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

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 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.

Question #1

Q: Subsection 21(1) of the Industrial Design Act refers to a time period fixed under this Act being extended. Are periods of time in the Industrial Design Regulations also extended under subsection 21(1)?

A: Yes. A period of time prescribed by the Industrial Design Regulations is considered to be a time period fixed under the Act.

Question #2 – Updated July 15, 2020

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

A: CIPO remains open to the public at this time and therefore if you are able to act on or before the deadline, we encourage you to do so. Applicants, registered proprietors and their agents are advised not to wait until the last minute to submit time-sensitive communications.

Most deadlines falling in the period of time beginning on and ending on are extended until as a result of the Minister designating all days in this period for the purpose of subsection 21(1) of the Industrial Design Act. Question #8 provides a list of deadlines that may not be extended under subsection 21(1) of the Act and you may need to act before to avoid consequences.

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

Question #3 Updated July 15, 2020

Q: I have a deadline that falls on 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 to the public 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 22(4) of the Industrial Design Regulations, however, some deadlines cannot be extended.

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. Further, some 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 – Updated July 15, 2020

Q: In view of the designated days, is the time period to respond to an examination report extended under subsection 21(1) of the Industrial Design Act?

A: The time period to respond is extended if the last day of the time period (3 months after the date of the report) falls on one of the designated days ( to ).

Currently, if the last day of the time period falls on or after the time period is not extended under subsection 21(1) of the Industrial Design Act. If the circumstances that led to the decision to designate to continues, the Minister may decide to extend the period of time for which days are designated and your deadline could be extended past .

Question #5

Q: Other than the period to respond to an examination report, what time periods are extended under subsection 21(1) of the Industrial Design Act in relation to designated days under subsection 21(2) of the Act during the COVID-19 service interruptions?

A: CIPO recommends that you consult an intellectual property professional for advice on this issue. CIPO takes the position that the following time periods, which may not be an exhaustive list of time periods, are extended under subsection 21(1) of the Industrial Design Act:

Question #6

Q: How are extensions of time limits under 21(1) of the Industrial Design Act affecting Hague Applications or Hague Registrations?

A: Failure to meet time limits for a communication to the International Bureau may be excused in the circumstances provided for by Rule 5 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.

In business before CIPO, extensions due to prescribed days or designated days applies, among other things, to the time period to respond to a Notification of Refusal.

The prescribed days and designated days do not apply to the time period within which CIPO must communicate to the International Bureau a Notification of Refusal, a Statement of Grant of Protection, or a Notification of Refusal of a Correction. Those periods are extended only when CIPO closed to the public for all or part of the day or when the International Bureau is closed.

Question #7 – Updated July 15, 2020

Q: Is the grace period in paragraphs 8.2(1)(a) of the Industrial Design Act and section 31 of the Industrial Design Regulations extended under subsection 21(1) of the Act if the last day of the 12 month period falls on a day in the period of time beginning on and ending on ?

A: CIPO is open to the public and is receiving industrial design applications filed electronically, in person, by fax and by mail. If you are able to file an application in Canada before the expiry of the 12-month grace period, we encourage you do so. If you are unable to do so and intend to file an application later than 12 months after the design was disclosed, we recommend that you consult an intellectual property professional for advice.

Question #8

Q: What time periods are not extended under subsection 21(1) of the Industrial Design Act in relation to designated days under subsection 21(2) of the Act during the COVID-19 service interruptions?

A: CIPO recommends that you consult an intellectual property professional for advice on this issue. CIPO takes the position that the following time periods, which may not be an exhaustive list of time periods, are not extended under subsection 21(1) of the Industrial Design Act:

Question #9

Q: What means of communication are available to applicants or registered proprietors at this time?

A: CIPO remains open to the public at this time and 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 not be receiving CIPO correspondence. Please consult the Notices section of our website for the latest information in view of the rapidly evolving situation.

Question #10

Q: Are the Industrial Design Office and Patent Appeal Board (for the review of industrial design examiner decisions) receiving documents and payments during designated days associated with COVID-19?

A: Yes. The intake process is operational and CIPO is receiving documents related to industrial design applications and registered designs. So long as the Office is open, we will continue to accept and date-stamp all documents and payments received by CIPO.

Question #11

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

A: For industrial design applications, documents received by the Office are not available online. Nevertheless, the Canadian Industrial Designs Database remains available online and provides bibliographical data pertaining to applications and registrations that have been made available to the public.

Should you wish to consult documents pertaining to an application or registration made available to the public, we invite you to contact the Client Service Centre or to order copies of documents online.

Question #12

Q: Will I receive correspondence from the Office?

A: CIPO is still issuing correspondence; however, clients should expect delays as CIPO re‑adjusts operational processes.

Question #13

Q: Is examination continuing?

A: Yes, examination will continue; however, clients should expect delays.

Question #14

Q: How long will industrial design services be impacted?

A: If the circumstances that led to the designation of these days continues, the 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 responses.

Question #15 – Updated July 15, 2020

Q: Is the time limit to pay fees also extended until ?

A: Yes, in general, a time limit to pay a fee is considered to be a time limit that is prescribed under the Industrial Design Act and as such, is extended under subsection 21(1) of the Act in relation to designated days under subsection 21(2).

A notable exception are fees payable to the International Bureau of WIPO under the Hague System for the International Registration of Industrial Designs, whose time limits are not extended as a result of designated days under subsection 21(2) of the Act. For additional information, see Question #6.

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