Frequently asked questions – Resuming service after COVID-19 interruptions – Industrial designs

From: Canadian Intellectual Property Office

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These questions and answers were prepared in the context of the COVID-19 service interruptions. Questions relating to industrial design 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 the Canadian Intellectual Property Office's (CIPO) interpretation of the legislation and should not be relied upon for legal purposes or business decisions. CIPO recommends you consult an intellectual property professional who can advise you on your particular situation.

Flexibility for clients after the end of designated days

Question #1
When do I need to act if my original deadline fell on a designated day?

A: If your original deadline fell on a designated day between and , inclusively, you will need to act on . If you are able to act before the deadline, we encourage you to do so.

Question #2
Will I be given additional time to act if I am unable to act on

A: Additional time will not be automatically provided, however you can request an extension of time of six months to respond to a report issued under subsection 22(2) of the Industrial Design Regulations or to submit a copy of a previously filed application or a translation under subsections 27(1) and (2) of the Regulations.

Note that you may only request one extension of time per report and that the request must be made before the end of your deadline as extended by the designated days. There is no fee for extension of time requests.

Question #3
I have a deadline that falls shortly after the end of the designated days. Will I be given additional time to act if I am unable to act by the due date?

A: If the last day of the time period falls on or after , the time period to reply is not extended.

You can request an extension of time of six months to respond to a report issued under subsection 22(2) of the Industrial Design Regulations or to submit a copy of a previously filed application or a translation under subsections 27(1) and (2) of the Regulations.

In limited cases, there may be an opportunity to act past the deadline, for example in the late maintenance grace period or in the reinstatement period, but this carries additional costs and risks.

Other deadlines are critical and cannot be extended. Applicants, registered proprietors and their agents are advised not to wait until the last minute to submit time-sensitive communications. If you are unable to act on or before the deadline, CIPO recommends that you consult an intellectual property professional for advice.

Question #4
How are time limits to pay fees affected by the end of the designated days?

A: If your original deadline to pay a fee fell on a designated day between and , inclusively, you will need to act on . If you are able to act before the deadline, we encourage you to do so.

Time limits to pay a fee are critical and cannot be extended. Applicants, registered proprietors and their agents are advised not to wait until the last minute to pay fees. If you are unable to act on or before the deadline, CIPO recommends that you consult an intellectual property professional for advice.

Note that time periods to pay a fee to the International Bureau with respect to International Applications and International Registrations under the Hague System for the International Registration of Industrial Designs are not extended as a result of designated days under subsection 21(2) of the Industrial Design Act.

Question #5
If the COVID-19 pandemic continues to affect my ability to make various requests, such as a request for a priority claim, or a request to maintain the exclusive right granted by the registration of my industrial design, am I able to apply for an extension of time?

A: Time limits other than the ones set out under subsection 22(2) and 27(1) and (2) of the Industrial Design Regulations are critical and cannot be extended.

In limited cases, there may also be an opportunity to act past the deadline, for example in the case of the grace period for the late maintenance of an industrial design, but this carries additional costs and risks.

Applicants, registered proprietors and their agents are advised not to wait until the last minute to submit time‑sensitive requests. If you are unable to act on or before the deadline, CIPO recommends that you consult an intellectual property professional for advice.

Question #6
I received a correspondence from the Industrial Design Office notifying me that my application does not contain all the documents, information and statements required to receive a filing date and requiring me to submit the outstanding requirements within two months of the date of the notice. The deadline to respond to this notice fell on a designated day. When do I need to respond? Can I get an extension of time to provide the outstanding requirements due to the COVID-19 pandemic?

A: Given that the deadline fell on a designated day, the due date to respond is . This deadline is critical and cannot be extended. If the time period to respond expires, your application will be deemed never to have been filed and any fees paid in respect of the application will not be refunded. If you are unable to act on or before the deadline, CIPO recommends that you consult an intellectual property professional for advice.

Question #7
If the COVID-19 pandemic continues to affect my ability to respond to an office action before the due date (normal or as extended by the designated days), can I apply for an extension of time after the deadline has passed?

Q:

A: Retroactive extensions of time do not exist under the Industrial Design Act. All requests for extension of time must be made before the end of your deadline as extended by the designated days.

Communicating with CIPO

Question #8
What means of communication are available to applicants or registered proprietors now that service is resuming?

A: Applicants and registered proprietors are strongly encouraged to use CIPO's electronic services to avoid delays.

CIPO's correspondence procedures are generally unaffected; however, some designated establishments may still be closed, thus not receiving CIPO correspondence. Please consult the Notices section of our website for the latest information in view of the rapidly evolving situation.

Question #9
What means of communication should I use to ensure timely processing of requests for extensions of time?

A: While your request may be submitted by regular mail directly to CIPO or to a designated establishment, CIPO encourages you to use electronic services by submitting a PDF through CIPO's Industrial Design General Correspondence Application or Industrial Design EFiling and EAmendment application. The request must be addressed to the Industrial Design Office and must contain the name of the applicant and application number.

Archived COVID-19 FAQs

Archived: Frequently asked questions – COVID-19 service interruptions – Industrial designs

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