Author: Mark Penner

Mark Penner

About Mark Penner

Mark D. Penner’s practice focuses on all aspects of the acquisition, protection, enforcement and strategic use of a wide range of intellectual property assets in Canada and around the world.

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.

Concerned About Patent Deadlines During the COVID-19 Pandemic? The Canadian Intellectual Property Office Offers An FAQ Page

The rapidly evolving coronavirus pandemic continues to have a significant impact on intellectual property rights holders in Canada and around the world.  As noted in our most recent IP bulletin, the Canadian Intellectual Property Office (“CIPO”) recently announced that, due to the COVID-19 pandemic, March 16, 2020 to March 31, 2020 inclusive will be considered “designated days” under the applicable Canadian intellectual property legislation. This means that if a CIPO deadline under the Patent Act, Trademarks Act and/or Industrial Design Act falls on any of these “designated days”, the time period to respond will be extended to the next business day (e.g. April 1st, 2020).

To assist those having or seeking patent rights in Canada, CIPO has now prepared a series of Frequently Asked Questions (“FAQs”) regarding the COVID-19 service interruptions and patent prosecution matters before CIPO. Information on service interruptions with respect to the Trademarks Opposition Board (“TMOB”) can be found here.

CIPO is careful to point out that the answers provided are only a guide and should not be considered legally binding.  CIPO recommends that everyone consult a registered patent agent who can advise on any specific situation.  Anyone concerned about Canadian patent prosecution deadlines should review all of the FAQs provided on the CIPO website and consult a Canadian patent agent as applicable.

To that end, Fasken’s IP group is taking steps to ensure continuity of our services to our clients over this period, largely by working remotely. 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.