Extensions of Time
From: Canadian Intellectual Property Office
By this notice, the Patent Office is clarifying its practice regarding requests for extensions of time under subsection 3(1) of the Patent Rules. The present notice follows and aligns with the previous practice notice dated , regarding requests for extensions of time due to the COVID-19 pandemic.
The Office's expectations regarding requests for an extension of time are outlined in chapter 2.03.03e of the Manual of Patent Office Practice (MOPOP), released on .
Subsection 3(1) of the Patent Rules allows the Commissioner to extend periods of time fixed by the Rules, provided that the extension is applied for before the expiry of the existing period of time, the necessary fee is paid, and the Commissioner considers that the circumstances justify the requested extension.
In order to consider whether the circumstances justify an extension of time, the Commissioner must be made aware of the circumstances that resulted in the applicant requesting an extension. As indicated in MOPOP,
…the Commissioner will consider reasonable and detailed explanations as to why the applicant was incapable of fulfilling prescribed requirements within the prescribed time. While the Patent Office does not offer specific guidelines regarding the content of the explanation, the explanation should be specific to the patent application in question, and should provide sufficient information for the Commissioner to make an informed decision.
Some circumstances that may justify an extension of time are as follows:
- A recent transfer of the rights to the application
- A recent change in the appointed patent agent
- Any health issues impacting the applicant or patent agent
- Specific logistical issues effecting communication between the applicant and the patent agent
- Specific additional efforts that an applicant must take in order to comply with an outstanding Office action
- Any other unforeseen issues
If a request to extend a period of time does not include a description of the circumstances, the request will be refused.
A request that includes a simple statement indicating that more time is required to respond to an outstanding Office action or to obtain instructions from an applicant etc., but does not include a description of the circumstances will also be refused.
Following a refusal of a request for an extension of time, an applicant may subsequently provide a supplemental communication, which contains a description of the circumstances, before the expiry of the existing deadline. As long as the required fee was submitted along with the original request, a supplemental communication will not be subject to any fee. The applicant is strongly advised to note in any supplemental communication that additional justifications for the previously requested extension of time are being provided, and to include the date of the original request, in order to clarify that the communication is supplemental to an earlier request and that the required fee for requesting the extension has already been paid.
If a request for extension of time has been refused and the existing deadline has expired, the patent application may have been deemed abandoned. An application that has been deemed abandoned may be reinstated in accordance with the Patent Act and Patent Rules.
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