THIS time it’s final … The Canadian Intellectual Property Office Extends IP Deadlines Until AUGUST 31st

The Canadian Intellectual Property Office (“CIPO”) has extended its final extension of the deadlines under the Patent ActTrademarks Act and/or Industrial Design Act as a result of the COVID-19 outbreak. As we reported previously, March 16th to August 21st were considered “designated days” under the applicable Canadian intellectual property legislation; the time to respond to certain CIPO actions therefore had been previously extended to August 24th.

On August 19th, CIPO announced that August 24th, 2020 to August 28th, 2020 inclusive will also be considered “designated days”. This means that the time period to respond may now be extended to the next business day, namely August 31st, 2020. Due to the online and fax service interruptions taking place from August 21 to August 23, CIPO decided to extend the final extension to provide additional flexibility to its clients.

While the above noted designations by CIPO apply to most, but possibly not all, due dates that originate with CIPO, it is likely that obligations under international treaties and/or conventions, such as the Paris Convention and the Patent Cooperation Treaty, may still apply and must be complied with accordingly.  As such, any action(s) required to be taken in Canada between now and August 28th should be taken on or before the applicable date or discussed with a Canadian patent agent in order to ensure all rights in Canada and abroad are maintained.

While this is the final extension of designated days, clients may still face challenges related to the pandemic. IP specific extensions of time may be available under the applicable Canadian IP statues and/or regulations. Some deadlines, however, cannot be extended, and others have prescribed limits to any available extensions.

Fasken’s IP group continues to take steps to ensure continuity of our services to our clients over this period, largely by working remotely. As CIPO’s online solutions are available 24/7 and from anywhere, we are available to continue to assist our clients during this period. Please don’t hesitate to reach out, should you need assistance.  In the meantime, we will continue to keep you informed of any developments as they occur.

The Canadian Intellectual Property Office Issues Final Extension Until AUGUST 24th for IP Deadlines

The Canadian Intellectual Property Office (“CIPO”) has announced its final extension of the deadlines under the Patent Act, Trademarks Act and/or Industrial Design Act as a result of the COVID-19 outbreak. As we reported previously, March 16th to August 10th were considered “designated days” under the applicable Canadian intellectual property legislation; the time to respond to certain CIPO actions therefore had been extended to August 10th.

On August 5th, CIPO announced that August 10th, 2020 to August 21st, 2020 inclusive will also be considered “designated days”. This means that the time period to respond may now be extended to the next business day, namely August 24th, 2020. This will, according to CIPO, be the last such extension.

While the above noted designations by CIPO apply to most, but possibly not all, due dates that originate with CIPO, it is likely that obligations under international treaties and/or conventions, such as the Paris Convention and the Patent Cooperation Treaty, may still apply and must be complied with accordingly.  As such, any action(s) required to be taken in Canada between now and August 21st should be taken on or before the applicable date or discussed with a Canadian patent agent in order to ensure all rights in Canada and abroad are maintained.

While this is the final extension of designated days, clients may still face challenges related to the pandemic. IP specific extensions of time may be available under the applicable Canadian IP statues and/or regulations. Some deadlines, however, cannot be extended, and others have prescribed limits to any available extensions.

Fasken’s IP group continues to take steps to ensure continuity of our services to our clients over this period, largely by working remotely. As CIPO’s online solutions are available 24/7 and from anywhere, we are available to continue to assist our clients during this period. Please don’t hesitate to reach out, should you need assistance.  In the meantime, we will continue to keep you informed of any developments as they occur.

UPDATED: The Canadian Intellectual Property Office Has Extended Deadlines Until AUGUST 10th

The Canadian Intellectual Property Office (“CIPO”) continues to provide updates on the continuing disruption to IP office deadlines under the Patent Act, Trademarks Act and/or Industrial Design Act caused by the COVID-19 outbreak. As we reported previously, March 16th to July 17th were considered “designated days” under the applicable Canadian intellectual property legislation; the time to respond to certain CIPO actions therefore had been extended to July 20th.

On July 15th, CIPO announced that July 20th, 2020 to August 7th, 2020 inclusive will also be considered “designated days”. This means that the time period to respond may now be extended to the next business day, namely August 10th, 2020.

While the above noted designations by CIPO apply to most, but possibly not all, due dates that originate with CIPO, it is likely that obligations under international treaties and/or conventions, such as the Paris Convention and the Patent Cooperation Treaty, may still apply and must be complied with accordingly.  As such, any action(s) required to be taken in Canada between now and August 7th should be taken on or before the applicable date or discussed with a Canadian patent agent in order to ensure all rights in Canada and abroad are maintained.

Fasken has also established a Coronavirus (COVID-19) Knowledge Centre. Given the number of cases of COVID-19 in North America, and continued uncertainty around the world, organizations must plan to manage the impact on their operations and workforces, as well as protect their employees, their families and communities. Ensuring the health and safety of our people, clients and business partners is Fasken’s top priority.

Fasken’s IP group continues to take steps to ensure continuity of our services to our clients over this period, largely by working remotely. As CIPO’s online solutions are available 24/7 and from anywhere, we are available to continue to assist our clients during this period. Please don’t hesitate to reach out, should you need assistance.  In the meantime, we will continue to keep you informed of any developments as they occur.

Canada Announces Accelerated Exam for Pandemic Related Inventions Filed by “Small Entities”

On July  7th, 2020, the Canadian Intellectual Property Office (“CIPO”) announced a pilot project allowing applicants who qualify as “small entities” (e.g. universities, or businesses employing 50 or fewer employees) to expedite the examination of their patent applications for COVID-19-related inventions. Details of the program can be found on the CIPO website here. The program is limited, however, to only fifty (50) patent applications.

As businesses work to address the COVID-19 pandemic, this pilot project is designed to help smaller sized entities get products to market as soon as possible. To request accelerated examination under the program, applicants must include a statement that the technology is medical and related to COVID-19 and that an approval for its use has been obtained from or has been submitted to Health Canada.  Applicants must also have requested examination and paid the applicable Canadian government fee for requesting examination. Finally, the application must be open to public inspection or the applicant must have submitted a request for early publication. There is no additional fees to use this process.

For further information on whether you qualify and how to take advantage of this program or any other program at CIPO, please reach out to one of the patent professionals at Fasken.

Fasken’s IP group continues to take steps to ensure continuity of our services to our clients during the pandemic. As CIPO’s online solutions are available 24/7 and from anywhere, we are available to continue to assist our clients during this period. Please don’t hesitate to reach out, should you need assistance with your intellectual property.

Changes to the PMPRB Delayed Due to COVID-19

The Patented Medicine Prices Review Board (PMPRB) has delayed the coming into force of the amended Patent Medicines Regulations to January 1, 2021.

The Regulations Amending the Patented Medicines Regulations (Additional Factors and Information Reporting Requirements) were set to come into force on July 1, 2020 and provide the PMPRB with additional price regulatory factors to assess whether the price of a patented medicine sold in Canada was “excessive”. But on June 1st, 2020, the Canadian government delayed their coming into force, citing an increased demand on the pharmaceutical industry in light of COVID-19.

Then, on June 19th, 2020, the PMPRB released its Draft Guidelines 2020. These changes were the result of extensive stakeholder feedback received during public consultations. While the new Guidelines have the same conceptual structure as those released back in November 2019, there are now some substantial quantitative changes.

In particular, in the new Draft Guidelines 2020, the thresholds for identifying high-priority drugs has changed: The PMPRB will classify new patented drugs as either high or low priority based on their anticipated financial impact. If they have a high treatment cost (now above $90,000 annually per patient) or large anticipated marketed size (now above $50M in sales) then they will be subject to a more comprehensive price review. This comprehensive review will take into consideration new additional price regulatory factors, including a drug’s pharmacoeconomic value, market size and the gross domestic product (GDP) and GDP per capita in Canada.

The Draft Guidelines are available for public comment until July 20, 2020. We have extensive experience in this area and are available for a consultation if you are interested in responding.