Notice: These questions and answers were prepared in the context of the COVID-19 service interruptions which are rapidly evolving. Questions relating to patent prosecution are highly fact specific and cannot be answered by general questions and answers. 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 agent who can advise you on your particular situation.
The following questions were developed by CIPO's Patent Branch, IPIC’s Patent 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 cberry@ipic.ca.
Frequently Asked Questions – COVID-19 service interruptions
Question #1
Q: Subsection 78(1) of the Patent Act refers to a time period fixed under this Act being extended. Are periods of times in the Patent Rules also extended under subsection 78(1)?
A: Yes. A period of time prescribed by the Patent Rules is considered to be a time period fixed under the Act.
Question #2
Q: When do I need to act if I have a deadline that falls on either March 16, 2020, March 31, 2020 or any day in between?
A: CIPO remains open for business at this time and therefore if you are able to act on or before the deadline we encourage you to act. Applicants, patentees and their representatives are advised not to wait until the last minute to submit time-sensitive communication.
Most deadlines falling in the period of time beginning on March 16, 2020 and ending on March 31, 2020 are extended until April 1, 2020 as a result of the Commissioner designating all days in this period for the purpose of subsection 78(1) of the Act. Question #4 provides a list of deadlines that may not be extended under subsection 78(1) and you may need to act before April 1, 2020 to avoid consequences.
If the circumstances that led to the designation of these days continues, the Commissioner of Patents may decide to extend the period of time for which days are designated and your deadline could be extended past April 1, 2020.
Question #3
Q: I have a deadline that falls on April 1, 2020 or shortly thereafter. Will I be given additional time to act if I am unable to act by the due date?
A: CIPO remains open for business at this time and therefore if you are able to act on or before the deadline we encourage you to act. If you need additional time to act you may be able to request an extension of time under subsection 3(1) of the Patent Rules, however, some deadlines cannot be extended.
In limited cases there may be an opportunity to act past the deadline in a late period or in the reinstatement period but this carries additional costs and risks. Further some deadlines are critical and are not able to be extended. Applicants, patentees and their representatives are advised not to wait until the last minute to submit time-sensitive communication. If you are unable to act on or before the deadline, CIPO recommends that you consult a registered patent agent for advice.
Question #4
Q: What time periods are not extended under subsection 78(1) of the Patent Act, in relation to designated days under subsection 78(2), during the COVID-19 service interruptions?
A: CIPO recommends that you consult a registered patent agent for advice on this issue. CIPO takes the position that the following time periods, which may not be an exhaustive list of time periods, may not be extended under subsection 78(1) of the Patent Act:
- The 18-month confidentiality period in Section 10 of the Patent Act. Despite the fact the prescribed dates in subsections 10(4) and 10(5) of the Act may be extended under subsection 78(1) of the Act, CIPO takes the position that subsection 10(6) provides a maximum limit of 18 months for the prescribed dates in subsections 10(4) and 10(5) of the Act.
- The prescribed periods relating to additions to the specification and drawings in Section 28.01 of the Patent Act may be extended; however, CIPO takes the position that, in accordance with subsection 28.01(1) of the Act, the extension is limited to 6 months after the earliest date on which the Commissioner receives any document or information under subsection 28(1) of the Patent Act.
- The periods for appeal defined in subsections 18(2), 48.5(2) of the Act, and section 41 of the Act are not affected by subsection 78(1) of the Act because they are not “any business before the Patent Office” as required by that provision.
- The limitation set out in subsections 36(2) and 36(2.1) requiring a divisional application to be filed before issuance of the original application is not subject to an extension under subsection 78(1) of the Act.
Note: Time periods related to PCT international applications in the international phase. These time limits may be extended under provisions in the Patent Cooperation Treaty (see for example Rules 80.5(i), 82 and 82quater, as applicable). For information regarding filing a PCT international application with the International Bureau as the Receiving Office, and possible extensions of time, please consult WIPO and the March 2020 edition of the PCT Newsletter.
Question #5
Q: In view of the designated days, is the time period to respond to an examination report extended under subsection 78(1) of the Patent Act?
A: The time period to respond is extended if the last day of the time period (4 months after the date of the report) falls on one of the designated days (March 16, 2020 to March 31, 2020).
Currently, if the last day of the time period falls on or after April 1, 2020 the time period is not extended under subsection 78(1) of the Patent Act. If the circumstances that led to the decision to designate March 16, 2020 to March 31, 2020 continues, the Commissioner of Patents may decide to extend the period of time for which days are designated and your deadline could be extended past April 1, 2020.
Question #6
Q: Is the grace period in paragraphs 28.2(1)(a) and 28.3(a) of the Patent Act extended under subsection 78(1) of the Patent Act if the last day of the 12 month period falls on a day in the period of time beginning on March 16, 2020 and ending on March 31, 2020?
A: CIPO recommends that if you intend to file a patent application later than 12 months after a public disclosure, 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, that you consult a registered patent agent for advice.
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 subsection 78(1).
Question #7
Q: I disclosed my invention to the public before filing a patent application in Canada and the last day of the 12 month grace period falls within the period designated under subsection 78(1) of the Patent Act. I have yet to file a Canadian patent application. What should I do?
A: CIPO is open for business and is receiving patent applications filed electronically, in person, by fax and by mail. If you are able to file a patent application in Canada before the expiry of the 12 month grace period, the public disclosure of your invention will not bar you from obtaining a patent in Canada. CIPO strongly cautions applicants from relying on subsection 78(1) to extend the grace period and recommends that you consult a registered patent agent for advice on this issue.
If you are unable to file a patent application in Canada before the expiry of the 12 month grace period, you may wish to consider if you can file a PCT international application with either the Canadian Receiving Office or with the International Bureau before the expiry of the grace period. If you are able to file a PCT international application you would be able to enter the national phase in Canada at a later date, up to 30 months from the priority date.
If, on or before the date of the public disclosure, you have filed an earlier patent application in any country, including Canada, and you intend to claim priority to this application you may be able to restore the right of priority in accordance with subsection 28.4(6) of the Patent Act with the effect that your public disclosure, even if it occurred more than 12 months before the filing date of your Canadian application, may be disregarded for the purposes of determining patentability.
For communication with the International Bureau, applicants are strongly encouraged to use WIPO electronic services, namely ePCT.
Question #8
Q: Is the 12 month priority period extended under subsection 78(1) of the Patent Act?
A: CIPO takes the position that the 12 month priority period, expressed in paragraph 28.1(1)(b) and subparagraphs 28.2(1)(d)(iii) and 28.4(5)(a)(i) and (ii) of the Patent Act, is extended on prescribed days and designated days when the office is open to the public and when the office is closed to the public.
Question #9
Q: Are time periods in relation to restoration on the right of priority extended under subsection 78(1) of the Patent Act?
A: The prescribed time in paragraph 28.4(6)(b) of the Patent Act within which the applicant can request restoration of the right of priority is extended under subsection 78(1) of the Patent Act.
CIPO takes the position that the 2 month time period referred to in paragraph 28.4(6)(a) of the Patent Act, within which to file the pending application or the co-pending application, as the case may be, is extended under subsection 78(1) of the Patent Act.
Question #10
Q: I intend to file a PCT international application in Canada and claim priority to an earlier filed application. If the last day of the priority period falls on one of the designated days, is the priority period extended under subsection 78(1) in respect of the filing of a PCT international application in the international phase?
A: CIPO takes the position that extensions under subsection 78(1) of the Patent Act in relation to designated days under subsection 78(2), have no effect on the priority period when filing under the PCT. Currently, while CIPO as Receiving Office is open to the public, it appears the priority period is not extended through any provisions in the PCT. On this issue, CIPO recommends that you consult a registered patent agent for advice.
If you file your PCT application later than the 12 month priority period as a result of the impact of COVID-19 on your ability to file the application on time, you may wish to consider restoration of the priority right which is available for applications filed up to 14 months after the filing date of the earlier filed application.
For information regarding filing a PCT international application with the International Bureau as the Receiving Office, and possible extensions of time, please consult WIPO. The March 2020 edition of the PCT Newsletter contains “Practical Advice” about possible remedies in the case of missed time limits where the PCT Office with which an action needs to be taken is exceptionally closed, or if the applicant’s or agent’s company/firm is forced to close temporarily.
Question #11
Q: Due care is required to be shown in order to reinstate an application following abandonment for failure to pay a maintenance fee, or for failure to request examination when the request for reinstatement is received after 6 months from the deadline to request examination. Due care is also required to be shown in order to reverse the deemed expiry of a patent following a failure to pay a maintenance fee. How will the COVID-19 outbreak be considered in requests to reinstate applications and to reverse the deemed expiry of patents?
A: When due care is required the Commissioner will make a determination, based on the facts of the case, as to if the applicant or patentee failed to take an action that should have been taken in order to avoid abandonment or deemed expiry despite all due care required by the circumstance. The Commissioner may ask the client for additional documentation or information if deemed necessary to make a determination. Additional documentation could include supplementary details, medical notes or other evidence of the facts (e.g. affidavit). The mere fact that days have been designated under subsection 78(2) of the Act has no direct effect on the determination by the Commissioner. A failure to act in time that is attributed to disruptions caused by the COVID-19 outbreak will be assessed on a case-by-case basis.
Question #12
Q: How do extended periods of time under subsection 78(1) affect third party rights under Section 55.11 of the Act?
A: CIPO does not take a position on this issue. CIPO recommends that if you intend to act, or did take an action, during a period of time in which third party rights may apply that you consult a registered patent agent for advice.
Question #13
Q: What means of communication are available to applicants and patentees at this time?
A: CIPO remains open for business at this time and applicants and patentees are strongly encouraged to use CIPO’s electronic services to avoid delays. CIPO’s correspondence procedures are generally unaffected with the following exceptions:
The following regional offices for the Canadian Intellectual Property Office (CIPO) are not receiving CIPO correspondence until further notice:
- Toronto (151 Yonge Street, 4th floor, Toronto, Ontario)
- Vancouver (Library Square, 300 West Georgia Street, Suite 2000, Vancouver, British Columbia)
- Edmonton (Canada Place, 9700 Jasper Avenue, Suite 725, Edmonton, Alberta)
- Montréal (Sun Life Building, 1155 Metcalfe Street, Room 950, Montréal, Quebec)
Updated: 2020-03-19. Because this is a rapidly evolving situation please consult the Notices section of our website for the latest information.
Question #14
Q: Are the Patent Branch and Patent Appeal Board receiving documents and payments during designated days associated with COVID-19?
A: The intake process is operational and is receiving documents related to Canadian patent applications and patents. The international receiving Office is open for business. We will accept and date-stamp all documents and payments received by CIPO.
Question #15
Q: Will I be able to see documents received by the office?
A: The Canadian Patent Database (CPD) will continue to publish incoming documents for Canadian patent applications and patents that are open to public inspection.
Question #16
Q: Will you tell me if the Canadian filing requirements are met?
A: No. Applicants will not be notified of the deficiencies until the end of the designated days. You will also not receive a filing certificate until the end of the designated days.
Question #17
Q: Will you tell me if the national entry requirements are met?
A: National entry refusal letters will be sent. You will not receive an acknowledgement of national phase entry until the end of the designated days.
Question #18
Q: Are examination interviews continuing?
A: Examination interviews will continue and interview records will be documented within the Canadian Patent Database (CPD).
Question #19
Q: Will you be granting patents?
A: Patent grants will be issued, and mailed.
Question #20
Q: Is CIPO acting as an ISA-IPEA authority at this time?
A: Yes. Documents related to CIPO as an ISA-IPEA authority will be mailed.
Question #21
Q: Will I receive documents not associated with ISA-IPEA, national entry refusal letters and granted patents?
A: Notices, requisitions, and letters other than those for ISA-IPEA, national entry refusal letters and granted patents will not be sent during designated days. They will be issued following the end of the designated days.
Question #22
Q: How long will patent services be impacted?
A: If the circumstances that led to the designation of these days continues, the Commissioner, Registrar and Minister may decide to extend the period of time for which days are designated. If additional days are added, the office will re-evaluate the situation and its response.