J. Bradley White, Donna White, Nicole Dinaut, Clark Holden, Maryann O’Hara
May 11, 2020
Last updated: May 25, 2020
For further information on the changes below or other intellectual property matters, please contact one of the authors above or any member of our Intellectual Property Group.
In the wake of the COVID-19 pandemic, the Canadian Intellectual Property Office (CIPO) has advised that any deadlines fixed under the Patent Act, Trademarks Act and Industrial Design Act in the period of time beginning on March 16, 2020, and ending on May 15, 2020, inclusive, are effectively extended until May 19, 2020 (taking into account a statutory holiday on May 18, 2020, on which CIPO is closed). This is the combined effect of CIPO’s original announcement that dealt with such deadlines that fell during the period of March 16 to 31, 2020, CIPO’s March 27, 2020 announcement that likewise dealt with the period of April 1 to 30, 2020, and CIPO’s April 27, 2020 announcement that likewise dealt with the period of May 1 to 15, 2020.
CIPO has recently confirmed that the effect of designating “the days falling between March 16 and May 29, … pursuant to section 66 of the Trademarks Act” is that any deadlines set in the Trademarks Act, Trademarks Regulations or imposed by the Registrar in a proceeding before the Trademarks Opposition Board that fall within the same period now fall on June 1, 2020. Additionally, for deadlines falling after June 1, extensions of time will be possible and CIPO has stated that the Registrar will take into account the disruption caused by COVID-19 when considering extension of time requests under section 47. Specifically, CIPO noted that, if a request is made within two months following the end of the period of designated days, a three-month extension of time will usually be appropriate. The Registrar may extend deadlines under subsection 47(1) on her own initiative and in her own discretion if it is in the interests of justice to do so.
In addition, the Trademarks Opposition Board announced on May 22, 2020 that on or around June 1, 2010 it will commence dispatching decisions prepared and held since the beginning of the designated days. Due to COVID-19 pandemic issues, the Board had not dispatched any decisions since the designated days began on March 16, 2020. The two-month period during which to appeal to the Federal Court will apply to these decisions.
Further extensions of deadlines may be provided by CIPO if the disruption caused by the COVID-19 pandemic continues.
In the meantime, CIPO has advised that it remains open for business; however, delays in all CIPO services should be expected. CIPO has recommended the use of its online services, which are available 24/7, for all transactions and notes, as designated regional offices, to which correspondence can usually be delivered, may make their own decisions about remaining operational or open to the public. As of May 7, 2020, the regional offices for CIPO based in Toronto, Vancouver, Edmonton and Montréal are not receiving CIPO correspondence until further notice.
Our Osler IP team remains fully operational and committed to providing our clients with continued exceptional service during this difficult time, including in relation to intellectual property litigation and obtaining, maintaining and protecting IP rights. Please feel free to reach out to any member of our IP team with any questions or for more information.