Canada: Filing Deadlines Extended For Patents, Trademarks And Industrial Designs In Response To COVID-19

Note: This post has been updated to reflect a updated notice issued by the Canadian Intellectual Property Office on March 27, 2020.

As Canada responds to the COVID-19 pandemic, the Canadian Intellectual Property Office (CIPO) has taken the drastic step of extending certain filing deadlines under the Patent Act, the Trademarks Act and the Industrial Design Act. Notices issued by CIPO confirm that filing deadlines under these acts falling between March 16 and April 30, 2020 have been extended until May 1, 2020.

How have the deadlines been extended?

The Patent Act¹, the Trademarks Act² and the Industrial Design Act³ each contain provisions that confer upon the Commissioner of Patents, the Registrar of Trademarks and the Minister designated under the Industrial Design Act, respectively, to designate days "[...]on account of unforeseen circumstances and if the Registrar is satisfied that it is in the public interest to do so."⁴ Designation of a day using these powers has the effect of extending any time period ending on such day to the next day that is not either a designated day or a prescribed day (i.e. Saturdays, Sundays and federal holidays).⁵

What deadlines are extended?

The designations announced by CIPO automatically extend any time period fixed under these acts. This includes all ordinary course filing, response and renewal deadlines. For trademarks specifically, CIPO has clarified that the extension applies to deadlines in opposition, section 45 and objection proceedings.

Will further extensions be granted?

The notice issued by CIPO specifically states that the period of the extension may be extended further if circumstances that led to the initial extension continue. Further extensions based on the circumstances presented by COVID-19 may also be available on a case by case basis under the applicable legislation. For example, a clarifying notice issued by CIPO states that, "[...] the Registrar [of Trademarks] will consider the disruption caused by COVID-19 a sufficient circumstance to obtain an extension of time under sections 47(1) and 47(2) of the [Trademarks Act] upon request."⁶

What are the practical implications?

If you missed a deadline under Patent Act, the Trademarks Act or the Industrial Design Act that fell on or after March 16, 2020, or if you have a deadline that falls on or before April 30, 2020, you now have until May 1, 2020 to take whatever action was required by the deadline. There is no guarantee of further extensions and ,therefore, anyone with a deadline in this range should prepare to meet the new April 1st deadline.

Notwithstanding the extended deadline, we recommend striving to meet existing deadlines when possible and correcting missed deadlines as soon as possible. This may help avoid possible difficulties filing if there is an influx of traffic to CIPO's system on the April 1^st extended deadline, or any extended deadline thereafter. CIPO's online filing systems remains active and most deadlines can be met remotely.

Additionally, CIPO announced in its notices that clients should expect significant delays in all CIPO services at this time. This likely means even longer than usual processing times for filings and responses across CIPO's services.

Footnotes

1. SC 1985, c P-4 [Patent Act].

2. RSC 1985, c T-13[Trademarks Act].

3. RSC 1985, c I-9 [Industrial Design Act].

4. see Patent Act at s 78(2), Trademarks Act at s 66(2) and Industrial Design Act at s 21(2).

5. see Patent Act at s 78(1), Trademarks Act at s 66(1) and Industrial Design Act at s 21(1).

6. https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00050.html

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.