Archived — 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.

This document refers to extensions under subsection 78(1) of the Patent Act in relation to designated days under subsection 78(2) of the Patent Act. The first designated day was March 16, 2020. The last designated day under subsection 78(2) of the Patent Act is . The first day that is not a prescribed or designated day following the designated days is . Throughout the current document, the phrases "first designated day", "last designated day" and "first day that is not a prescribed or designated day" have been used to indicate the dates shown above.

Throughout the current document we make reference to digital tools for submitting and receiving correspondence. Please note that Chapter 2 of the MOPOP provides a list of all acceptable means of corresponding with the Patent Office.

Question #1

Q: Subsection 78(1) of the Patent Act refers to a time period fixed under this Act being extended. Are periods of time 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 July 15, 2020

Q: Is the time limit to pay a fee also extended to the first day that is not a prescribed or designated day?

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 July 15, 2020

Q: When do I need to act if I have a deadline that falls on either the first designated day, the last designated day, 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 the first designated day and ending on the last designated day are extended until the first day that is not a prescribed or designated day 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 the first day that is not a prescribed or designated day 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 the first day that is not a prescribed or designated day.

Question #3 – Updated July 15, 2020

Q: I have a deadline that falls on the first day that is not a prescribed or designated day 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 July 15, 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.

Currently, if the last day of the time period falls on or after the first day that is not a prescribed or designated day, 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 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 the first day that is not a prescribed or designated day.

Question #6 – Updated July 15, 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 the first designated day and ending on the last designated day?

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: 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 – Updated July 15, 2020

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

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

You must be the default correspondent (the appointed agent, the common representative, or the sole applicant if no agent was appointed) on the patent or patent application in order to request a change to the method of correspondence or to update the contact information for a patent application or patent.

Use General Correspondence - Patents or submit a correspondence requesting a change in correspondence method:

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 - Patents 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 – Updated July 15, 2020

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 General Correspondence - Patents. The information required can be found in Question #22A.

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 - Patents online system.

Question #22H – Added July 15, 2020

Q: Can I register a document when I file a patent application?

A: Yes. The Patent Office will register multiple documents at filing.

Please note, however, that the Canadian Patent Application system currently has a system constraint that we are working to improve. The system allows you to register only one document and pay the one fee at filing. It is not currently possible to pay fees to register more than one document. If you would like to register additional documents for the patent application, you can use General Correspondence – Patents to submit documents and pay the required fees.

Question #22L – Added July 15, 2020

Q: When using General Correspondence – Patents, how do I pay to register a document, record a change of name, or record a transfer for multiple files?

A: General Correspondence – Patents allows you to request services and pay the associated fee for multiple files.

You must provide a list of files for which you are making the service request.

To pay the associated fees, navigate to the Fees section and:

  1. Select Part 6 – Registration of Documents or Recording of Transfers
  2. Select one of the following (this action should apply to all file numbers)
    • Registration of a document, $100
    • Recording of a change of name, $100
    • Recording of a transfer, $100
  3. Enter the number of files in Quantity
  4. Press Add to view the entry.

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.

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 July 15, 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.

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 the first day that is not a prescribed or designated day, 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 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 the current first day that is not a prescribed or designated day.

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 statutes 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."

Question #33 – Added July 15, 2020

Q: Why is there a delay between submission of digital correspondence, appearance of the document in the Canadian Patent Database (CPD), and action on my file?

A: When CIPO receives your correspondence through our online tools, it automatically receives a digital date stamp. CIPO employees perform the next steps of reviewing the submission, updating the patent database and tasking actions for the Patent Office. Restrictions on how our employees work related to the COVID situation may have resulted in a delay in seeing documents online, and in employees performing the next steps in the process. The Patent Office works on tasks and updates the file when the task is complete.

Throughout CIPO, COVID-19 has had an impact on how our employees perform their work. We are working to improve digital access to our services, to increase access to your information, and to improve efficiency in our processes. We ask for your patience as we transition to these new ways of working.

Question #34 – Added July 15, 2020

Q: I’ve submitted a service request for a published patent application or a patent but I don’t know its status. How will I know when CIPO has received the request?

A: If your application has been published, you will see the submitted documents when you access information about the file on the Canadian Patent Database (CPD). Please be aware, however, that it takes some time to process requests.

If you cannot find the information you need on the CPD, you can call the CIPO Client Service Centre and ask for a quick status update.

If you would like a copy of documents in the file, you must use the Order IP documents service using the CIPO – Patent Document Order Form.

Question #35 – Added July 15, 2020

Q: I’ve submitted a service request for a non-published patent application, to record a transfer or to register a document. Information on these kinds of service requests is currently not available online. How do I ask questions about these kinds of files?

A: On May 25, 2020 we expanded our service to clients. You can now call the CIPO Client Service Centre and ask for information about a non-published patent application, a transfer or a registered document. The information officer will confirm your identity and rights to access the file. The officer can then look at the information available in our systems and answer your questions.

Please be aware that it takes some time to process requests. There will be a delay before the information officer will be able to see information on new requests. Completing the action by the Patent Office will take additional time.

If you would like a copy of documents in the file, you must use the Order IP documents service.

Question #36 – Added July 15, 2020

Q: How do I submit a request to correct issues identified on a patent application or patent?

A: Please submit all requests for service through General Correspondence - Patents. With the shift to digital systems, we are dealing with a large number of phone calls, emails and online feedback. Using the General Correspondence system allows us to date and document your request. This will ensure that the task is properly assigned and that the appropriate action is taken.

Question #37 – Added July 15, 2020

Q: A maintenance fee or the request for examination and its associated fee is due for my patent application within the designated days. What will happen when the designated days end?

A: As a result of the designated days, the due date for action in these cases is extended to the first day that is not a prescribed or designated day.

You will be required to pay a late fee if you do not pay your maintenance fee or request examination and pay the fee on or before the first day that is not a prescribed or designated day. You will also receive a notice that will state the actions required.

If you wish to avoid a late fee, please take action on or before the first day that is not a prescribed or designated day.

Question #37A – Added July 15, 2020

Q: I received a notice for my patent application before the designated days came into effect. It was for an action that was to be taken on a patent application. The due date falls within the period of the designated days. What will happen when the designated days end?

A: As a result of the designated days, the due date for the notice in this case is extended to the first day that is not a prescribed or designated day. Your patent application will be deemed abandoned if you do not take action on or before the first day that is not a prescribed or designated day.

If you wish to avoid having a patent application deemed abandoned you must respond to the notice on or before the first day that is not a prescribed or designated day. You must also remember to address whatever actions were required by the notice and to pay any required fees and applicable late fees.

Our system will send courtesy abandonment letters for patent applications deemed abandoned a few weeks after the date the patent application is deemed abandoned. This time lag will allow us to process requests before our system sends out these courtesy letters.

You will have 12 months from the date of the deemed abandonment to request reinstatement of your application. The date of deemed abandonment will be the first day that is not a prescribed or designated day.

Question #37B – Added July 15, 2020

Q: How do I reinstate a patent application deemed abandoned?

A: Certain reinstatements have the additional requirement of a positive determination of due care by the Commissioner. The Commissioner must decide that you tried to take action but were unable to do so due to the stated reasons. The Commissioner must also determine that the reasons are sufficient to allow the Patent Office to reinstate the patent application.

The following requests for reinstatement of applications deemed abandoned require a positive determination of due care:

In order to reinstate a patent application deemed abandoned, you must:

Please see Question #11 for more information regarding due care related to COVID-19.

For more information regarding the abandonment and reinstatement of an application, please see Chapter 9 of the MOPOP.

Question #37C – Added July 15, 2020

Q: My patent application was in the period of reinstatement before the designated days came into effect. The final day of the reinstatement period falls within the designated days. What will happen when the designated days end?

A: You will have until the end of the first day that is not a prescribed or designated day to reinstate your patent application.

Failure to take the actions required to reinstate your patent application will result in your application being considered beyond the period of reinstatement.

Please submit requests as soon as is reasonably possible in order to ensure that your request is received in time.

Question #38 – Added July 15, 2020

Q: A maintenance fee for my patent is due within the designated days. What will happen when the designated days end?

A: As a result of the designated days, the due date for action is extended to the first day that is not a prescribed or designated day.

You will be required to pay a late fee if you do not pay your maintenance fee on or before the first day that is not a prescribed or designated day. You will also receive a notice that will state the actions required.

If you wish to avoid a late fee, please take action on or before the first day that is not a prescribed or designated day.

Question #38A – Added July 15, 2020

Q: I received a notice for my patent before the designated days came into effect. The due date falls within the period of the designated days. What will happen when the designated days end?

A: As a result of the designated days, the due date for action on this notice is extended to the first day that is not a prescribed or designated day.

If you do not act on or before the first day that is not a prescribed or designated day, your patent will be deemed expired on the first day that is not a prescribed or designated day.

If you wish to avoid having your patent deemed expired you must respond to the notice on or before the first day that is not a prescribed or designated day. You must also remember to address whatever actions were required by the notice and to pay any required fees and applicable late fees.

Our system will send courtesy letters for patents deemed expired a few weeks after the date that the patent is deemed expired. The time lag allows us to be sure that we process any requests before our system sends out these courtesy letters.

If your patent is deemed expired you will have 12 months to request the reversal of the deemed expiry beginning from the date SIX months after the date of the deemed expiry. The date of the deemed expiry in this case will be the first day that is not designated and not prescribed.

If you wish to avoid having your patent deemed expired, please take action in response to the notice on or before the first day that is not a prescribed or designated day.

Question #38B – Added July 15, 2020

Q: My patent was in the period of deemed expiry before the designated days came into effect. The final day of the period to reverse the deemed expiry falls within the designated days. What will happen when the designated days end?

A: You will have until the end of the first day that is not a prescribed or designated day to request the reversal of deemed expiry of your patent.

Failure to take the actions required and to pay any fees and late fees required to reverse the deemed expiry of your patent will result in your patent being deemed permanently expired.

If you wish to avoid having your patent deemed permanently expired, you must take action on or before the first day that is not a prescribed or designated day.

Question #38C – Added July 15, 2020

Q: How do I reverse the deemed expiry of a patent?

A: The Commissioner must decide that you tried to take action but were unable to do so due to the stated reasons, and that these reasons are sufficient to reverse the deemed expiry of the patent. This is called a positive determination of due care. Once the Commissioner makes this determination, the Patent Office can reverse the deemed expiry of the patent.

In order to request that the Office reverse the deemed expiry of the patent you must:

Please see Question #11 for more information regarding due care related to COVID-19.

For more information regarding the reversal of a deemed expiry of a patent, see Chapter 27 of the MOPOP.

Question #39 – Added July 15, 2020

Q: I received a Notice or Requisition from the Office that was sent while the designated days were in effect and the due date is after the designated days end. Will the designated days extend these time limits?

A: No. The designated days do not extend the due date on any Notice or Requisition sent by the Office during the designated days where the due date of the Notice or Requisition is after the designated days end.

Question #40 – Added July 15, 2020

Q: When the designated days are no longer in effect, how can I extend time limits to take action with the Office?

A: The Commissioner has the authority to extend periods of time for certain actions under the Patent Rules if the Commissioner is satisfied that the circumstances justify the extension and the other administrative conditions are met.

Requests will be assessed and if found compliant and justified, the Commissioner may grant an extension of time of up to a specified time not beyond any limit prescribed by the Patent Rules. Subsequent requests for an extension of time for the same action on the same file will only be considered under exceptional circumstances.

In order to request that the Office extend a time limit:

If you wish to request an extension for an action that was due within the designated days period, you must submit the request, reasons and the associated fee on or before the first day that is not a prescribed or designated day.

Further information regarding extension of time can be found in MOPOP at 2.03.03.

Question #41 – Added July 15, 2020

Q: I received a Requisition from a patent examiner that was issued before the designated days came into effect. The due date falls within the period of the designated days. Can the due date be extended when the designated days end?

A: Examination requisitions cannot be extended beyond the total calendar time of 6 months regardless of any extension of time. You will have to determine whether an extension is possible for your patent application.

If you wish to request an extension, you must submit the request and the associated fee on or before the first day that is not a prescribed or designated day.

Please submit requests as soon as is reasonably possible in order to ensure that your request is received in time.

See MOPOP 2.03.03 for more information.

Question #42 – Added July 15, 2020

Q: Something beyond my control associated with the COVID-19 situation resulted in me not being able to pay fees associated with my application or patent. A late fee is now due. Can the Commissioner waive the late fee?

A: No. Late fees associated with patent protection are always required. The requirement of the late fees has been prescribed by legislation. Unfortunately, the Commissioner has no discretionary authority on the payment of this fee.

Question #43 – Added July 15, 2020

Q: The last designated day and the first day that is not a prescribed or designated day are separated by a weekend or a holiday. Will a correspondence I submit on the weekend or holiday get a reception date of the last designated day, the day submitted, or the first day that is not a prescribed or designated day?

A: Designated days have not impacted how we assign document reception dates.

Patent document reception dates are determined as follows:

For more information about how the reception date for postal mail is determined please contact the CIPO Client Service Centre.

Question #44 – Added July 15, 2020

Q: The period for agents to maintain their names on the patent agent register ended on March 31, 2020 during the designated days. The designated days have extended the due date to the first day that is not prescribed or designated. What will happen if I miss this due date?

A: Patent agents who do not request to maintain their names on the patent agent register on or before the first day that is not prescribed or designated will be removed from the patent agent register.

Date modified: