The COVID-19 pandemic continues to impact business before Canada’s Intellectual Property Office. As reported, the Canadian Intellectual Property Office (“CIPO”) announced that March 16, 2020 to March 31, 2020 inclusive would be considered “designated days” under the applicable Canadian intellectual property legislation; the time to respond to certain CIPO actions therefore was extended to April 1st. CIPO had indicated that, if the circumstances that led to this designation continues, CIPO may decide to extend the applicable time period.
CIPO has now announced that April 1, 2020 to April 30, 2020 inclusive will also be considered “designated days”. This designation is in addition to the previous designation noted above. This means that if a CIPO deadline under the Patent Act, Trademarks Act and/or Industrial Design Act falls on any of these additional designated days, the time period to respond may now be extended to the next business day, namely May 1, 2020.
CIPO Offers An FAQ Page to Answer Your Patent Questions
To assist those having or seeking patent rights in Canada, CIPO has also prepared a series of Frequently Asked Questions (“FAQs”) regarding the COVID-19 service interruptions and patent prosecution matters. Information on service interruptions with respect to the Trademarks Opposition Board (“TMOB”) can be found here.
CIPO is careful to point out that the answers provided are only a guide and should not be considered legally binding. CIPO recommends that everyone consult a registered patent agent who can advise on any specific situation. Anyone concerned about Canadian patent prosecution deadlines should review all of the FAQs provided on the CIPO website and consult a Canadian patent agent as applicable.
To that end, Fasken’s IP group is taking steps to ensure continuity of our services to our clients over this period, largely by working remotely. Please don’t hesitate to reach out, should you need assistance. In the meantime, we will continue to keep you informed of any developments as they occur.
A summary of some of the more significant FAQs and CIPO’s answers are provided below.
Q: When do I need to act if I have a deadline that falls on either March 16, 2020, March 31, 2020 or any day in between?
Most deadlines falling in the above noted designated days (e.g. March 16, 2020 to March 31, 2020) are extended until April 1, 2020. As it will, for now, remain open, CIPO recommends that if you are able to act on or before any applicable deadline you are encouraged to so. During the pandemic, significant delays in all CIPO services should be expected.
Q: What time periods are not extended during the COVID-19 service interruptions?
CIPO takes the position that the following time periods, which are not an exhaustive list, may not be extended:
- The 18-month confidentiality period and the publication of patent applications at CIPO;
- The prescribed periods for adding to the specification and drawings in a patent application as any time to do so is limited to six months after the earliest date on which the Commissioner receives the relevant document;
- The periods for appeal to the Federal Court since, in CIPO’s view, these are not “any business before the Patent Office” as required by enabling section of the Patent Act.
- The time limit for the filing of a divisional application, namely before issuance of the parent application.
Q: Are the grace periods provided in the Patent Act extended if the last day of the 12-month period falls on a day in the period of time beginning on March 16, 2020 and ending on March 31, 2020?
CIPO recommends that, where you intend to file a patent application later than 12-months after a public disclosure, and you need to rely on the grace period to remove that public disclosure from the prior art to protect the patentability of your invention, you consult a registered patent agent for advice. CIPO did indicate that Canadian patent examiners will be instructed not to cite a public disclosure by the applicant if it falls within the 12-month period as extended under the designation days.
Q: I disclosed my invention to the public before filing a patent application in Canada and the last day of the 12 month grace period falls within the designated period. I have yet to file a Canadian patent application. What should I do?
CIPO strongly cautions applicants from relying on the designation period to extend the one year grace period under Canadian patent law for filing an application and recommends that you consult a registered patent agent for advice.
If you are unable to file a patent application in Canada before the expiry of the 12-month grace period, CIPO suggests that you may wish to consider if you can file a Patent Cooperation Treaty (“PCT”) international application with either the Canadian Receiving Office or with the International Bureau before the expiry of the grace period. If you are able to file a PCT international application you would be able to enter the national phase in Canada at a later date, up to 30 months from the priority date.
Q: Is the 12 month priority period extended?
CIPO takes the position that the 12-month priority period is extended during the designated days.
Q: I intend to file a PCT international application in Canada and claim priority to an earlier filed application. If the last day of the priority period falls on one of the designated days, is the priority period extended in respect of the filing of a PCT international application in the international phase?
CIPO takes the position that extensions under the designation period have no effect on the priority period when filing under the PCT. Currently, while CIPO as Receiving Office is open to the public, CIPO takes the view that the priority period is not extended through any provisions in the PCT.
Q: Due care is required to be shown in order to reinstate an application following abandonment for failure to pay a maintenance fee, or for failure to request examination when the request for reinstatement is received after six months from the deadline to request examination. Due care is also required to be shown in order to reverse the deemed expiry of a patent following a failure to pay a maintenance fee. How will the COVID-19 outbreak be considered in requests to reinstate applications and to reverse the deemed expiry of patents?
When due care is required the Commissioner will make a determination, based on the facts of the case, as to if the applicant or patentee failed to take an action that should have been taken in order to avoid abandonment or deemed expiry despite all due care required by the circumstance. The Commissioner may ask for documentation or information if deemed necessary to make a determination. CIPO does note that the mere fact of the designated days has no direct effect on the determination by the Commissioner. CIPO takes the view that a failure to act in time that is attributed to disruptions caused by the COVID-19 outbreak will be assessed on a case-by-case basis.
In addition to IP matters, Fasken has established a Coronavirus (COVID-19) Knowledge Centre. Given the number of cases of COVID-19 in North America, and continued uncertainty around the world, organizations must plan to manage the impact on their operations and workforces, as well as protect their employees, their families and communities. Ensuring the health and safety of our people, clients and business partners is Fasken’s top priority.