COVID-19 – Canadian Patent Office Update

Deadline extensions under subsections 78(1) and 78(2) of the Patent Act

The Canadian Intellectual Property Office (CIPO) announced earlier this month that deadlines falling between March 16, 2020 and March 31, 2020 are extended until April 1, 2020 under subsections 78(1) and 78(2) of the Patent Act.[1]  We have now received word from CIPO that deadlines falling between April 1, 2020 and ending April 30, 2020 will be subject to a further extension under subsections 78(1) and 78(2) of the Patent Act.  More details can be found at the link: CIPO 2020-03-27 Update.

However, applicants should be aware that the CIPO remains open for business at this time and therefore we advise clients that they should endeavour to meet all deadlines to the extent possible.  Similarly, the International Receiving Office of CIPO is still open for business and so PCT international applications should be timely filed as well.

Moreover, applicants should be aware that certain deadlines cannot be extended.  The deadlines for filing appeals under the Patent Act to the Federal Court are non-extendible.[2]  For example, the deadline for filing an appeal to a Commissioner’s Decision to refuse to grant a patent under section 41 of the Patent Act is not extendible under subsection 78(1) of the Patent Act.  Further, the requirement set out in subsections 36(2) and 36(2.1) that a divisional patent application be filed before issuance of the original application is not subject to this extension.  Additional examples can be found at the following link: Frequently asked questions – COVID-19 service interruptions – patents.

Due care for reinstatement will be determined on a case-by-case basis

As part of the October 30, 2019 amendments to the Patent Rules, Canada implemented a new due care standard that needs to be shown to reinstate patent applications that have become abandoned for failure to request examination or pay a maintenance fee before the applicable deadlines.  The due care standard also needs to be shown when reinstating a patent that is deemed expired for failure to pay a maintenance fee.  To reinstate an abandoned patent application or expired patent, an applicant must show that failure to adhere to the applicable deadline occurred despite due care being taken.  The deemed abandonment date varies depending on the deadline missed, but in many instances, abandonment or expiry[3] will occur at 6 months from a missed examination request or maintenance fee payment deadline.  Since the new Rules only came into effect on October 30, 2019 (and the new Rules are applicable to matters in which failure to meet the deadline occurred on or after this date), the due care standard to reinstate patent rights will start to be invoked by applicants on or after April 30, 2020.

Thus, if the pandemic continues after April 30, 2020, it is possible that patent applicants may need to invoke this new provision to reinstate an abandoned patent application or patent deemed expired for failure to pay a maintenance fee.  Currently, however, CIPO takes the position that

[t]he mere fact that days have been designated under subsection 78(2) of the Act has no direct effect on the determination by the Commissioner [to establish due care]. 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.[4]

The Canadian Manual of Patent Office Practice (MOPOP) sets out the circumstances that will be taken into consideration by the Patent Office when making a determination as to whether a failure to meet a deadline set out above occurred in spite of due care having been taken by the applicant.  Those items that are potentially pertinent to the pandemic include the following:

• Force Majeure: Where an external, unforeseeable and/or unavoidable circumstance beyond the control of the applicant (such as, a hurricane, volcanic eruption, earthquake, or war) made it impossible for an applicant or agent to take the necessary action to avoid abandonment of an application or expiration of a patent.
• Unexpected illness: Where an applicant or agent falls unexpectedly ill or needs urgent treatment that prohibited all communication with other persons.

The above is a non-exhaustive list and more information on the requirements for establishing due care can be found in Chapter 9 of the MOPOP.

Given the uncertainty of the circumstances accepted by the Office, we recommend that applicants generally try to avoid having to invoke the due care standard in the first instance by taking the applicable actions necessary to maintain patent rights in good standing in a timely manner.  Further, even if the Commissioner accepts a submission evidencing due care, Applicants should be aware that this finding could later be reversed by the Federal Court of Canada.

It should be appreciated that the above is intended for information purposes only and should not be taken as professional advice.  We are happy to provide tailored legal advice regarding patent prosecution matters pertaining to missed deadlines upon request. For more information, reach out to Wendy Lamson, Partner & Patent Agent.

[1] Subsections 78(1) and 78(2) of the Patent Act:

78 (1) If a time period fixed under this Act, in respect of any business before the Patent Office, for doing anything ends on a prescribed day or a day that is designated by the Commissioner, that time period is extended to the next day that is not a prescribed day or a designated day.

(2) The Commissioner may, on account of unforeseen circumstances and if the Commissioner 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 Commissioner shall inform the public of that fact on the website of the Canadian Intellectual Property Office.

[2] The CIPO takes the position that these sections and subsections of the Patent Act are “not affected by subsection 78(1) of the Patent Act because they are not ‘any business before the Patent Office’ as required by that provision”.  See http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04762.html

[3] The date of abandonment varies depending on the nature of the deadline and so a patent agent should be consulted for advise on the precise deadlines for a specific matter.

[4] Question #11 at CIPO web-site: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04762.html