On account of the disruption to businesses caused by the Covid-19 pandemic, the Commissioner of Patents in Canada has voluntarily extended most patent-related deadlines with an original due date between July 6, 2020 and July 17, 2020, inclusive to July 20, 2020. This is in addition to the previous voluntary extension of the days in the period beginning on March 16, 2020 and ending on July 3, 2020. While the voluntary extension is justified, it is worth noting that this provision interacts differently with the different parts of the legislation. In this article, we explore the interaction between this voluntary extension and the extension of time – of particular interest are situations where the former limits the extension of time that would otherwise be available upon request by an applicant. For instance, the typical deadline to respond to an examiner’s report is four months from the issuing date of the report. This deadline can be extended up to a maximum of six months from the issuing date of the report, which invariably limits the maximum extension of time that is available to an applicant to two months. However, because of the voluntary extension by the Commissioner, the two-month maximum extension may be limited or even unavailable. It is therefore imperative that applicants are aware of situations where extension of time may be shorter than they would typically be or even unavailable in view of the voluntary extension by the Commissioner.
The Commissioner has granted the current voluntary extension under subsection 78(2) of the Patent Act. This statutory provision enables the Commissioner to “designate” any day “on account of unforeseen circumstances and if the Commissioner is satisfied that it is in the public interest to do so.” In view of the Covid-19 pandemic and resultant restrictions, the Commissioner has so far designated all days between March 16th and July 17th, inclusive. As a result, most patent-related deadlines have been extended to July 20th, 2020 (read more on designated days).
Interplay between Designated Days and the Extensions of time
Under subsection 3(1) of the Patent Rules, the Commissioner has the authority to extend time periods for taking certain actions under the Patent Rules if:
- the Commissioner is satisfied that the circumstances justify the extension,
- the applicant requests an extension of time before the expiry of a time limit, and
- an applicable extension of time fee is paid.
Despite this statutory provision, some deadlines are not extendable beyond a limit. In the example of the time to respond to an examiner’s report, an applicant can obtain no more than the two-month extension on the deadline to respond to the report. This maximum extension obtainable is subject to designated days and as a result, can be shortened accordingly. The following hypothetical scenarios provide further insight into the effect of designated days on the deadline to respond to an examiner’s report.
Scenario I: An examiner’s report was issued on January 22, 2020. The four-month deadline to respond to the report is May 22, 2020. Because May 22, 2020 is a designated day, the deadline to respond to the report automatically becomes July 20, 2020. Likewise, the deadline to request for an extension of time under subsection 3(1) Patent Rules is July 20, 2020. Nevertheless, an applicant must bear in mind that the deadline to respond cannot be extended beyond July 22, 2020 (six months from the issuing date of the report). Consequently, if an applicant waits until July 20, 2020 to request for an extension of time, the maximum extension of time that can be awarded by the Commissioner is limited to 2 days instead of the two months extension that is otherwise permissible.
Scenario II: An examiner’s report was issued on December 1, 2019. The four-month deadline to respond to the report is April 1, 2020, but because April 1, 2020 is a designated day, the deadline to respond automatically becomes July 20, 2020. Likewise, the deadline to request for an extension of time under subsection 3(1) of the Patent Rules is July 20, 2020. Assuming the applicant waits until July 20, 2020 before requesting an extension of time under subsection 3(1) of the Patent Rules, this request will be declined by the Commissioner because the deadline to respond cannot be extended beyond six months from the issuing date of the report, which in this case is in the past i.e., June 1, 2020.
Other deadlines for which there’s a limit to the extension of time permissible under subsection 3(1) of the Patent Rules include:
- the deadline to respond to a notice informing an applicant of defects in an application (this deadline cannot be extended beyond six-months from the issuing date of the notice).
- the deadline to respond to a notice requesting that a person establishes that they are the applicant of an international application/legal representative for PCT national phase applications (the deadline cannot be extended beyond the later of 6 months after the date of the notice and 30 months after the priority date).
In summary, the new set of designated days (i.e., July 6 to July 17, inclusive) brings the total number of designated days so far to 4 months. As a result, it has become more important that applicants and their representatives be mindful of actions that can/cannot be extended. In particular, applicants and their representatives must be conscious of the risks in relying on designated days in delaying an action, especially concerning extensions of time for deadlines that cannot be extended beyond a maximum. Like most questions relating to patent prosecution, the interplay between designated days and extension of time under subsection 3(1) of the Patent Rules is highly fact-specific. Applicants seeking guidance on specific cases are advised to consult a Marks & Clerk Canadian patent agent for assistance.