CIPO announces emergency relief - deadlines falling due between March 16 and August 28 extended to August 31, 2020
In view of the COVID-19 pandemic, the Canadian Intellectual Property Office granted short-term relief from deadlines falling due in the designated period of March 16, 2020 to August 28, 2020, inclusive.
Most due dates during this designated period for taking an action in respect of a trademark, patent, or industrial design application, or a registered trademark, patent, or industrial design, were deferred until August 31, 2020, which was the next official business day after August 28.
If you have any questions, please contact us.
What happens if the extended due date of August 31, 2020 was missed?
If an action had to be taken by August 31 but was not, the usual consequences of default apply under the governing intellectual property statute and regulations. Thus, for example, if a patent maintenance fee that was due by the extended date of August 31 was not paid by that date, the patent enters the late fee period and CIPO will send a notice confirming the due date for mailing the maintenance fee plus late fee, failing which the application will be deemed abandoned. If a response to an office action was due on August 31 but not filed on that day, the application is deemed abandoned and may be reinstated by the prescribed deadline, in accordance with the governing regulations for patents, trademarks, or industrial design applications.
How does this affect due dates falling within the designated period?
If CIPO has set a due date for you that falls within the designated period by means of a notice, such as an office action response, you may take advantage of this emergency extension and delay your action until the extended due date.
However, CIPO is currently available to receive submissions, so if you are able to make a submission earlier, you should do so. We do not know if CIPO will experience higher traffic on the extended due date that will affect the performance of online services, or if other factors may prevent delivery of correspondence to CIPO using other means.
How does this affect the deadline for requesting national phase entry?
If your due date for requesting Canadian national phase entry of a PCT application falls within the designated period, you may take advantage of this emergency extension and delay the request until the extended due date.
Again, though, if you are able to make a submission earlier, you should do so. We do not know if CIPO will experience higher traffic on the extended due date that will affect the performance of online services, or if other factors may prevent delivery of correspondence to CIPO using other means.
How does this affect statutory bar dates and Paris Convention filing deadlines?
This emergency extension might to the one-year “grace period” available to patent and design applicants who have made a public disclosure before filing a Canadian application. However, the current wording of the emergency relief provision in our intellectual property statutes is relatively new and has not been interpreted by a court, so there is no certainty. Applicants should not rely on the grace period being extended.
This emergency extension very likely applies to the 12-month (for patents) and 6-month (for designs and trademarks) Paris Convention deadlines for submitting an application claiming priority to a previously regularly filed application. Again, though, we caution that these statutory provisions have not been tested in court.
We strongly recommend that new Canadian applications be submitted by the usual, non-extended due date, particularly because we do not know if CIPO will experience higher traffic on the extended due date that will affect the performance of online services, or if other factors may prevent delivery of correspondence to CIPO using other means.
How does this affect the deadline for requesting reinstatement of an application?
If the due date for requesting reinstatement of an application falls within the designated period, you may take advantage of this emergency extension and delay your request for reinstatement until the extended due date.
The same caution about CIPO capacity on the extended due date applies. If you can make your submission earlier, do so, because we do not know if CIPO will experience higher traffic on the extended due date that will affect the performance of online services, or if other factors may prevent delivery of correspondence to CIPO using other means.
Important note
There are other due dates that may not be subject to this extension because they are exempt from this extraordinary relief. If you have questions about the information above or a due date not covered by this article, please contact one of our lawyers.
