Flexibility Demonstrated by IP Offices due to COVID19:

As current and prospective intellectual property (IP) owners around the world continue to find themselves in a difficult situation as a result of the COVID-19 outbreak, many may be challenged to adhere to the deadlines and procedures that must be followed in order to protect their IP rights. Many IP offices around the world, including the Canadian Intellectual Property Office (CIPO), have responded to these challenges and demonstrated flexibility in order to enable IP owners to comply. A full list of the measures adopted by various international IP offices can be found on the World Intellectual Property Organization’s (WIPO) COVID-19 IP Policy Tracker. Information on changes to services and operations, international filings, and frequently asked questions on the effects of COVID-19 on patents, trademarks and industrial designs are available on the COVID-19 and CIPO Operations page.

Below you will find a brief explanation of some of the modified procedures for patent applicants in Canada. However, it is important to note that given the fact-specific nature of patent prosecution, the information gathered here, and provided on CIPO’s website, should not be considered legally binding.  More information related to Trademarks and Industrial Designs are available on CIPO’s website. In all instances, applicants should review the Patent Rules, and/or consult with a registered patent agent for more information relevant to their specific cases.

If applicants need additional time to act beyond the designated period, they may be able to request an extension of time prior to the expiry of a time limit under subsection 3(1) of the Patent Rules. However, some deadlines cannot be extended, and others have prescribed limits to extensions of times. It is essential to review the Patent Rules or consult with a registered patent agent for more information.

Information Related to the Patent Cooperation Treaty (PCT) deadlines:

It is also important to note that extensions of time periods under subsection 78(1) of the Patent Act in relation to designated days under subsection 78(2) have no effect on international procedures under the Patent Cooperation Treaty (PCT). These time periods are not extended as a result of designated days under subsection 78(2). For information regarding filing a PCT international application, and possible extensions of time, it is advised that applicants consult WIPO and the March 2020 and April 2020 editions of the PCT Newsletter. This newsletter contains a section with entitled Practical Advice about possible remedies in the case of missed time limits where the PCT Office with which an action needs to be taken is exceptionally closed, or if the applicant’s or agent’s company/firm is forced to close temporarily.

If applicants have disclosed their invention to the public before filing a patent application in Canada, and the last day of the 12-month grace period falls on one of the designated days, CIPO encourages applicants make every effort to file a patent application in Canada before the expiry of the grace period either electronically, in person, by fax or by mail. CIPO also strongly cautions applicants from relying on subsection 78(1) of the Patent Act to extend the grace period and recommends consulting a registered patent agent for advice on this issue.

Legislation Takes Precedence and Consult Your IP Agent:

If there are inconsistencies between the information provided here and/or on CIPO’s website and the applicable legislation, the legislation must be followed. The information provided reflects CIPO’s interpretation of the legislation and should not be relied upon for legal purposes or business decisions. CIPO recommends you consult a registered patent agent who can advise you on your particular situation.

Written by the Canadian Intellectual Property Office (CIPO)