Wilson Lue LLP Patent & Trademark Agents, Intellectual Property Counsel

CIPO announces emergency relief - deadlines falling due between March 16 and April 30 extended to May 1, 2020

PUBLISHED March 2020 IN Patents, Trademarks, Copyright & Designs

In view of the COVID-19 pandemic, the Canadian Intellectual Property Office has granted short-term relief from deadlines falling due in the designated period of March 16, 2020 to April 30, 2020, inclusive. Note: this is an update from the originally published notice, which only granted relief to March 31, 2020.

Most due dates during this designated period for taking an action in respect of a trademark, patent, or industrial design application, or a registered trademark, patent, or industrial design, may be deferred until the first day after the end of the designated period, which is currently May 1, 2020. In the meantime, CIPO remains open and able to receive submissions, and encourages users to use their online services.

The extended due date of May 1 is subject to change. The government may choose to further extend the deadline if necessary. CIPO’s latest announcement as of March 27, 2020 is available here. In addition, CIPO has published a FAQ addressing patent-related deadlines and Patent Office operations.

To help reduce the spread of COVID-19, Wilson Lue has implemented a remote working program. We remain operational at our usual capacity. If you have already instructed us concerning a due date falling during the designated period, we will complete the task by the original due date, regardless of this emergency extension.

If you have any questions, please contact us.

How does this affect due dates falling within the designated period?

If CIPO has set a due date for you that falls within the designated period by means of a notice, such as an office action response, you may take advantage of this emergency extension and delay your action until the extended due date.

However, CIPO is currently available to receive submissions, so if you are able to make a submission earlier, you should do so. We do not know if CIPO will experience higher traffic on the extended due date that will affect the performance of online services, or if other factors may prevent delivery of correspondence to CIPO using other means.

How does this affect the deadline for requesting national phase entry?

If your due date for requesting Canadian national phase entry of a PCT application falls within the designated period, you may take advantage of this emergency extension and delay the request until the extended due date.

Again, though, if you are able to make a submission earlier, you should do so. We do not know if CIPO will experience higher traffic on the extended due date that will affect the performance of online services, or if other factors may prevent delivery of correspondence to CIPO using other means.

How does this affect statutory bar dates and Paris Convention filing deadlines?

This emergency extension probably applies to the “grace period” available to patent and design applicants who have made a public disclosure before filing a Canadian application. However, the current wording of the emergency relief provision in our intellectual property statutes is relatively new and has not been interpreted by a court, so there is no real certainty.

This emergency extension very likely applies to the 12-month (for patents) and 6-month (for designs and trademarks) Paris Convention deadlines for submitting an application claiming priority to a previously regularly filed application. Again, though, we caution that these statutory provisions have not been tested in court.

We strongly recommend that new Canadian applications be submitted by the usual, non-extended due date, particularly because we do not know if CIPO will experience higher traffic on the extended due date that will affect the performance of online services, or if other factors may prevent delivery of correspondence to CIPO using other means.

How does this affect the deadline for requesting reinstatement of an application?


If the due date for requesting reinstatement of an application falls within the designated period, you may take advantage of this emergency extension and delay your request for reinstatement until the extended due date.

The same caution about CIPO capacity on the extended due date applies. If you can make your submission earlier, do so, because we do not know if CIPO will experience higher traffic on the extended due date that will affect the performance of online services, or if other factors may prevent delivery of correspondence to CIPO using other means.

Important note

There are other due dates that may not be subject to this extension because they are exempt from this extraordinary relief. If you have questions about the information above or a due date not covered by this article, please contact one of our lawyers.

 

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