We have increased the level of granularity and quality of information available about trade mark opposition matters and removal applications for non-use in Australian Trade Mark Search. A new view into oppositions is now available and improves the level of oppositions information beyond what has been available historically.
Feedback was received soon after the release of this new view. An issue with the commencement date of opposition proceedings was identified and has now been resolved. There are also ongoing issues related to the data anomaly topics featured earlier in this paper that can sometimes affect this new view. As those core data issues are attended to the view of opposition information will improve.
Time frames for receiving ‘Notices of filing’ for new trade mark applications
The time between submitting a new application and receiving the Notice of filing has been significantly improved. Notices of filing will be issued within 24 hours of lodgement.
Changes to amending new applications
Customers will no longer be able to amend new applications prior to the status changing to ‘published’ as the processing is immediate. This status will be updated on Australian Trade Mark Search within 24 hours.
There is still the option for an amendment to the trade mark after publication under either Section 65 (amendment does not substantially affect the identity of the trade mark or extend the rights) or Section 65A (amendment does substantially affect the identity of the trade mark, or extend the rights).
Trade mark correspondence
Correspondence codes and descriptions will be changing. Details of the new correspondence and relationship to previous correspondence are available to assist with these changes.
Trade mark previous correspondence
The new trade mark correspondence provides more notices around the lifecycle changes for trade marks, including a ‘lapse’ notification and a ‘cease’ notification.
Delays in issuing correspondence
After a substantial modernisation and migration exercise it was necessary to put in place safe guards to check correspondence before it was released. This is particularly important in complex areas like hearings and oppositions. This process will remain in place for a further few months while we monitor work that has been migrated from our old system to the new system.
IP Australia is working hard to ensure that opposition matters proceed as efficiently as possible and thanks its customers for their patience in this transition. If you have any queries, please contact us.
Progress has been made to work on a fix to also delay the recording of the event in Australian Trade Mark Search to coincide with the actual delivery so that you, and your clients watching for correspondence in the history, receive the correspondence at the same time the event appears in Australian Trade Mark Search history. This fix will also reduce the issues outlined in the first area regarding cancelled notices being displayed in the history.
Unexpected hard copies of correspondence
During the November 2018 release issues with the migration of user preferences for delivery of correspondence were identified. Since that time we have been working on a solution to this issue. In addition to the IT work that has been dedicated to updating delivery preferences for migrated applications and registrations, there is a manual process in place to correct the issue on a case by case basis.
This is the reason our operational areas may have asked you to provide your customer number that is assigned to your eServices Inbox when you let us know that you have received hard copies. With this number the operational area can change the delivery method for correspondence in relation to that specific matter ahead of the IT work that is underway.
We continue to work on restoring these preferences and when the operational area is made aware of situations the unexpected delivery of hard copies is considered as part of procedural decision making.
IP Australia's Attorney Codes will no longer be used. To allow Attorney Code holders to continue lodging a single request to amend their managed IP rights, a new feature has been added to eServices. This feature allows Attorney Code holders' eServices account legal name and address details to be copied on to the IP rights they are representing. All current Attorney Code holders will have this feature by default. Customers who do not have an attorney code can have this arranged by lodging an amendment request.
As part of our initiative to streamline the delivery of correspondence, TM Headstart reports will be issued via eServices. A notification from eServices will be emailed to you (overnight) letting you know you have electronic correspondence available in eServices. You will still need to respond to the report within five days of the date of your results report.
Australian Trade Mark Search
A new version of Australian Trade Mark Search was rolled out on 18 November. Visually it appears much the same, however there are some minor adjustments to the way we display data and some more significant changes (highlighted below) that may impact some of your practices.
- Statuses changing to better reflect the current lifecycle of trade marks
- Endorsements becoming “Other Trade Mark Information”
- Some additional dates being provided
- Prescribed & Prohibited (records beginning with a -9) becoming “Regulated Signs”
- Searchable ABN
- Transliteration indexing terms
- “Kind” of marks, changes and additions
- History information
Details of the changes to Australian Trade Mark Search are now available.
Updates to Australian Trade Mark Search
Some information about IP Australia’s trade mark data in Australian Trade Mark Search:
Events in the History & Publications area of a trade mark that relate to incoming correspondence may be dated later than the actual receipt date of that correspondence. For example, the date of the Application Received event in the History & Publications area may be later than the day the trade mark application was received. We are working to resolve this inconsistency. The authoritative reference for dates, such as the Filing Date of a trade mark, is within the Dates area of the detailed view of a trade mark.
Last Trade Mark to be Indexed information in Australian Trade Mark Search
Prior to the November 2018 release the daily Last Trade Mark to be Indexed number in Australian Trade Mark Search always advanced. Since November 2018 the last indexed information has had days where it has gone backwards. Further, the definition of this information has required correction to explain the handling of unpublished trade marks.
We understand that some searchers rely on this information to warrant the currency and completeness of their searches performed on that day; therefore, the reliability of this information is critical for those who make use of it for this purpose.
The Last Trade Mark to be Indexed information is presented on the About page on Australian Trade Mark Search and is recorded on Search Report PDF documents downloaded from the system.
It is defined as follows:
All published trade marks up to this number have been fully indexed, and are therefore searchable within Australian Trade Mark Search via word or image indexing terms. Trade mark numbers below this may in some circumstances remain unpublished, for example because they have not met minimum filing requirements, are still undergoing processing by IP Australia, or are TM Headstart requests which have not been converted to an application.
The definition provided in November 2018 did not mention the possibility of unpublished trade marks.
Data anomalies featured in the sections above and improved transparency in our receipting processes have directly impacted the information and presented instability to searchers.
Resolving the causes of data anomalies is a key focus for us.
Aside from data anomalies, changes to the receipting process have also affected the Last Trade Mark to be Indexed number. As part of the filing process, minimum filing requirements are checked. This is an important process for applicants that file via a conventional paper-based method, and during periods when our Alternative Lodgment Service system is in place to support eServices unavailability. When these applications are received, but prior to filing, a number is allocated. In a similar way to the treatment of TM Headstart Requests, this is not an application or registration number. It is a request number.
In the majority of cases, TM Headstart Requests are converted to an Application and paper applications pass the minimum filing requirements. The request number is then reused, for the purposes of publishing the trade mark application, as the application number. If the application is not filed, or the TM Headstart Request is discontinued, the request number is not recycled. It remains important to our record keeping procedures and obligations.
Prior to November 2018, the process undertaken by operational areas was largely manual. The particulars of received, but not yet filed, applications were not keyed into a system until issues relating to minimum filing requirements were resolved. To improve our record keeping and receipting practices, this material is now captured earlier. Where an application initially does not meet minimum filing requirements, but later is found to meet minimum filing requirements, the original request number is reused as its application number and the trade mark is published later.
The Last Trade Mark to be Indexed number has never taken into account unpublished TM Headstart requests. Since November 2018, it also does not take into account unpublished trade marks that have not yet met minimum filing requirements. This creates a scenario where the Last Trade Mark to be Indexed number is greater than unpublished and unindexed trade marks that may be published at a later point in time.
However, these trade marks can be identified using new functionality made available in Australian Trade Mark Search, i.e. limiting searches based on publication dates. Guidance for this has been added to the Australian Trade Mark Search Help under the heading Searching previously unpublished records.
Further to this, we are working to include more detailed information about indexing events within each individual trade mark’s History to provide a further level of assurance about when particular trade marks were made searchable on Australian Trade Mark Search.
Australian Trade Mark Search history alignment with eServices/B2B Inbox
There have been occasions where the Australian Trade Mark Search history has not been rebuilt after correspondence has been cancelled due to the data anomaly issues outlined in the sections above.
There have also been reported issues that notices have been sent erroneously when the cancellation process is not performed correctly. Situations where notices are sent erroneously are often the result of the data anomaly issues outlined in the sections above in addition to our staff adjusting to how the new system works.
A thorough review of all correspondence cancelled since November 2018 has been undertaken and history rebuilt on the cases that have been identified. In cases where notices have been sent erroneously and brought to our attention there is a process to issue further correspondence to clarify the actions performed. If appropriate a data fix is also applied.
The Australian Official Journal of Trade Marks
The Australian Official Journal of Trade Marks (Journal) is now available through Australia Trade Mark Search.
Journals published since the technology upgrade (12 November 2018) are now searchable by publication type and date. Publications are now on a daily cycle, rather than weekly.
Full information about the publication events for a trade mark is available within the History and Publications section of the trade mark’s details page. These details include a snapshot of the trade mark at the time of each publication event.
PDFs containing publication events are available to download and will be published daily.
Journals published before 12 November 2018 are still available.
Recently there has been a reported issue specifically related to the daily production of PDF copies of the Journal. Events relating to a trade mark that have been published in previous publications have been duplicated in subsequent journal publications.
This issue does not occur in the publications listed within the History & Publications of trade marks, or in the searchable publications. This issue has been resolved. An abridged version with an explanatory note accompanies each original unaltered copy of the journal that was affected by this issue.
Madrid eFiling issues
There have been reported issues with using the World Intellectual Property Offices online form to file an application for international registration governed exclusively by the Madrid protocol (MM2). IP Australia continues to work with WIPO on intermittent connection issues as well as issues occasionally occurring with the transfer of AU data that populates this form for you.
Due to the important timeframes related to this process it is recommended that you do not use the temporary email address to attend to data issues on Madrid matters. Please continue to contact us using the existing methods available on our current contact us webpage.
Changes in eServices for trade marks
The eServices menu for trade marks has changed to allow customers to navigate through the system with more ease by offering a simplified view when selecting various service requests.
To make it easier to access high volume forms when managing IP Rights the general eServices request menu has been moved to a more prominent position under General Trade Mark Services.
By clicking on Respond to an Examiner’s Report or Update an Owner Name/Address from the new menu, customers will now be given simplified options and more information to assist them selecting the correct form.
The existing trade mark PDF forms have been replaced with web-based forms. These enhancements enable pre-emptive text and remove the need to manually enter details when completing the forms. The ability to attach static forms has been removed, replacing them with structured forms that will be pre-populated with customer information. These changes will lead to more consistent customer information, improved data quality and faster response times by IP Australia.
The following trade mark forms have been amended:
- Respond to an Examiner’s Report
- Update an Owner Name/Address
- Change the Agent or Main Contact Details
- Change Ownership
- Extension of Time for Acceptance
- Extension of Time (Other)
Need more help?
If you have any queries regarding the system enhancements mentioned above, please contact us.