Our previous article addressed the amendments to Canada’s patent legislation (read it here). In this article, we discuss the extension of deadlines by the Canadian Intellectual Property Office (CIPO) and the measures taken by the courts.
Most CIPO deadlines (for patents, trade marks, and industrial designs) falling between March 16 and May 15 have been extended until May 19 2020. CIPO will continue to monitor the situation and may grant further extension of time.
The Federal Court of Canada and the Federal Court of Appeal have adjourned most hearings and the running of most timelines from March 16 to May 15. The Federal Court is accepting electronic correspondence and actively managing a number of court proceedings.
Office deadlines extended
In March, CIPO announced that most patent, trade mark, and industrial design deadlines falling due between March 16 and April 30 were extended until May 1. On April 27, the deadline was further extended to May 19 (May 18 being Victoria Day when CIPO is closed to the public). However, CIPO will continue to accept correspondence and accord filing dates to new applications during this period. The Office also encouraged customers to use its online services.
Amendments that enabled the extension
The recent amendments to the Patent Act and Patent Rules were essential to making this deadline extension a practical possibility with respect to patent deadlines.
Prior to November 5 2018, section 78 of the Patent Act permitted the Minister of Industry by order to declare the Patent Office “closed for business” on any particular day, with the requirement to publish the order as soon as possible in a Patent Office publication entitled ‘the Canadian Patent Office Record’. Deadlines were extended to the next day that the Patent Office was closed for business.
This was a cumbersome procedure. Importantly, the Patent Rules provided that communications sent to the Patent Office when it was closed for business were deemed to have been received when the Patent Office was next open for business. The upshot is that it was not clear under what circumstances the minister might order the Patent Office closed for business, let alone if or when that had officially happened until the ministerial order was published. Further, although deadlines were deferred, applicants would not be able to obtain filing dates for new applications even if they were able and wanted to do so.
Section 78 of the Patent Act was amended (effective November 5 2018) to permit the Commissioner of Patents simply to “designate” any day, because of unforeseen circumstances and where the Commissioner is satisfied it is in the public interest to do so, and post a notice on the Patent Office’s website. Deadlines falling on a designated day are moved to the next day that is not a designated day (or that is not a Saturday, Sunday or a holiday).
This simplified procedure enabled the Patent Office to respond quickly to the COVID-19 pandemic and notify the public in advance that March 16 to April 30 would be regarded as “designated days”.
In addition to this, amendments to the Patent Rules (effective October 30 2019) ensured that electronic communications to the Patent Office are deemed to be received on the date of transmission, even on a weekend, holiday, or designated day.
Therefore, under the current procedure, Patent Office customers are permitted to delay meeting most deadlines until at least May 19, but they can continue to correspond with the Patent Office by electronic means and obtain filing dates for new applications. This could be of particular importance in the case of a pre-filing disclosure by the applicant, as the one-year grace period is measured from the Canadian filing date.
The Canadian courts have been balancing the need for litigation to proceed where possible and the need to abide by respect social distancing requirements by adopting a flexible approach to managing and hearing litigation matters.
The majority of IP cases in Canada are brought in the Federal Court of Canada. As of March 16, the Federal Court and the Federal Court of Appeal adjourned most hearings and suspended the running of most timelines until May 15 (initially April 17). Although the premises are closed to the public, the courts remain accessible through electronic means, including for filings.
Many cases in the Federal Court are under case management and those are continuing to be actively managed in certain circumstances, including the consent of the parties, with matters determined in writing, by telephone conference or video conference. Therefore, certain interlocutory steps requiring the assistance of the court are continuing.
IP-related deadlines that are governed by legislation (other than the Federal Courts Act and the Federal Courts Rules) have not been extended by court notices or orders.
Of particular note for the life sciences industry is that the deadline to commence actions and the 24-month statutory stay under the linkage regulations - the Patented Medicines (Notice of Compliance) Regulations (PMNOC Regulations) - has not been extended. Given the typical 21- month period to bring these cases to trial, the suspension period will place particular timing pressure on parties to such litigation. Any such changes, however, would require action by the government. Actions under the PMNOC Regulations continue to be actively case managed.
The operation of the provincial courts are similarly suspended. For example, the Ontario Superior Court suspended all regulatory operations effective March 17.
The Canadian government and the courts have responded rapidly to the COVID-19 pandemic, demonstrating the flexibility required to protect stakeholders’ rights. As the situation evolves, further measures may be implemented.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, any other of its practitioners, its clients, or any of its or their respective affiliates. This article is for general information purposes only and is not intended to be and should not be taken as legal advice. Please contact the author(s) if you have any questions about this article.
Nancy Pei (Partner)
David Schwartz (Partner)