Note: This post has been updated to reflect additional notices issued by CIPO on March 27, 2020, April 27, 2020 and May 13, 2020, all of which further extended the previously announced extension.
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 May 29, 2020 have been extended until June 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 notices issued by CIPO specifically state 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 May 31, 2020, you now have until June 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 June 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 new June 1st 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.
Have questions about how CIPO’s extension of time affects you?
Siskinds LLP has as developed a comprehensive operational plan that aims to protect our employees, clients, colleagues and the greater community while continuing to deliver uninterrupted legal services. If you have questions about CIPO’s extension of time or other intellectual property matters affected by the COVID-19 pandemic, please contact a member of our intellectual property practice group, who will be happy to assist you while observing social distancing and other protective measures.
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).