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COVID-19 and intellectual property

Author(s): J. Bradley White, Lillian Wallace, Nicole Dinaut, Clark Holden, Maryann O’Hara

Mar 27, 2020

Updated March 31, 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 or Intellectual Property Litigation Groups.

Canadian Intellectual Property Office (CIPO) deadline extension

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 April 30, 2020, inclusive, are effectively extended until May 1, 2020. This is the combined effect of CIPO’s original announcement which dealt with such deadlines that fell during the period March 16 to 31, 2020, and CIPO’s March 27, 2020 announcement that likewise dealt with the period April 1 to 30, 2020.

In a March 30, 2020, announcement CIPO confirmed that the effect of designating “the days falling between March 16 and March 31 … pursuant to section 66 of the Trademarks Act” is that any deadlines set in the Trademarks Act, Trademarks Regulations or by the Registrar in a proceeding before the Trademarks Opposition Board that fall within the same period are similarly extended to May 1, 2020, and that for deadlines falling after May 1, extensions of time will be possible. Specifically, CIPO has stated that the Registrar will consider the COVID-19 disruptions a sufficient circumstance to obtain an extension of time upon request.

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 they remain open for business; however, significant delays in all CIPO services should be expected.  CIPO has recommended the use of their online services,  which are available 24/7, for all transactions  and notes that 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 March 26, 2020, the regional offices for CIPO based in Toronto, Vancouver, Edmonton and Montréal are not receiving CIPO correspondence until further notice. 

Intellectual property litigation in the Federal Courts

This information has been updated. Click here for the article on the update.

The Federal Court and the Federal Court of Appeal have adjusted their operations in response to COVID-19, providing a temporary suspension of certain deadlines and hearings between March 16 and April 17, 2020.

The Federal Court

In the Federal Court, all deadlines under Orders and Directions of the Court made prior to March 18, 2020, as well as under the Federal Courts Rules, subsection 18.1(2) of the Federal Courts Act and paragraph 72(2)(c) of the Immigration and Refugee Protection Act are suspended from March 16 to April 17, 2020. Time will not run during this suspension period, such that after the suspension period matters will continue from where they stood before March 16, 2020. 

All other statutory deadlines continue to apply and are not subject to the suspension period. For example, deadlines under the Patented Medicines (Notice of Compliance) Regulations continue to apply. 

All hearings, including via teleconference, that were scheduled to be heard up to April 17, 2020, are adjourned and will be rescheduled later, unless the hearing is considered to be urgent or exceptional as determined by the Court on a case-by-case basis.  In the interim, the Federal Court is encouraging parties where possible to have matters decided on the basis of written representations to ensure they are determined expeditiously and to avoid the rescheduling of hearings once operations are back to normal.  For hearings that are adjourned, the Court will work with parties to reschedule them between May 1 to May 15, 2020.

The Federal Court is maintaining a skeleton staff for urgent and exceptional matters.  Documents may continue to be filed, but the Federal Court is encouraging parties to use the Court’s e-filing portal or email, subject to certain conditions. 

More information is available on the Federal Court’s website: https://www.fct-cf.gc.ca/en/home

The Federal Court of Appeal

Similarly, all hearing before the Federal Court of Appeal up to April 17, 2020, have been adjourned, with the exception of urgent matters that will be heard via teleconference. 

The Federal Court of Appeal has similarly adopted a suspension period for the computation of time under the Federal Courts Rules or under any Direction or Order such that time will not run from March 16 to April 17, 2020.  All other statutory deadlines continue to apply, including in respect of the commencement of appeals and applications.  However, for the commencement of appeals and applications under sections 27 and 28 of the Federal Courts Act, the Federal Court of Appeal has advised that if circumstances prevent timely filing, parties may seek an extension of the deadlines after they expire.

The Federal Court of Appeal will maintain Registry operations but with a reduced staff, and is  encouraging parties to file by email, subject to certain conditions. 

More information is available on the Federal Court of Appeal’s website: https://www.fca-caf.gc.ca/fca-caf_eng.html

Further information

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.

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