COVID-19: Further Update on Patent Office Practice

As mentioned in our recent blog post, extensions of time in view of the COVID-19 pandemic have been granted by the Canadian Intellectual Property Office (CIPO) for certain deadlines that fall within the time period of March 16, 2020 to March 31, 2020, inclusive.  In coordination with the Intellectual Property Institute of Canada (IPIC), CIPO has posted an FAQ website to address various questions surrounding service interruptions in the Patent Branch during this period.  

A link the FAQ page is provided here:   http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04762.html  

Among the highlights provided (non exhaustive):  

- Most deadlines for taking any action before CIPO are deemed extended, e.g. responses to Examiner’s Reports (office actions).  However, certain exceptions may apply (see below).

- Notices, requisitions, and letters (other than those in connection with CIPO’s capacity as an international search and examination authority), national entry refusal letters and granted patents will not be sent during designated extension period. They will be issued following the end of this period (which may be extended by CIPO as warranted).

- CIPO will continue to receive communications electronically, and will publish incoming documents for applications and patents that are open to public inspection.  However, as mentioned in our previous blog post, applicants/patentees should expect significant delays in the processing of correspondence sent to CIPO.

- Some critical deadlines are not able to be extended.  Examples of these include, but are not limited to, the following:                

- The 18-month confidentiality period prior to publication of a patent application (i.e. when an application is scheduled to be open to public inspection) will not be extended;

- Appeals to the Federal Court (e.g. after a Patent Appeal Board decision) are not included in the extension of time provisions, as they are not “any business before the Patent Office”.  Therefore, any deadline to file an appeal remains unchanged;                

- Any divisional application must still be filed before the parent application issues to patent. No extensions of time are provided in this regard. 

- If you have made a prior public disclosure of your invention, and you need to rely on the grace period to remove that public disclosure from the prior art to protect the patentability of your invention, please consult a patent agent.  The FAQ page indicates that Patent Examiners at CIPO will be instructed not to cite a public disclosure by the applicant if it falls within the 12-month period as extended under these  extension of time provisions.   

Thus, given the complexity and uncertainty of the above provisions, we would recommend adhering to any original deadlines for taking any action before CIPO, even if those deadlines fall within the extension of time period stated above.  To avoid any unforeseen and undesirable consequences, use of the extension of time provisions (where such is available) should ideally be limited to exceptional situations and only when absolutely necessary.  Applicants are encouraged to submit time-sensitive communications, and provide clear instructions to their patent agent, to avoid additional costs and risks that may be involved.  

Certain time periods related to PCT international applications in the international phase may be extended.  Consult WIPO for more information or click here: https://www.wipo.int/pct/en/newslett/   Please note that the above is for information purposes only, does not constitute legal advice or opinion, and is subject to change at a moment’s notice.  Individual cases may vary.  Consult a patent agent at Cassan Maclean IP Agency Inc. for more information.