Frequently asked questions – COVID-19 service interruptions – Patents

From: Canadian Intellectual Property Office

Notice: These questions and answers were prepared in the context of the COVID-19 service interruptions which is rapidly evolving. Questions relating to patent prosecution are highly fact specific and cannot be answered by general questions and answers. The answers provided are only a guide and should not be considered legally binding. If there are inconsistencies between the information in these answers 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.

Question #1

Q: Subsection 78(1) of the Patent Act refers to a time period fixed under this Act being extended. Are periods of times in the Patent Rules also extended under subsection 78(1)?

A: Yes. A period of time prescribed by the Patent Rules is considered to be a time period fixed under the Act.

Question #2

Q: When do I need to act if I have a deadline that falls on either March 16, 2020, April 30, 2020 or any day in between?

A: CIPO remains open for business at this time and therefore if you are able to act on or before the deadline we encourage you to act. Applicants, patentees and their representatives are advised not to wait until the last minute to submit time-sensitive communication.

Most deadlines falling in the period of time beginning on March 16, 2020 and ending on April 30, 2020 are extended until May 1, 2020 as a result of the Commissioner designating all days in this period for the purpose of subsection 78(1) of the Act. Question #4 provides a list of deadlines that may not be extended under subsection 78(1) and you may need to act before May 1, 2020 to avoid consequences.

If the circumstances that led to the designation of these days continues, the Commissioner of Patents may decide to extend the period of time for which days are designated and your deadline could be extended past May 1, 2020.

Question #3

Q: I have a deadline that falls on May 1, 2020 or shortly thereafter. Will I be given additional time to act if I am unable to act by the due date?

A: CIPO remains open for business at this time and therefore if you are able to act on or before the deadline we encourage you to act. If you need additional time to act you may be able to request an extension of time under subsection 3(1) of the Patent Rules, however, some deadlines cannot be extended.

In limited cases there may be an opportunity to act past the deadline in a late period or in the reinstatement period but this carries additional costs and risks. Further some deadlines are critical and are not able to be extended. Applicants, patentees and their representatives are advised not to wait until the last minute to submit time-sensitive communication. If you are unable to act on or before the deadline, CIPO recommends that you consult a registered patent agent for advice.

Question #3A

Q: What is the maximum extension of time to meet a deadline that can be obtained under subsection 3(1) of the Patent Rules.

A: Applicants and patentees can, prior to the expiry of a time limit, request an extension of time for actions where it is permitted by the Rules. The Office will assess the request and if it is compliant and reasonable, the Commissioner will generally grant an extension of time of up to six months per file and per action.

The Patent Rules prescribes limits to extensions of time for some deadlines. For example, the deadline to respond to an examination report can be extended to a maximum of 6 months from the date of the report. The deadline to respond to an examination report is 4 months from the date of the report and so it is possible to obtain a 2 month extension to this deadline.

Note: If the deadline to act falls on a day that is designated by the Commissioner under subsection 78(2) of the Patent Rules, the deadline is already extended to the next day that is not a designated day or a prescribed day (generally non-working days and holidays).

Question #3B

Q: MOPOP Chapter 2.03.03e states that subsequent requests for an extension of time for the same action on the same file will only be considered under exceptional circumstances. Will this directive be relaxed during the period of COVID-19 disruptions? For example, will an extension of time be permitted if an applicant seeks a second extension of time under subsection 3(1), either during this period or shortly afterwards?

A: For certain deadlines, such as the deadline for responding to examination reports, no subsequent extension of time is possible for the same action. For all other deadlines, subsequent requests for an extension of time for the same action on the same file will only be considered under exceptional circumstances. MOPOP provides in 2.03.03e that circumstances beyond the control of the person concerned include, for example, severe illness, accident, death, bankruptcy or other serious and unforeseen circumstances.

COVID-19 disruptions occurring during the designated days period and thereafter will be considered to be an exceptional circumstance that may justify a subsequent extensions of time for the same action on the same file. In order for the Commissioner to be satisfied that the circumstances justify the extension, the applicant must provide a simple justification that explains why an extension of time is being requested.

Question #4

Q: What time periods are not extended under subsection 78(1) of the Patent Act, in relation to designated days under subsection 78(2), during the COVID-19 service interruptions?

A: CIPO recommends that you consult a registered patent agent for advice on this issue. CIPO takes the position that the following time periods, which may not be an exhaustive list of time periods, may not be extended under subsection 78(1) of the Patent Act:

Question #4A

Q: Are time periods in the Patent Cooperation Treaty (PCT) and the Regulations under the PCT extended under subsection 78(1) of the Patent Act as a result of designated days under subsection 78(2)?

A: CIPO's understanding is 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 PCT. With this understanding, these time periods are not extended as a result of designated days under subsection 78(2).

Time periods related to PCT international applications in the international phase may be extended under provisions in the Patent Cooperation Treaty (see for example Rules 80.5, 82 and 82quater, as applicable). For information regarding filing a PCT international application with the International Bureau as the Receiving Office, and possible extensions of time, please consult WIPO and the March 2020 edition of the PCT Newsletter.

Question #5

Q: In view of the designated days, is the time period to respond to an examination report extended under subsection 78(1) of the Patent Act?

A: The time period to respond is extended if the last day of the time period (4 months after the date of the report) falls on one of the designated days (March 16, 2020 to April 30, 2020).

Currently, if the last day of the time period falls on or after May 1, 2020 the time period is not extended under subsection 78(1) of the Patent Act. If the circumstances that led to the decision to designate March 16, 2020 to April 30, 2020 continues, the Commissioner of Patents may decide to extend the period of time for which days are designated and your deadline could be extended past May 1, 2020.

Question #6

Q: Is the grace period in paragraphs 28.2(1)(a) and 28.3(a) of the Patent Act extended under subsection 78(1) of the Patent Act 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 April 30, 2020?

A: If there has been a public disclosure of the subject matter of an invention for which it is desired to file a patent application, CIPO recommends that every effort be made to file the application within the 12-month grace period calculated without reference to prescribed days or designated days. CIPO strongly cautions applicants from relying on subsection 78(1) to extend the grace period.

Question #7

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 period designated under subsection 78(1) of the Patent Act. I have yet to file a Canadian patent application. What should I do?

A: CIPO is open for business and is receiving patent applications filed electronically, in person, by fax and by mail. If you are able to file a patent application in Canada before the expiry of the 12 month grace period, the public disclosure of your invention will not bar you from obtaining a patent in Canada. CIPO strongly cautions applicants from relying on subsection 78(1) to extend the grace period and recommends that you consult a registered patent agent for advice on this issue.

If you are unable to file a patent application in Canada before the expiry of the 12 month grace period, you may wish to consider if you can file a 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.

If, on or before the date of the public disclosure, you have filed an earlier patent application in any country, including Canada, and you intend to claim priority to this application you may be able to restore the right of priority in accordance with subsection 28.4(6) of the Patent Act with the effect that your public disclosure, even if it occurred more than 12 months before the filing date of your Canadian application, may be disregarded for the purposes of determining patentability.

For communication with the International Bureau, applicants are strongly encouraged to use WIPO electronic services, namely ePCT.

Question #8

Q: Is the 12 month priority period extended under subsection 78(1) of the Patent Act if the last day of the priority period is a prescribed day or designated day?

A: CIPO takes the position that the 12 month priority period, expressed in paragraph 28.1(1)(b) and subparagraphs 28.2(1)(d)(iii) and 28.4(5)(a)(i) and (ii) of the Patent Act, is extended if the last day of the priority period ends on a prescribed day or a designated day, regardless whether the office is open or closed to the public.

Question #9

Q: Are time periods in relation to restoration on the right of priority extended under subsection 78(1) of the Patent Act?

A: The prescribed time in paragraph 28.4(6)(b) of the Patent Act within which the applicant can request restoration of the right of priority is extended under subsection 78(1) of the Patent Act.

CIPO takes the position that the 2 month time period referred to in paragraph 28.4(6)(a) of the Patent Act, within which to file the pending application or the co-pending application, as the case may be, is extended under subsection 78(1) of the Patent Act.

Question #10

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 under subsection 78(1) in respect of the filing of a PCT international application in the international phase?

A: In relation to the priority period, CIPO's understanding is 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 PCT and will likely not be recognized by designated Offices, other than Canada, in the national phase.

With respect to the situation under Canadian law, as mentioned above in relation to question 8, CIPO takes the position that the 12 month priority period, expressed in paragraph 28.1(1)(b) and subparagraphs 28.2(1)(d)(iii) and 28.4(5)(a)(i) and (ii) of the Patent Act (which apply to both nationally filed and PCT national phase applications) is extended on prescribed days and designated days regardless of whether CIPO is open or closed to the public. In addition, under Canadian law for PCT national phase applications based on international applications filed in a receiving office other than CIPO, CIPO considers that the priority period would also be extended in the circumstances referred to in Article 4(C)(3) of the Paris Convention and in PCT Rule 80.5, meaning essentially where, in respect of the receiving office where the international application was filed, the last day of the priority period is an official holiday or a day when that receiving office is not open for the filing of applications.

If you file your PCT application later than the 12 month priority period as a result of the impact of COVID-19 on your ability to file the application on time, you may wish to consider restoration of the priority right which is available for applications filed up to 14 months after the filing date of the earlier filed application.

For information regarding filing a PCT international application with the International Bureau as the Receiving Office, and possible extensions of time, please consult WIPO. The March 2020 edition of the PCT Newsletter contains “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.

Question #11

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 6 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?

A: 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 the client for additional documentation or information if deemed necessary to make a determination. Additional documentation could include supplementary details, medical notes or other evidence of the facts (e.g. affidavit). The mere fact that days have been designated under subsection 78(2) of the Act has no direct effect on the determination by the Commissioner. 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.

Question #12

Q: How do extended periods of time under subsection 78(1) affect third party rights under Section 55.11 of the Act?

A: CIPO does not take a position on this issue. CIPO recommends that if you intend to act, or did take an action, during a period of time in which third party rights may apply that you consult a registered patent agent for advice.

Question #13

Q: What means of communication are available to applicants and patentees at this time?

A: CIPO remains open for business at this time and applicants and patentees are strongly encouraged to use CIPO's electronic services to avoid delays. CIPO's correspondence procedures are generally unaffected with the following exceptions:

The following regional offices for the Canadian Intellectual Property Office (CIPO) are not receiving CIPO correspondence until further notice:

Because this is a rapidly evolving situation please consult the Notices section of our website for the latest information.

Question #14

Q: Are the Patent Branch and Patent Appeal Board receiving documents and payments during designated days associated with COVID-19?

A: Yes. The intake process is operational and is receiving documents related to Canadian patent applications and patents. The international receiving Office is open for business. We will accept and date-stamp all documents and payments received by CIPO. We encourage use of online services to reduce use of mail or courier delivery.

Please note that due to the configuration of our IT systems for the period March 16-31 there were some issues, namely:

Question #15

Q: Will I be able to see documents received by the office?

A: Yes. The Canadian Patent Database (CPD) will publish incoming documents for Canadian patent applications and patents that are open to public inspection.

Question #16

Q: Will you tell me if the Canadian filing requirements are met?

A: Yes. Going forward, applicants will be notified of deficiencies during the designated days. Filing certificates will also be sent. Please note that normal service standards may be affected.

Question #17

Q: Will you tell me if the national entry requirements are met?

A: Yes. Going forward national entry refusal letters will be sent. Acknowledgement of national phase entry will also be sent during the designated days. Please note that normal service standards may be affected.

Question #18

Q: Are examination interviews continuing?

A: Examination interviews will continue and interview records will be documented within the Canadian Patent Database (CPD).

Question #19

Q: Will you be granting patents?

A: Yes. Until further notice, patent grants will be issued, and mailed.

Question #20

Q: Is CIPO acting as an ISA-IPEA authority at this time?

A: Yes. Until further notice, documents related to CIPO as an ISA-IPEA authority will be mailed.

Question #21

Q: Will I receive documents during the designated days?

A: Yes. Documents will be sent during the designated days. Applicants and patentees are strongly encouraged to use CIPO’s electronic services to avoid delays.

Question #22

Q: How do I correspond with CIPO electronically?

A: To receive documents about your Canadian patent or patent application by email:

Our electronic service delivery allows you to:

A My ISED Account is needed to submit information online. Find instructions on the ISED website or by contacting the CIPO Client Service Centre.

Question #23

Q: On or after Tuesday March 31st, 2020, I received a letter of abandonment that did not appear to consider an action that I recently took to reinstate the application. What should I do?

A: As of Tuesday March 31st, 2020 the Patent Office will resume sending system generated documents by both paper and e-mail. There will be a slow ramp up over a few days to deliver all abandonment letters produced during the previous designated days. For files that were abandoned prior to the designated days, there may be occasions where you have already taken an action that would have responded to the letter had it been sent on time and that would render the letter irrelevant. If your applications is open to public inspection, you can review your application on the Canadian Patent Database (CPD) and consult the administrative status page to confirm the status of the application as having been reinstated if you took the action that needed to be taken to reinstate.

Question #24

Q: How long will patent services be impacted?

A: If the circumstances that led to the designation of these days continues, the Commissioner, Registrar and Minister may decide to extend the period of time for which days are designated. If additional days are added, the office will re-evaluate the situation and its response.

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