Provisions for CIPO Intellectual Property Applicants Affected by Major Disruptions: Informative Guidance
Introduction
In times of major disruptions, such as conflicts between nations, it is crucial for intellectual property (IP) applicants to be aware of the legal provisions that may assist them in safeguarding their rights.
The Canadian Intellectual Property Office (CIPO) offers several avenues for relief to those affected by such events.
CIPO published an update notice on March 8, 2023 as a reflection on much international carnage since 2020.
Recent international events suggest revisiting CIPO’s guidance is worthwhile, in respect of patents, trademarks, and industrial designs.
This article will provide an in-depth exploration of the legal provisions available for patents, trademarks, and industrial designs pending in CIPO.
—
Patents and Applications Pending in CIPO
*i) Restoration of a Priority Right*
Under subsection 28.4(6) of the Patent Act, CIPO applicants facing significant disruptions may apply for the restoration of their priority rights.
This provision allows CIPO applicants to reinstate their priority claims in cases where the failure to meet the initial priority deadline was unintentional.
Section 28.4(6) of the Patent Act states:
28.4(6) Subject to the regulations, for the purposes of paragraph 28.1(1)(b) and subparagraphs 28.2(1)(d)(iii) and 28.4(5)(a)(i) and (ii), the filing date of the pending application or the co-pending application, as the case may be, shall be deemed to be within 12 months after the filing date of the previously regularly filed application if
(a) the filing date of the pending application or the co-pending application, as the case may be, is more than 12 months after the filing date of the previously regularly filed application but within two months after the end of those 12 months; and
(b) the applicant, within the prescribed time,
(i) makes a request to the Commissioner for this subsection to apply,
(ii) states, in the request, that the failure to file the pending application or the co-pending application, as the case may be, within 12 months after the filing date of the previously regularly filed application was unintentional, and
(iii) complies with any prescribed requirements.
Additionally, sections 77 and 78 of the Patent Rules further outline the requirements and procedure for priority restoration.
Section 77 of the Patent Rules states:
77(1) For the purposes of paragraph 28.4(6)(b) of the Act,
(a) in respect of a pending application, or a co-pending application, that is not a PCT national phase application, the applicant must meet the conditions set out in subparagraphs 28.4(6)(b)(i) to (iii) of the Act not later than two months after the filing date of the pending application or the co-pending application, as the case may be; and
(b) in respect of a pending application, or a co-pending application, that is a PCT national phase application,
(i) the applicant must meet the conditions referred to in subparagraphs 28.4(6)(b)(i) and (ii) of the Act not later than one month after the national phase entry date of that application, and
(ii) the applicant must meet the condition referred to in subparagraph 28.4(6)(b)(iii) of the Act before the earlier of
(A) the end of the time prescribed by subsection 73(1), and
(B) the end of one month after the national phase entry date of that application.
(2) For the purposes of subparagraph 28.4(6)(b)(iii) of the Act, the prescribed requirements are that the applicant
(a) must make a request for priority in the petition or in a document other than the abstract, the specification or the drawings; and
(b) must submit to the Commissioner the filing date and the name of the country or office of filing of the previously regularly filed application for a patent.
(3) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).
Section 78 of the Patent Rules states:
78 Paragraph 28.4(6)(b) of the Act does not apply in respect of a divisional application, in relation to a previously regularly filed application, if the filing date of the original application is deemed under subsection 28.4(6) of the Act to be within 12 months after the filing date of that previously regularly filed application for a patent.
It is essential to note that restoration requests are subject to high thresholds, and applicants must present compelling evidence to justify this remedy.
*ii) Extensions of Time*
In situations where unforeseen circumstances have impeded progress, extensions of time may be granted to CIPO applicants.
Sections 3, 4, and 131 of the Patent Rules, along with Manual of Patent Office Practice section 2.03.03, provide the framework for requesting extensions.
Section 3 of the Patent Rules states:
3(1) Subject to these Rules, the Commissioner is authorized to extend any period of time fixed by these Rules for doing anything — whether that period has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the end of that period, the extension is applied for and, except in the case of the period of time fixed by subsection 86(9), the fee set out in item 1 of Schedule 2 is paid.
(2) For greater certainty, for the purpose of subsection (1), a period of time fixed by the Act that is dependent on a date that is prescribed by these Rules is not considered to be a period of time fixed by these Rules.
(3) The Commissioner is authorized to extend the period of time for the payment of a fee referred to in subsection 44(1), 68(1) or (2), 80(1), 85.1(5), 86(1), (1.1), (6), (10) or (12) or 112(1), paragraph 112(5)(a) or (c) or 154(1)(c), subsection 154(2) or subparagraph 154(3)(a)(iii) or (b)(i) or (ii) after the expiry of that period if the Commissioner considers that the circumstances justify the extension and if
(a) the amount of the small entity fee was paid before the end of that period;
(b) it is later determined that the standard fee should have been paid;
(c) the applicant or patentee files a statement that, to the best of their knowledge, the small entity fee was paid in good faith and the application for the extension is being filed without undue delay after the applicant or patentee became aware that the standard fee should have been paid;
(d) the applicant or patentee pays the difference between the amount of the small entity fee that was paid and the standard fee that was applicable on the day on which the small entity fee was paid; and
(e) the applicant or patentee pays the fee set out in item 1 of Schedule 2.
(4) The Commissioner is authorized to extend any period of time for the payment of a fee set out in Schedule 2 or 3 after the expiry of that period if the Commissioner considers that the circumstances justify the extension and if
(a) the Commissioner provided erroneous information in writing concerning the amount of the fee;
(b) the applicant or patentee paid an insufficient amount as a result of that erroneous information;
(c) the applicant or patentee identifies the source of the erroneous information that was relied on and files a statement that the application for the extension is being filed without undue delay after the applicant or patentee became aware that the amount paid was insufficient; and
(d) the applicant or patentee pays the difference between the amount that was paid and the amount of the fee that was payable on the day on which the insufficient payment was made.
Section 4 of the Patent Rules states:
4 The Commissioner is authorized to extend the period of time fixed by subsection 18(2) of the Act — whether that period has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the end of that period, the extension is applied for and the fee set out in item 1 of Schedule 2 is paid.
Section 131 of the Patent Rules states:
131(1) For the purposes of paragraph 73(1)(a) of the Act, the prescribed time is four months after the date of the notice of the requisition made by the examiner.
(2) Subsection 3(1) does not authorize the Commissioner to extend the time prescribed by subsection (1) beyond six months after the date of the notice.
(3) However, in the case of a notice under subsection 86(2) or (5) that was received by the applicant more than one month after the day on which it was sent, the Commissioner may extend the time prescribed by subsection (1) to up to six months after the day on which the notice was received if the applicant
(a) applies for the extension within 14 days after the day on which the notice was received; and
(b) in that application, provides evidence satisfactory to the Commissioner of the date of receipt of the notice.
The Manual of Patent Office Practice (MOPOP) provides detailed information on the circumstances and applicability of the above.
These extensions serve as a lifeline for applicants struggling to meet deadlines due to major disruptions.
*iii) Reinstatement*
Section 73(3) of the Patent Act, in conjunction with section 133 of the Patent Rules and Manual of Patent Office Practice section 9.03, offers a path for reinstatement of abandoned applications.
This provision allows applicants to revive applications that were unintentionally abandoned, providing them with a second chance to pursue their IP rights.
Section 73(3) of the Patent Act states:
73(1) An application for a patent in Canada shall be deemed to be abandoned if
(a) the applicant does not reply in good faith, within the prescribed time, to any requisition made by an examiner in connection with an examination;
(b) the applicant does not comply with a notice given under subsection 27(6);
(c) the prescribed fee and late fee referred to in a notice sent under paragraph 27.1(2)(b) are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice;
(d) the request referred to in a notice sent under paragraph 35(3)(b) is not made and the prescribed fee and late fee referred to in that notice are not paid before the end of two months after the date of the notice; or
(e) the request referred to in a notice sent under subsection 35(5) is not made and the prescribed fee referred to in that notice is not paid within the prescribed time.
(f) [Repealed, 2015, c. 36, s. 62]
(2) An application shall also be deemed to be abandoned in any other circumstances that are prescribed.
(3) Subject to the regulations, an application that is deemed to be abandoned is reinstated if
(a) the applicant, within the prescribed time,
(i) makes a request for reinstatement to the Commissioner,
(ii) states, in the request, the reasons for the failure to take the action that should have been taken in order to avoid the abandonment,
(iii) takes the action that should have been taken in order to avoid the abandonment, and
(iv) pays the prescribed fee; and
(b) the Commissioner determines that the failure occurred in spite of the due care required by the circumstances having been taken and informs the applicant of this determination.
(3.1) The Federal Court may, by order, declare an application that is reinstated under subsection (3) to never have been reinstated if the Federal Court determines either
(a) that the statement of the reasons referred to in subparagraph (3)(a)(ii) contains a material allegation that is untrue, or
(b) that, if paragraph (3)(b) applies, the failure referred to in subparagraph (3)(a)(ii) did not occur in spite of the due care required by the circumstances having been taken.
(5) An application that is reinstated retains its filing date.
Section 133 of the Patent Rules states:
133(1) For the purposes of paragraph 73(3)(a) of the Act, in respect of a failure to take an action, the prescribed time is 12 months after the day on which the application for a patent is deemed, as a result of that failure, to be abandoned.
(2) A request for reinstatement may be made in respect of more than one failure to take an action, if the request is made before the end of the applicable prescribed time that is the first to end.
(3) If an application for a patent is deemed to be abandoned for failure to pay a fee referred to in subsection 68(1) or (2), 80(1), 85.1(5) or 87(1), the action that should have been taken in order to avoid that abandonment and that the applicant must take before the end of the time prescribed by subsection (1) in order to reinstate the application is
(a) the payment of the applicable standard fee; or
(b) if the small entity status condition set out in subsection 44(2) is met, the filing of a small entity declaration in respect of the application in accordance with subsection 44(3) and the payment of the applicable small entity fee.
(4) Subsection 3(1) does not apply to the time prescribed by subsection (1).
The Manual of Patent Office Practice (MOPOP) provides at section 9.03 detailed information on the circumstances and applicability of the above.
*iv) The PCT International Phase*
For applicants involved in the PCT international phase, PCT Rule 82quater, coupled with Manual of Patent Office Practice section 33.08, outlines procedures for accommodating applicants affected by major disruptions.
PCT Rule 82quater states:
82quater.1 Excuse of Delay in Meeting Time Limits
(a) Any interested party may offer evidence that a time limit fixed in the Regulations for performing an action before the receiving Office, the International Searching Authority, the Authority specified for supplementary search, the International Preliminary Examining Authority or the International Bureau was not met due to war, revolution, civil disorder, strike, natural calamity, epidemic, a general unavailability of electronic communications services or other like reason in the locality where the interested party resides, has his place of business or is staying, and that the relevant action was taken as soon as reasonably possible.
(b) Any such evidence shall be addressed to the Office, Authority or the International Bureau, as the case may be, not later than six months after the expiration of the time limit applicable in the given case. If such circumstances are proven to the satisfaction of the addressee, delay in meeting the time limit shall be excused.
(c) The excuse of a delay need not be taken into account by any designated or elected Office before which the applicant, at the time the decision to excuse the delay is taken, has already performed the acts referred to in Article 22 or Article 39.
(d) The need for evidence may be waived by the Office, Authority or the International Bureau under the conditions set and published by that Office, Authority or the International Bureau, as the case may be. In such case, the interested party must submit a statement that the failure to meet the time limit was due to the reason for which the Office, Authority or the International Bureau waived the requirement concerning the submission of evidence. The Office or Authority shall notify the International Bureau accordingly.
82quater.2 Unavailability of Electronic Means of Communication at the Office
(a) Any national Office or intergovernmental organization may provide that, where a time limit fixed in the Regulations for performing an action before that Office or organization is not met due to the unavailability of any of the permitted electronic means of communication at that Office or organization, delay in meeting that time limit shall be excused, provided that the respective action was performed on the next working day on which the said electronic means of communication were available. The Office or organization concerned shall publish information on any such unavailability including the period of the unavailability, and notify the International Bureau accordingly.
(b) The excuse of a delay in meeting a time limit under paragraph (a) need not be taken into account by any designated or elected Office before which the applicant, at the time the information referred to in paragraph (a) is published, has already performed the acts referred to in Article 22 or Article 39.
82quater.3 Extension of Time Limits due to General Disruption
(a) Any receiving Office, International Searching Authority, Authority specified for supplementary search, International Preliminary Examining Authority or the International Bureau may establish a period of extension such that time limits fixed in the Regulations within which a party has to perform an action before that Office, Authority or International Bureau may be extended when the State in which it is located is experiencing a general disruption caused by an event listed in Rule 82quater.1(a) which affects the operations at the said Office, Authority or International Bureau thereby interfering with the ability of parties to perform actions before that Office, Authority or International Bureau within the time limits fixed in the Regulations. The Office, Authority or the International Bureau shall publish the commencement and the end date of any such period of extension. The period of extension shall not be longer than two months from the date of commencement. The Office or Authority shall notify the International Bureau accordingly.
(b) After establishing a period of extension under paragraph (a), the Office, Authority or the International Bureau concerned may establish additional periods of extension, if necessary under the circumstances. In that case, paragraph (a) applies mutatis mutandis.
(c) The extension of a time limit under paragraph (a) or (b) need not be taken into account by any designated or elected Office if, at the time the information referred to in paragraph (a) or (b) is published, national processing before that Office has started.
These provisions ensure that applicants can navigate the international phase effectively, even in the face of unexpected challenges.
—
Trademarks and Applications Pending in CIPO
*i) Priority Period*
Section 34 of the Trademarks Act grants applicants a priority period to file applications based on earlier foreign applications. This provision remains essential for those facing disruptions, allowing them to preserve their rights even in tumultuous times.
Section 34 of the Trademarks Act states:
34(1) Despite subsection 33(1), when an applicant files an application for the registration of a trademark in Canada after the applicant or the applicant’s predecessor in title has applied, in or for any country of the Union other than Canada, for the registration of the same or substantially the same trademark in association with the same kind of goods or services, the filing date of the application in or for the other country is deemed to be the filing date of the application in Canada and the applicant is entitled to priority in Canada accordingly despite any intervening use in Canada or making known in Canada or any intervening application or registration, if
(a) the filing date of the application in Canada is within a period of six months after the date on which the earliest application was filed in or for any country of the Union for the registration of the same or substantially the same trademark in association with the same kind of goods or services;
(b) the applicant files a request for priority in the prescribed time and manner and informs the Registrar of the filing date and country or office of filing of the application on which the request is based;
(c) the applicant, at the filing date of the application in Canada, is a citizen or national of or domiciled in a country of the Union or has a real and effective industrial or commercial establishment in a country of the Union; and
(d) the applicant furnishes, in accordance with any request under subsections (2) and (3), evidence necessary to fully establish the applicant’s right to priority.
(2) The Registrar may request the evidence before the day on which the trademark is registered under section 40.
(3) The Registrar may specify in the request the manner in which the evidence must be furnished and the period within which it must be furnished.
(4) An applicant may, in the prescribed time and manner, withdraw a request for priority.
(5) An applicant is not permitted to apply under section 47 for an extension of the six-month period referred to in paragraph (1)(a) until that period has ended, and the Registrar is not permitted to extend the period by more than seven days.
*ii) Extensions of Time*
Subsection 47(1) of the Trademarks Act, in conjunction with various Practice Notices issued by CIPO, allows for extensions of time in examination and response procedures. These extensions offer relief to applicants struggling to meet deadlines due to unforeseen events.
Section 47 of the Trademarks Act states:
47(1) If, in any case, the Registrar is satisfied that the circumstances justify an extension of the time fixed by this Act or prescribed by the regulations for the doing of any act, he may, except as in this Act otherwise provided, extend the time after such notice to other persons and on such terms as he may direct.
It is important of course to remember to apply any provision of the Trademarks Act consistently with the Practice Notices issued by CIPO.
For example, there is a relevant practice notice regarding extensions of time in examination, extensions of time due to force majeure for priority and renewal, practice in trademark opposition proceedings, and practice in s. 45 proceedings.
*iii) Retroactive Extensions*
Section 47(2) of the Trademarks Act provides for retroactive extensions of time due to force majeure events.
This provision acknowledges that extraordinary circumstances may necessitate retroactive adjustments, ensuring fairness for affected applicants.
Section 47(2) of the Trademarks Act states:
(2) An extension applied for after the expiration of the time fixed for the doing of an act or the time extended by the Registrar under subsection (1) shall not be granted unless the prescribed fee is paid and the Registrar is satisfied that the failure to do the act or apply for the extension within that time or the extended time was not reasonably avoidable.
—
Industrial Designs and Applications Pending in CIPO
*i) Priority Period*
Section 8.1 of the Industrial Design Act, along with section 26(2) of the Industrial Design Regulations, affords applicants a priority period to file based on earlier foreign applications.
Section 8.1 of the Industrial Design Act states:
8.1(1) For the purposes of section 8, an applicant for the registration of a design may submit to the Minister a request for priority in respect of the pending application on the basis of one or more previously regularly filed applications.
(2) The request for priority shall be made in accordance with the regulations, and the applicant shall submit to the Minister the filing date, the name of the country or office of filing and the number of each previously regularly filed application on which that request is based.
(3) A request for priority is deemed never to have been filed if the request is not made in accordance with the regulations or if the applicant does not submit the information, other than the number of each previously regularly filed application, that is required under subsection (2).
(4) An applicant may, in accordance with the regulations, withdraw a request for priority, either entirely or with respect to one or more previously regularly filed applications.
(5) If more than one application has been previously regularly filed either in or for the same country or in or for different countries,
(a) paragraph 8(1)(b) shall be applied using the earliest filing date of the previously regularly filed applications; and
(b) subsection 8(2) shall be applied using the earliest filing date of the previously regularly filed applications on which the request for priority is based.
(6) For the purposes of section 8, a previously regularly filed application shall be deemed never to have been filed if
(a) on the filing date of the pending application, more than six months have elapsed since the filing date of the previously regularly filed application;
(b) before the filing date of the pending application, another application for the registration of a design, disclosing the design in the pending application applied to the same finished article,
(i) is filed by the person who filed the previously regularly filed application or by that person’s successor in title or predecessor in title, and
(ii) is filed in or for the country where the previously regularly filed application was filed; and
(c) on the filing date of the other application referred to in paragraph (b) or, if there is more than one such other application, on the earliest of their filing dates, the previously regularly filed application
(i) has been withdrawn, abandoned or refused without having been made available to the public and without leaving any rights outstanding, and
(ii) has not served as a basis for a request for priority in any country, including Canada.
Section 26(2) of the Industrial Design Regulations states:
26 (2) For the purpose of subsection 8.1(2) of the Act, a request for priority must
(a) be made in the application or in a separate document;
(b) indicate the filing date and the name of the country or office of filing of each previously regularly filed application on which that request is based; and
(c) be made no later than the earlier of the day that is six months after the earliest filing date of those previously regularly filed applications and the date of registration of the design that is the subject of the pending application.
These provisions serve as a crucial tool for applicants seeking to protect their designs amidst major disruptions.
*ii) Reinstatement of Applications*
Section 22(7) of the Industrial Design Regulations offers a route for the reinstatement of applications that were unintentionally abandoned.
Section 22(7) of the Industrial Design Regulations states:
22(7) An application that is deemed to be abandoned is reinstated if the applicant, within six months after the day on which the application is deemed to be abandoned,
(a) submits a request for reinstatement to the Minister;
(b) replies in good faith to the report; and
(c) pays the fee set out in item 9 of the schedule.
This provision gives applicants the opportunity to revive their applications, even after facing significant setbacks.
*iii) Extensions of Time*
Subsection 22(4) and subsection 27(4) of the Industrial Design Regulations provide for extensions of time, recognizing that unforeseen events may hinder progress.
Section 22(4) (with subsections 2-3 added for context) of the Industrial Design Regulations states:
22(2) Subject to subsection (3), if the Minister has reasonable grounds to believe that the design is not registrable, the Minister must send to the applicant a report setting out the objections to registration and inviting the applicant to reply to the objections no later than three months after the date of the report.
(3) In respect of a Hague application, the first report under subsection (2) must be sent by the Minister to the International Bureau in the form of a notification of refusal referred to in Article 12(2) of the Hague Agreement and the Minister is not required to send a copy of the report directly to the applicant.
(4) The time period to reply referred to in subsection (2) is extended by six months if, before it ends, the applicant submits a request to the Minister.
These extensions are vital for applicants striving to meet deadlines despite disruptions.
—
Conclusion
While the legal provisions outlined above offer avenues of relief, it is crucial to note that they have relatively high thresholds.
Applicants must present comprehensive and extraordinary facts to justify these remedies.
Force majeure-type events, such as acts of war or massive fires, are typically considered under some of these provisions.
Examples of historical wars, like World War I and II, serve as illustrations of events that might qualify for force majeure consideration.
Applicants and owners of intellectual property pending before CIPO are encouraged to be proactive in understanding their options.
By leveraging these legal provisions, they can navigate through major disruptions and safeguard their valuable intellectual property rights.
Readers of this article should be aware that over time the above links will naturally expire and become non-functional.
Printouts and PDF records are recommended for anyone looking to historically preserve information presented in the above links.
None of the information in any of our articles constitutes legal advice, nor does it constitute advice as registered patent and trademark agents.
Pnc IP Group bears no responsibility for the accuracy of third party links.
All legislation, regulations, practice notices and practice manuals quoted or referenced in any article are quoted or referenced as they exist at that time.
Pnc IP Group bears no responsibility for updates and changes to legislation, regulations, practice notices, and practice manuals.
All readers accept these articles as being written accurately for the time they were published, and understand that the accuracy and correctness of any article is affected by time, statutory and regulatory amendments, case law, and practice considerations.
All readers are forewarned to obtain independent legal advice and independent advice from registered patent and trademark agents.
Images for this article, including the feature image for this article were generously provided by licence through, created by, or hosted by Freepik.com.
Visit our Services page to learn more about Pnc IP Group’s Patent services. If you have questions regarding the above, feel free to contact us.
Any patents, trademarks, or technologies referenced in this article are owned by their respective owners.
Questions regarding this article can be directed to Tapas Pain.
Pnc IP Group are licensed lawyers and registered patent and trademark agents with a history of serving the greater York Region, greater Toronto area since 2003.
Pnc IP Group is located in Vaughan, Ontario, and offers in-person visits by appointment.
Call us and book your appointment today, or speak with us by telephone anytime.
Your calls are always welcome, and never hesitate to ask us your questions.
These articles and opinions do not express or constitute legal advice.
You can also often find us on search engines like Google using any of the following search terms:
intellectual property lawyer Toronto, intellectual property law firm Toronto
patent filing services, patent application services, patent services Canada, patent lawyer Canada, patent lawyer Toronto, patent agent Canada
trademark application Canada, trademark lawyer Toronto, trademark lawyer Canada
You can also often find us on other search engines using any of the following search terms:
intellectual property lawyer Toronto, intellectual property law firm Toronto
patent filing services, patent application services, patent services Canada, patent lawyer Canada, patent lawyer Toronto, patent agent Canada
trademark application Canada, trademark lawyer Toronto, trademark lawyer Canada
