Canadian intellectual property statutes and regulations include provisions that offer the possibility of extensions of time and/or reinstatement of applications filed in Canada. It is important to be cognizant of these provisions as they may allow applicants, in some circumstances, to preserve rights that otherwise might have been lost. What follows is an outline of a number of provisions concerning extensions of time and/or reinstatement of applications in Canada.
Patents
Extensions of time. Subject to certain key exceptions, the time fixed by the Canadian Patent Rules or under the Canadian Patent Act for doing anything may be extended. The applicant must apply for the extension of time 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. While no affidavit is required, the Patent Rules require the applicant to explain why the applicant 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 of time is available. For example, the time for responding to a requisition made by an Examiner, in connection with an examination, can not be extended beyond six months.
It is worth noting that there is an interplay between extensions of time and reinstatement of patent applications such that it may be possible to obtain an extension of time to request reinstatement of an application.
Reinstatement. Where an application becomes abandoned under the Patent Act, the applicant may reinstate the application within 12 months of the date 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 will likely 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 is made, the application can no longer be reinstated and becomes permanently abandoned.
Trademarks
Extensions of time. The Canadian Trademarks Act provides for extensions of time under certain circumstances. A request for an extension of time under the Trademarks Act may be made at any time before the deadline specified for the doing 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 of time is generally for a six-month period. If the deadline for the doing of an act has passed, the applicant may retroactively request an extension of time, 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 of time during examination. The new policy limits the applicant to only one extension of time for a period of up to six months following the initial deadline in which to respond to an Examiner's report, unless the applicant can demonstrate that exceptional circumstances exist to justify a further extension of time.
With regard to oppositions, the Opposition Board has published benchmarks for extensions of time for the various steps in an opposition. The Registrar will only consider one request for an extension of time up to each of the maximum benchmarks. For example, the Registrar will generally grant each party one extension of time up to a maximum benchmark of nine months for a cooling off period to encourage settlement of an opposition.
Reinstatement. There are no reinstatement provisions applicable to trademark applications.
Industrial designs
Extensions of time. As with trademarks, a new policy effective March 11, 2010 limits an industrial design application to a single extension of time following an initial deadline. An extension of time is generally for a six-month period. The first extension of time will generally be granted. Exceptional circumstances must be shown to obtain a further extension of time.
Reinstatement. An abandoned industrial design application may be reinstated if the applicant submits a request for reinstatement within six months after 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.
Conclusion
The foregoing is an overview of some provisions concerning extensions of time and reinstatement of Canadian patent, trademark and industrial design applications. These provisions are noteworthy as they may, in some circumstances, be relied upon 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.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.