MOPOP - Chapter 20


Withdrawal, abandonment, reinstatement, lapse and time limits

Table of Contents

20.01
Withdrawal of an application – June 2015

An application may be withdrawn at any time. A request for withdrawal must be in writing from the authorized correspondent on behalf of the applicant (subsection 6(1) of the Patent Rules). Any fee which has been paid prior to the date of withdrawal is not refundable except under subsections 4(3) and (4) of the Patent Rules

Withdrawal of an application prior to the application being opened to public inspection may prevent publication of the application [see section 2.01.02 of this manual].

An application which is withdrawn after being opened to public inspection will remain publicly accessible.

20.02
Abandonment – June 2015

An application shall be deemed abandoned under subsection 73(1) or 73(2) of the Patent Act if the applicant does not:

  • reply in good faith to any requisition of an examiner within the time limit specified (see Chapter 13 and section 19.06 of this manual);
  • complete the application and pay the completion fee within the time limit specified (see Chapter 5 of this manual);
  • pay the prescribed maintenance fees within the time limit specified (see chapter 24 of this manual);
  • make a request for examination or pay the prescribed fee within the time limit specified (see Chapter 13 and section 14.10 of this manual);
  • make a request for examination or pay the prescribed fee, when required to do so by the Commissioner, within the time limit specified (see chapter 13 of this manual);
  • pay the final fee within the time limit specified (see chapter 13 of this manual); or
  • comply with any requisition of the Commissioner within the time limit specified (sections 97 and 151 of the Patent Rules).

Each failure of the applicant to act as detailed above will result in a separate cause of abandonment. Therefore an application can be subject to multiple concurrent or overlapping abandonments.

The provisions for abandonment are a matter of law and do not allow for the exercise of discretion by the Commissioner.  It is the duty of the applicant to meet the obligations necessary to avoid abandonmentFootnote 1.

20.03
Reinstatement – June 2015

Where an application becomes abandoned under subsection 73(1) or 73(2) of the Patent Act, the applicant may reinstate the application according to subsection 73(3) of the Patent Act and section 98 or 152 of the Patent Rules within twelve months of the date the application was deemed abandoned by:

  1. i) making a request for reinstatement,
  2. ii) taking the action that should have been taken in order to avoid the
    abandonment, and
  3. iii) paying the fee set out in item 7 of Schedule II of the Patent Rules.

The time limit for reinstatement may be extended under subsection 26(1) of the Patent Rules provided that the request for the extension of time is made before the period for reinstatement expires and the fee set out in item 22 of Schedule II of the Patent Rules is paid before the period for reinstatement expires. If the applicant takes no action prior to the expiry of the twelve-month reinstatement period, the application cannot be reinstated. No retroactive extensions are available.

The provisions for reinstatement are a matter of law and do not allow for the exercise of discretion by the Commissioner. It is the duty of the applicant to meet the requirements necessary to reinstate an applicationFootnote 2.

Where an application is abandoned for more than one failure to act, the applicant must take the required actions for each failure to act within twelve months of each respective date of abandonment (sections 98 and 152 of the Patent Rules).

Example:

An application has become abandoned on two grounds:

  • the applicant failed to respond to an examiner's requisition within the six month time limit (the response was due on June 2, 2013); and
  • the applicant failed to pay a maintenance fee that was due on July 10, 2013.

In order to reinstate the application, the applicant must do the following:

  • request reinstatement;
  • respond to the examiner's requisition and submit a reinstatement fee as outlined in item 22 of Schedule II of the Patent Rules by June 2, 2014; and
  • submit the maintenance fee and a separate reinstatement fee as outlined in item 22 of Schedule II of the Patent Rules by July 10, 2014.

If the applicant attempts to reinstate but only responds to the examiner's requisition and pays only one reinstatement fee, the application will remain abandoned for failure to pay the maintenance fee; the time limit for reinstatement will be the end of the twelve-month period from the date the maintenance fee was due (i.e. July 10, 2014).

20.04
Lapsed patent – June 2015

A lapsed patent is one which no longer confers any patent rights to the patentee because the appropriate maintenance fees have not been paid within the applicable time limit (see Chapter 24 of this manual).

A patent is deemed to have lapsed at the expiration of the time specified in items 31 and 32 of Schedule II of the Patent Rules (subsection 46(2) of the Patent Act). A lapsed patent cannot be revived.

Notification of lapsed patents will be published in the Canadian Patent Office Record.

20.05
Time limits – June 2015

Time limits corresponding to various topics are covered in the chapter that deals with a topic in question. For example, for a discussion of time limits associated with priority requests see Chapter 7 of this manual.

20.05.01
Time limits expressed in “months”

Applications become abandoned or reinstated if certain actions are taken or not taken within definite time limits, usually expressed in a certain number of months. When a requisition is made for an action to be taken within a fixed number of months and the final month has no day of the month corresponding to the day of the month of the requisition, then the last day of the final month is the date the action must be completed. Thus an examiner's requisition with a time limit of six months which is issued on August 29, 30, or 31 must be replied to by February 28 (or February 29 in leap years). Similarly a requisition issued on March 31 setting three months for reply requires a response by June 30.

20.05.02
Time limits expiring on a dies non

When the last day upon which an applicant or a patentee may act on an application or patent falls on a day when the Patent Office is closed for business, the action may be taken on the next day the Patent Office is open (subsection 78(1) of the Patent Act). If the failure to act sets up new time limits (such as a reinstatement period), the new period starts to run from the extended date, rather than from the original date when the action was due.

Example:

A notice of allowance is issued on June 25, 2014 and has a time limit for payment of the final fee of six months. The final fee would then be due on December 25, 2014. However, as the Patent Office is closed December 25 and 26 for the statutory holidays and December 27 and 28 fall on a weekend, the final fee will be due on December 29, 2014. If the final fee is not paid on or before December 29, 2014, the application will be deemed to be abandoned on December 29, 2014. If final fee is not be paid by December 29, 2014 and the application becomes abandoned, it could be reinstated by requesting reinstatement and paying the appropriate fees on or before December 29, 2015.

20.05.03
Extensions of time

Under subsection 26(1) and section 27 of the Patent Rules, the Commissioner may extend the time limits associated with:

  • a requisition concerning the appointment of a patent agent;
  • a requisition by the Commissioner;
  • an appeal to the Federal Court of a decision of the Commissioner under section 19, 19.1, subsection 20(3), 20(15), or 31(6) of the Patent Act; or,
  • reinstatement.

Under subsection 35(2) of the Patent Act, where the Commissioner by notice requires an applicant to make a request for examination pursuant to subsection (1) or to pay the prescribed fee within the time specified in the notice, the Commissioner may extend the time limit to comply with the notice but the time cannot be extended beyond the later of five years from the filing date or, if applicable, six months after filing a divisional application (subsection 96 of the Patent Rules).

Under paragraph 73(1)(a) of the Patent Act and subsection 26(2) of the Patent Rules, where the Commissioner has set a shorter period for replying in good faith to any requisition made by an examiner, the Commission can extend the time limit to respond to the examiner's requisition but the time cannot be extended beyond six months from the date of the requisition.

In the cases listed above, the applicant must apply for the extension of time before the expiry of the original time limit and pay the fee set out in item 22 of Schedule II of the Patent Rules. While no affidavit is required when requesting an extension of time, the applicant must explain why the required actions cannot be completed within the time period originally set. Where the Commissioner is satisfied that the circumstances justify the extension, an extension will be granted.

The applicant will be notified by letter of the Commissioner's decision regarding any request for an extension of time associated with the time limits listed above.

The Commissioner cannot extend the time limits associated with:

  • requesting priority (subsections 88(5) and 142(2) of the Patent Rules);
  • filing a divisional application (subsections 36(2), 36(2.1) and 36(3) of the Patent Act);
  • completing an application (subsections 94(4) and 148(2) of the Patent Rules);
  • deposits of biological materials (subsections 104(5) and 160(5) of the Patent Rules);
  • requests for examination (subsections 96(3) and 150(3) of the Patent Rules);
  • appeals to a Federal Court concerning a refusal of an application (section 41 of the Patent Act);
  • paying the final fee (subsection 30(11) of the Patent Rules);
  • applying for a reissue patent (subsection 47(1) of the Patent Act);
  • an appeal of a re-examination board decision (subsection 48.5(2) of the Patent Act); and,
  • maintenance fees (sections 102 and 157 of the Patent Rules).

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