UPDATED: CIPO announced on April 27th that it would increase its extension to May 19th. The USPTO announced on April 29th that it increase its extension to June 1, 2020.
The COVID-19 pandemic has left many North American businesses to close their doors, while others continue to operate on a work-from-home basis. This may leave patent and trademark applicants wondering about the status of their applications. In this article, we explain how the intellectual property offices in Canada and the United States are responding to the pandemic.
Canada
While the Canadian Intellectual Property Office (CIPO) remains open, CIPO warns there will be “significant delays”. All document orders have been suspended until April 30th.
On Friday, CIPO announced it is extending deadlines until May 1, 2020. Under 78(2) of the Patent Act, subsection 21(1) of the Industrial Design Act, and subsection 66(2) of the Trademarks Act, CIPO has the power to extend deadlines in the event of “unforeseen circumstances.” Any deadline that falls between March 16 and April 30, 2020 now falls on May 1, 2020. CIPO may extend that date further into the future if the virus continues to disrupt applicants and patent owners.
For deadlines that fall after May 1, CIPO has the power to grant further extensions on a case-by-case basis. Under section 47 of the Trademarks Act and section 4 of the Patent Act, certain deadlines may be extended if missing the deadline was “not reasonably avoidable” or if the extension is justified. As this process is somewhat subjective, don’t expect to be granted an extra extension beyond May 1st.
United States
In the United States, the USPTO also remains open although its offices have been closed to the public since March 16, 2020.
The CARES Act passed by the US Senate on March 25th grants the USPTO director the ability to “toll, waive, adjust, or modify, any timing deadline” under the Trademark Act or the America Invents Act (AIA). A similar provision is made for the Registrar of Copyright.
The deadlines that have been extended include:
- Responses to office actions
- Issue fee
- Notice of appeal
- Statements of use
- Notices of opposition
- Priority filing basis
Qualifying deadlines that fall between March 27, 2020 and April 20, 2020 may be extended by 30 days. If you take advantage of the extension, your filing must include a statement confirming that the delay was due to the COVID-19 outbreak.
Best Practices During COVID-19
- Whenever possible, continue to meet original deadlines.
- Continue to meet deadlines for national phase entry in Canada and the US. There are no extensions for international treaties such as the Patent Cooperation Treaty (PCT), the Madrid Protocol, or the Hague Convention.
- If you have an upcoming deadline with the USPTO, consult an IP professional to confirm whether or not your deadline can be extended.
- Expect backlogs after the extensions end. If you want your patent or trademark application to be processed in a timely fashion, you may wish to file it now.
For more information on time extensions at the USPTO or CIP, please contact a professional at PCK Intellectual Property.
PCK IP is one of North America’s leading full-service intellectual property firms with offices in Canada and the United States. The firm represents large multinational companies, scaling mid-size companies, and funded innovative start-up entities. PCK IP professionals include seasoned patent and trademark agents, engineers, scientists, biochemists and IP lawyers having experience across a broad range of industries and technologies. Contact us today.
The contents of this article are provided for general information purposes only and do not constitute legal or other professional advice of any kind.