Note: This post has been updated to reflect additional notices issued by CIPO, mostly recently on August 5, 2020, each 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 August 21, 2020 have been extended until August 24, 2020. Deadlines falling on August 22 and August 23 were already effectively extended to August 24, 2020 because they fall on a weekend.
With the most recently announced extension, CIPO advised that there would be no further automatic extensions of time. Therefore, August 24, 2020 will be the new deadline for any deadlines falling between March 16 and August 21, 2020. Failing to take any required actions by this date will thereafter trigger the consequences of failing to meet the applicable deadline.
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?
No. After a series of notices issued by CIPO specifically stating that the period of the extension may be extended further if circumstances that led to the initial extension continue, the notice issued on August 5, 2020 confirms that the period of the extension will not be extended further beyond August 24, 2020.
Further extensions based on the circumstances presented by COVID-19 may, however, 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 Such extensions of time may require the party seeking the extension of time to file a request for the extension of time and to pay a prescribed fee for requesting the extension, which should be done before any applicable deadline. Extensions applied for after a deadline has passed are discretionary and will only be granted where the failure to take the necessary action, or request an extension of time, by the deadline was unavoidable.
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 August 21, 2020, you now have until August 24, 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 August 24th 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 August 24th 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).