Canadian IP statutes and regulations include provisions that offer the possibility of extensions of time or reinstatement of applications filed in Canada. It is important to be cognisant of these provisions as, in some circumstances, they may allow applicants to preserve rights that otherwise might have been lost. This update outlines a number of provisions concerning extensions and reinstatement of applications in Canada.
Subject to certain key exceptions, the time fixed by the Patent Rules or under the Patent Act for doing anything may be extended. The applicant must apply for the extension before the expiry of the original time limit and pay an extension fee. Where it is concluded that the circumstances justify the extension, an extension will be granted. Extensions are typically granted for 12 months. Although no affidavit is required, the Patent Rules require the applicant to explain why it is unable to complete the required actions within the time period originally set.
As noted above, there are some key circumstances in which no extension is available. For example, the timeframe for responding to a requisition made by an examiner, in connection with an examination, cannot be extended beyond six months.
There is interplay between extensions and reinstatement of patent applications, such that it may be possible to obtain an extension to request reinstatement of an application.
Where an application becomes abandoned under the Patent Act, the applicant may reinstate the application within 12 months of the date on which the application was abandoned by making a request for reinstatement, taking the action that should have been taken and paying the reinstatement fee.
Where an application is abandoned on more than one basis, the application must be reinstated in respect of each basis. For example, an application may become abandoned on two grounds if an applicant fails to respond to an examiner's requisition within the six-month time limit and also fails to pay a maintenance fee. There are likely to be different abandonment dates for each of the two bases of abandonment. For the application to be reinstated, the applicant must request reinstatement in respect of the examiner's requisition, respond to the examiner's requisition and submit a reinstatement fee within 12 months of the date of abandonment for failing to respond to the examiner's requisition. The applicant must also request reinstatement in respect of the maintenance fee, submit the maintenance fee and submit a second reinstatement fee within 12 months of the date of abandonment for failing to pay the maintenance fee.
If the period for reinstatement has expired before payment of the reinstatement fee or before a request for an extension of the reinstatement period has been made, the application can no longer be reinstated and becomes permanently abandoned.
The Trademarks Act provides for extensions under certain circumstances. A request for an extension under the Trademarks Act may be made at any time before the deadline specified for the performance of any act. The file will be reviewed and, if it is judged that the applicant's request is justified, the extension will be granted. An extension is generally for a six-month period. If the deadline for performance of an act has passed, the applicant may retroactively request an extension, so long as the retroactive request is made and the prescribed fee is paid before the file is stamped 'abandoned'.
A new policy introduced on March 11 2010 affects extensions during examination. The new policy limits the applicant to one extension for a period of up to six months following the initial deadline within which to respond to an examiner's report, unless the applicant can demonstrate that exceptional circumstances exist to justify a further extension.
With regard to oppositions, the Opposition Board has published benchmarks for extensions for the various steps in an opposition. The registrar will consider only one request for an extension up to each of the maximum benchmarks. For example, the registrar will generally grant each party one extension up to a maximum benchmark of nine months for a cooling-off period to encourage settlement of an opposition.
There are no reinstatement provisions applicable to trademark applications.
As with trademarks, a new policy effective March 11 2010 limits an industrial design application to a single extension following an initial deadline. An extension is generally for a six-month period. The first extension will generally be granted. Exceptional circumstances must be shown to obtain a further extension.
An abandoned industrial design application may be reinstated if the applicant submits a request for reinstatement within six months of the date of abandonment. The request must include a response to the outstanding report and the prescribed fee for reinstatement. If these requirements are not met, the application will become 'inactive' and can no longer be revived.
The foregoing is an overview of some provisions concerning extensions and reinstatement of Canadian patent, trademark and industrial design applications. These provisions are noteworthy as, in some circumstances, they may be relied on to preserve applicant rights that otherwise might be lost. However, the options available may vary in any given case and it is important to consider the options in advance of the initial due date.
For further information on this topic please contact Christine N Genge at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486), fax (+1 613 232 8440) or email ([email protected]).