COVID-19 triggers Canadian intellectual property deadline extensions until August 31, 2020

The Canadian Intellectual Property Office (CIPO) has published an updated notice that time limits under the Canadian Patent Act, Trademarks Act and Industrial Design Act beginning on March 16, 2020 and ending on August 28, 2020 are automatically extended until August 31, 2020, due to the disruption caused by the COVID-19 outbreak¹. CIPO has indicated that this will be the final COVID-related extension.

What you need to know

• CIPO extensions of time arising from COVID-19 disruptions are ending August 31, 2020.
• Despite the fact that certain deadlines have been extended, CIPO remains open for business at this time. We recommend meeting all original deadlines where possible.
• These extensions only apply to periods of time fixed under the Patent Act, Trademarks Act and Industrial Design Act, including, for example, deadlines to respond to Office Actions and deadlines in proceedings before the Trademarks Opposition Board.
• These extensions do not apply to periods of time fixed under international treaties, including the Patent Cooperation Treaty, the Madrid System for the International Registration of Marks and the Hague System for the International Registration of Industrial Designs.
• Since certain deadlines may not be extended or may only be extended up to certain maximums, we recommend that critical deadlines, such as application filing dates and due dates associated with international applications, continue to be met without use of these extensions.
• CIPO has warned that there will be significant delays in all CIPO services during this period.

Authority to designate any day

The Commissioner of Patents (Commissioner), the Registrar of Trademarks (Registrar) and the Minister have the authority to “designate any day” under the Patent Act,² Trademarks Act³ and Industrial Design Act⁴ respectively, in the event of unforeseen circumstances and where it is in the public interest to do so. If a time period fixed under the Patent Act,⁵ Trademarks Act⁶ and Industrial Design Act⁷ ends on a designated day, the time period is extended to the next day that is not a designated day.

Previously, the Commissioner, Registrar and Minister decided to designate all days starting on March 16, 2020 and ending on August 21, 2020, in view of the disruption caused by the COVID-19 outbreak. On August 19, 2020, CIPO announced that all days starting on August 24, 2020 and ending on August 28, 2020 will also be designated days. Practically, this means that deadlines fixed under the Patent Act, Trademarks Act and Industrial Design Act that fall between March 16, 2020 and August 28, 2020 are extended to August 31, 2020.

_________________________

¹ In the United States, the USPTO has also issued a notice of relief (but which does not grant waivers or extensions of dates or requirements). See https://www.uspto.gov/about-us/news-updates/relief-uspto-customers-affected-covid-19.

² R.S.C., 1985, c. P-4, s. 78(2).

³ R.S.C., 1985, c. T-13, s. 66(2).

⁴ R.S.C., 1985, c. I-9, s. 21(2).

⁵ Supra note 1, s. 78(1).

⁶ Supra note 2, s. 66(1).

⁷ Supra note 3, s. 21(1).

Read all our coronavirus-related updates on our COVID-19 guidance for organizations resource page.

To discuss these issues, please contact the author(s).

This publication is a general discussion of certain legal and related developments and should not be relied upon as legal advice. If you require legal advice, we would be pleased to discuss the issues in this publication with you, in the context of your particular circumstances.

For permission to republish this or any other publication, contact Janelle Weed.

© 2024 by Torys LLP.

All rights reserved.