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 #1A – Updated June 30, 2020

Q: Is the time limit to pay a fee also extended until July 20, 2020?

A: Yes, in general the payment of a fee is considered to be "business before the Patent Office" and as such, the time period to a pay fees is extended under subsection 78(1) of the Patent Act in relation to designated days under subsection 78(2).

A notable exception are fees payable to the International Bureau of WIPO during the international phase of the Patent Cooperation Treaty (PCT), which are not extended as a result of designated days under subsection 78(2). For additional information, see Question #4A.

Question #1B

Q: Will I lose advanced examination (Special Order) status if I request an extension under subsection 3(1) for reasons related to COVID-19?

A: Yes.

Question #2 – Updated June 30, 2020

Q: When do I need to act if I have a deadline that falls on either March 16, 2020, July 17, 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 July 17, 2020 are extended until July 20, 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 July 20, 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 July 20, 2020.

Question #3 – Updated June 30, 2020

Q: I have a deadline that falls on July 20, 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).

Consistent with the position taken by the World Intellectual Property Organization (see PCT News article: https://www.wipo.int/export/sites/www/pct/en/covid_19/82quater.pdf published April 9, 2020), CIPO takes the position that PCT Rule 82quater.1 applies in the circumstance of global COVID-19 disruption and that the current global pandemic should be considered to be a "natural calamity … or other like reason". CIPO intends to treat favourably any PCT Rule 82quater request citing COVID-19 related issues and not require evidence to be provided that the virus affected the locality in which the interested party resides.

For information regarding filing a PCT international application with the International Bureau as the Receiving Office, and possible extensions of time, please consult WIPO News for the March 2020 and April 2020 editions of the PCT Newsletter.

Question #5 – Updated June 30, 2020

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 July 17, 2020).

Currently, if the last day of the time period falls on or after July 20, 2020 the time period is not extended as a result of the designation of days under subsection 78(2) of the Patent Act. If the circumstances that led to the decision to designate March 16, 2020 to July 17, 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 July 20, 2020.

Question #6 – Updated June 30, 2020

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 July 17, 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 #13A

Q: Are you receiving deliveries at the Ottawa and Gatineau offices?

A: Yes. At this time, courier delivery is being received. Registered mail from Canada Post is arriving. In-person delivery is possible during regular hours at the mailroom of the Gatineau Office. Please note that our ability to receive deliveries may change at any time. As a result, we encourage submission through electronic means.

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.

We have implemented a new temporary service to notify you by email that your patent has been granted. We hope that this new service is helpful if you are unable to receive the physical copy of the grant due to current delivery delays. This new service was launched on April 28.

We deliver the service automatically for those files that have identified email as the preferred method of correspondence. If you already receive your correspondence from the Patent Office by email there is nothing you need to do.

If you currently receive your correspondence from the Patent Office by mail, then to receive this new service, you need to request a change to your preferred method of correspondence to email. See Questions #22A and #22D for more information.

Question #19A

Q: My firm is closed and unable to receive deliveries. What will happen to granted patents that have been mailed but are undeliverable?

A: We have found that many agent firms and offices are closed and are not able to receive documents. Where delivery is not possible, documents are returned to the CIPO mailroom in Gatineau. Undeliverable documents will remain in the CIPO mailroom until delivery is possible and reliable.

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 #22A

Q: What are the specific steps to request email correspondence delivery for a single or a few existing Canadian applications or patents?

A: The fastest and easiest way is to submit a request through the General Correspondence online system. Attach a document containing a clear request to receive email correspondence delivery, include the one email address that will receive all documents for the files, and the application or patent numbers to receive email correspondence delivery.

Question #22B

Q: How long will it take to process my request for email correspondence delivery?

A: Requests for correspondence by email made through the General Correspondence online system are typically processed within 10 working days. This could change depending on workforce restrictions or other unforeseen circumstances. Requests received by mail may take longer to process due to delays in mail and courier services.

Question #22C

Q: Will the email correspondence delivery request be retroactive?

A: No. Our systems do not allow us to make this request retroactive. The change will apply to any document we create after the change occurs in our systems.

Question #22D

Q: I'd like to request a bulk change so that I get email correspondence delivery for all of the files associated with my name or my firm's name. How do I submit this request and get the fastest change?

A: To request a bulk change, submit a request through the General Correspondence online system. Please attach a digital text file that contains the list of the application or patent numbers to be changed. Attach a document stating that you are requesting a bulk change to email document delivery. The document should also contain the list of application and/or patent numbers, and must contain the one email address that will receive documents for all of the files. Please note that you must carefully check your list to ensure that you are the correspondent on file for each application or patent.

To obtain a list of published applications and patents associated with you name or your firm's name, you can do a search on the Canadian Patent Database.

Question #22E

Q: Is it possible for CIPO to e-mail recent communications sent by regular mail?

A: No, it is not possible to resend documents that have already been sent by regular mail. This is not possible for our current systems. Please consult the Canadian Patent Database (CPD) to see documents present in your published files. The CPD is being updated daily.

Question #22F

Q: Are there any file size restrictions when submitting documents in electronic form?

A: When submitted in an electronic form, the parts of the application must be broken down into individual files.

There are maximum file sizes depending on the online application used to submit:

Please note that the ability to upload files will vary depending on your internet connection speed and the number of requests received by CIPO at the same time. If you get a timeout error while attempting to upload, try splitting your documents into smaller files and uploading them one at a time.

Question #22G

Q: I've submitted my correspondence on paper but I'm not sure you received it. Should I submit another copy through General Correspondence or by fax to be sure that you will receive it?

A: You can submit your correspondence through any of the acceptable methods of correspondence. However, we have no way of determining whether a correspondence is a duplicate of another submission. As a result, submitting multiple copies of a correspondence results in delays in service and increases the probability of errors in your file.

Please also note that if you submit multiple copies of authorizations to pay fees, we are required to charge you for each service request. This may mean that you will have to request a refund by sending an official request in writing.

It is best to submit your correspondence using only one method and you should avoid sending duplicates.

At this time, we are processing all forms of correspondence. However, the fastest and easiest way is to submit is through the General Correspondence online system.

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.

Question #25

Q: Will the office accept electronic copies of priority documents?

A: Yes. You can submit copies of certified priority documents by electronic means. We do not need the original of the certified priority document. You can submit this document through any means, but we encourage submission through the General Correspondence online system.

Question #26

Q: Can I submit by Fax?

A: Yes. Faxes are currently being accepted. However, there may be a delay in service because processing faxes requires CIPO employees on site. Acceptance of faxes could be impacted in the future. We encourage submission through the General Correspondence online system.

Question #27

Q: Is the Patent Appeal Board still holding oral hearings during the designated days?

A: Yes. Subject to agreement and availability of the applicant and the Members of the Patent Appeal Board (PAB), oral hearings may be conducted (1) via teleconference using the government teleconferencing system or (2) via videoconference by means of a third party video teleconferencing service accessible through the Internet (Microsoft Teams).

In-person hearings are being postponed until further notice. It is expected that some in-person hearings currently scheduled in May and June will be postponed.

If you have an upcoming in-person hearing, a Member of the PAB will contact you to offer you a teleconference or videoconference hearing or to set a new date for an in-person hearing (in July, August or September).

Applicants are also encouraged to advise the Patent Appeal Board as soon as possible if a hearing is no longer required. For cases where the PAB is advised a hearing is no longer required, the PAB will review the case and provide a recommendation to the Commissioner taking into account the written record before it, including any further written submissions the applicant has provided.

Question #28 – Updated June 30, 2020

Q: In view of the designated days, are the time periods to respond to notices under subsections 86(9) and 86(11) of the Patent Rules 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 (1 month after the date of a notice under subsection 86(9) of the Patent Rules and 3 months after the date of a notice under subsection 86(11) of the Patent Rules) falls on one of the designated days (March 16, 2020 to July 17, 2020).

Please note that the deadlines to respond to PAB letters that do not fall within the subsections noted above are being treated as having been extended in the same manner.

Currently, if the last day of the time period falls on or after July 20, 2020 the time period is not extended as a result of the designation of days under subsection 78(2) of the Patent Act. If the circumstances that led to the decision to designate March 16, 2020 to July 17, 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 July 20, 2020.

Question #29

Q: Can I use electronic signatures when I submit documents electronically to the Patent Office?

A:Yes. Due to the extraordinary circumstances related to the COVID-19 pandemic CIPO is encouraging applicants and patentees to correspondent with the Office electronically. As such, the Patent Branch will reduce our signature requirements and will, along with handwritten or wet signatures (using a pen and paper), accept the following types of signatures:

Reminder: Requiring a signature on documents provides authentication of the person submitting/declaring/stating the facts in the document. Requiring a signature on certain documents provides authentication of the signor and allows the Office to ensure that it is transacting with the correct person/entity.

Question #30

Q: Are you proceeding with improvements to your systems that are not directly related to the COVID situation?

A: Yes. We continue to improve our systems. Here is something that has just been implemented:

These following certificates now include the client reference number in the information block:

Question #31

Q: Will the Patent Appeal Board continue to mail Commissioner's Decisions?

A: Yes.

Question #32

Q: I would like to file an appeal with the Federal Court. Can I do this?

A: Please consult the information available on the Federal Court website here.

It appears that the Federal Court continues to accept documents and electronic filings. Regarding deadlines for filing, the Notice posted by the Federal Court on April 4, 2020 states that "Deadlines for commencing actions, appeals or applications under other statutes continue to apply and cannot be extended or varied unless permitted under the terms of and in the manner prescribed by those statutes."

Date modified: