Notice: These questions and answers were prepared in the context of the COVID-19 service interruptions which are rapidly evolving. The answers provided are only a guide and should not be considered legally binding. If there are inconsistencies between the information in these answers and the applicable legislation, the legislation must be followed. The information provided reflects CIPO’s interpretation of the legislation and should not be relied upon for legal purposes or business decisions. CIPO and IPIC recommend you consult a registered patent or trademark agent who can advise you on your particular situation.
The following questions were developed by CIPO's Industrial Design Branch, IPIC’s Industrial Design Committee and IPIC members and answered by CIPO. IPIC will continue updating this page as the situation evolves. If you have a question you would like answered by CIPO, please email Chelsea Berry, IPIC's Manager of Communications and Member Services, at firstname.lastname@example.org.
Q: General - We understand that CIPO is not sending out correspondence by mail (which is understandable since we presume that CIPO’s mailroom is closed for obvious reasons). Members would prefer that CIPO find a way to get the work flow moving asap (rather than any alternative that involves holding correspondence and releasing it in a batch or over a period of time after the designated days are over). The new legislation allows for electronic communication with the Office. Can CIPO be issuing correspondence electronically?
Is correspondence being intentionally held back? If correspondence is being intentionally held back, is the plan for it to be released together in a batch resulting in a huge number of files with the same deadline?
A: The issuance of correspondence will gradually resume during the week of March 30th, 2020. Applicants will receive correspondence through their preferred means of communication with the office by regular mail or electronically through CIPO’s E-Mailbox application.
Procedures will be put in place to ensure the volume is controlled to prevent a high number of files having the same deadline.
Q: Filing receipts, renewal certificates and registration certificates- are routinely sent electronically – has this practice ceased? If so, is this only a temporary measure?
A: Internal processes that required employees on site, including filing receipts, registration and renewal certificates were suspended for a period of two weeks from March 16th to March 27th, 2020, but will gradually resume the week of March 30th, 2020.
Q: Examiner’s reports – we understand that correspondence generated by Examiners is saved to CIPO’s internal systems. Can Examiners send reports electronically? If there is a concern that reply correspondence could be lost, they could always add a paragraph along the lines of “reply correspondence will only be considered if filed using the online tool" or something.
A: Applicants can indicate that they prefer to receive electronic correspondence, and communications will be made available electronically on CIPO’s E-Mailbox application. Additionally, except for transfers, all documents, information and fees may be submitted through our online services, either through the Industrial Design E-Filing and E-Amendment application or through the Industrial Design General Correspondence application.
Q: Are examiners still conducting examination at close to a regular pace (since many are accustomed to working from home)?
A: Examiners are set up to telework as this has been a long-standing practice within the branch.
While there have been some delays in having paper correspondence issue with respect to all our services during the period of March 16th to March 27th, 2020, new procedures were put in place during the week of March 30th to slowly resume some operational tasks, including the issuance of examiner correspondence. As indicated in CIPO’s official notice, while the Canadian Intellectual Property Office remains open and in operation at this time, clients should expect significant delays in all CIPO services.
Q: Can practitioners still expect examiners to return telephone calls within 24 hours?
A: To the extent that they are able, and given the current circumstances, examiners are still requested to return calls within 24 hours.
Q: Payment of registration/renewal fees – Given the current extension of statutory deadlines to April 1, is CIPO updating its records to show a e fee payment date that does not correspond to the actual earlier payment date? Applicants may not want April 1st shown as the payment date, when the fee was, in fact, paid earlier. There may be unintended consequences of incorrect data being placed on the (public) record.
A: As per the Trademarks Regulations and the Industrial Design Regulations, documents, information or fees that are submitted by physical delivery to the Office are deemed to have been received, if they are delivered when the Office is open to the public, on the day on which they are delivered to the Office; and if they are delivered when the Office is closed to the public, on the first day on which the Office is next open to the public.
Documents, information or fees that are submitted by electronic means are deemed to have been received on the day on which the Office receives them, according to the local time of the place where the Office is located.
Q: Is it still possible to order copies of documents from CIPO and to have them delivered by email (if you have a deposit account?) What about certified copies?
A: Should you wish to consult documents pertaining to an application or registration made available to the public, we invite you to contact the Client Service Centre or to order copies of documents online.
Q: In light of the COVID-19 pandemic, many professionals and firms are closing their physical offices and will be working exclusively from home. Many functions can be completed using CIPO’s e-filing services. However, there are still quite a few things that cannot be done online – eg, filing assignments, attending to recordal of name/address changes – which functions need to be done by fax, mail, or by hand delivery. These options are not feasible for most working from home.
Would it be possible for CIPO to set up a general email account to receive email correspondence for the limited functions that cannot be completed by e-filing?
A: Except for transfers, all documents, information and fees may be submitted through our online services, either through the Industrial Design E-Filing and E-Amendment application or through the Industrial Design General Correspondence application.
Question 9 (multi-part question)
Q: Extension of periods fixed under “this Act”. Section 66 provides as follows -
- 66 (1) If a time period fixed under this Act for doing anything ends on a prescribed day or a day that is designated by the Registrar, that time period is extended to the next day that is not a prescribed day or a designated day.
- Power to designate day
(2) The Registrar may, on account of unforeseen circumstances and if the Registrar is satisfied that it is in the public interest to do so, designate any day for the purposes of subsection (1). If a day is designated, the Registrar shall inform the public of that fact on the website of the Canadian Intellectual Property Office.
A. Deadlines which are not “fixed under this Act – general
The most common deadline in this category are Office Action deadlines? If these deadlines are not affected by the “pandemic deadline extension”, will CIPO accept the pandemic circumstance as exceptional and justifying a further extension (even where an extension has already been granted?
B. Opposition deadlines
For some tasks the actual date is set out in the regulations (such as the timing for filing a counterstatement) even if the Act does refer to a “prescribed time”. Does CIPO interpret reference to “prescribed time” in the Act to bring time periods referenced in the Regulations under the umbrella of “provision 66 designated days”?
A: All deadlines are fixed under the Industrial Design Act and as a result are extended during the period of designated days.