The virus termed “COVID-19” by the World Health Organization (WHO) reached the shores of Canada in March, after sweeping through Asia and Europe.
Canada’s governments, federal and sub-national, are taking extraordinary measures to try to contain the spread of COVID-19, and, as a result, business is not as usually in Canada – including services from the Canadian Intellectual Property Office (CIPO) and the Courts.
CIPO is a special operating agency of Innovation, Science and Economic Development Canada, and it is responsible for administering Canada’s intellectual property regime. The Federal Court and the Federal Court of Appeal are the primary courts in Canada that deal with IP related cases.
The purpose of this update, and future updates as the COVID-19 situation evolves, is to provide affected parties with timely information about how COVID-19 is impacting Canadian intellectual property.
Update re: the Canadian Intellectual Property Office (CIPO)
CIPO Remains Open and Operational
In a notice dated 16 March 2020, CIPO advised that it “remains open for business. It remains the responsibility of CIPO's clients to ensure that all deadlines are respected.”
In a 27 March 2020 notice, CIPO advised that “clients should expect significant delays in all CIPO services.”
In the same notice, CIPO advised that the Commissioner of Patents ("Patent Act"), the Registrar of Trademarks ("Trademarks Act"), and the Minister ("Industrial Design Act") have, pursuant to the applicable legislation, have “designated” all days from 16 March 2020 to 30 April 2020.
The effect of designating those days is that if a time period fixed under the Patent Act, Trademarks Act or Industrial Design Act in respect of any business before CIPO for doing anything ends on any of those designated days, the time period is extended to Friday, 1 May 2020.
Additional days may be designated, depending on COVID-19s continuing impact upon Canada. Unless the COVID-19 situation dramatically changes in Canada, we anticipate that additional days will be designated, and will provide an additional update to advise of any changes.
CIPO Regional Offices
As of 16 March, CIPO’s regional offices in Toronto, Vancouver, Montreal and Edmonton are not receiving correspondence.
CIPO Service Interruption: Intellectual Property Document Orders
In a 30 March notice, CIPO advised that its Client Service Centre will continue to receive orders for intellectual property documents; however, orders are not presently being fulfilled as a result of “operational restrictions related to COVID-19”. The notice indicates that it is currently anticipated that these services will resume on 30 April 2020; however, the notice cautions that the service interruption may be extended beyond that date.
According to CIPO, when services do resume, document orders that have been filed but not yet delivered will be processed first, in the order in which they were received. CIPO will then process new orders in the order in which they were received.
A 27 March 2020 notice advises that online services remain available for transactions with CIPO. In particular, CIPO draws attention to the fact that trademark applicants or their appointed agents can use CIPO's online services to respond to office correspondence (such as examiner's reports) without having to amend any information in an application, provided certain steps are followed.
Trademarks Opposition Board (TMOB)
A 20 March 2020 notice advises that the Registrar wants to ensure that parties before the Trademarks Opposition Board (TMOB) are able to obtain extensions to any deadlines that are effected by COVID-19.
Any deadline set out in the Trademarks Act, Trademarks Regulations or by the Registrar in a proceeding before the TMOB that falls between 16 March and 30 April 2020 will now fall on Friday, 1 May 2020.
For deadlines falling after 1 May, the Registrar is willing to consider the disruption caused by COVID-19 a sufficient circumstance to obtain an extension of time under sections 47(1) and 47(2) of the Trademark Act upon request.
If it is in the interests of justice to do so, the Registrar may also, own its initiative, use its discretion under section 47(1) of the Trademark Act to extend deadlines.
CIPO’s COVID-19 Frequently Asked Questions
CIPO has published COVID-19 frequently asked questions (FAQs) documents concerning trademarks, patents and industrial designs.
Each of the FAQs contains a detailed disclaimer that advices, in part, that “The answers provided are only a guide and should not be considered legally binding. If there are inconsistencies between the information in these answers and the applicable legislation, the legislation must be followed.”
According to CIPO, the information in the FAQs “should not be relied upon for legal purposes or business decisions.”
These FAQ documents, along with guidance from a qualified IP professional, provide some insights into how CIPO is operating during the COVID-19 service disruptions.
CIPO’s 1 April 2020 COVID-19 FAQs for trademarks is available at https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04764.html.
CIPO’s 1 April 2020 COVID-19 FAQs for patents is available at https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04762.html.
CIPO’s 31 March 2020 COVID-19 FAQs for industrial designs is available at https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04763.html.
CIPO’s primary office is located in the city of Gatineau, in the province of Québec. Gatineau is located across a river from Canada’s capitol city of Ottawa, in the province of Ontario. Many federal government employees, including those who work at CIPO, reside in Ontario and work in Québec. Last week, the sub-national Government of Québec announced it was setting up police checkpoints along the Gatineau/Ottawa border and restricting non-essential travel into Québec. Canada’s Federal Government has identified certain CIPO employees as essential service providers, and CIPO has issued authorization letters to its essential Ontario resident employees to permit continued travel into CIPO’s office located in Gatineau.
We have heard that CIPO has recently commenced the processing of certain actions, but at lower than normal activity levels. We understand that work has re-commenced on agent appointments, incoming transfer recordals, amendments, and processing of registrations.
We understand that examination and office action reports have been continuing although the issuance of those reports has not been taking place in all instances. We have heard that printing and mailing, which requires some manual steps, re-commenced last week, but at lower than normal levels, and that CIPO is quarantining all paper for at least 24 hours that is received before processing.
Update re: the Federal Court and the Federal Court of Appeal
On 19 March 2020, the Chief Justice of the Federal Court of Appeal advised that the Appeal Court is temporarily suspending deadlines as a result of COVID-19. The suspension period is 16 March 2020 to 17 April 2020. It is not improbable that the Appeal Court will extend the suspension period.
On 17 March 2020, the Chief Justice of the Federal Court issued a “Practice Direction and Order (COVID-19)”. The Federal Court is effectively closed until Monday, 20 April 2020. It is not improbably that the Court will remain closed past April 20th.
On 20 March 2020, the Federal Court issued “Update: Practice Direction and Order (COVID-19)”, which contains Frequently Asked Questions (FAQs).
We anticipate that the Federal Court will be issuing additional guidance.
This Update was prepared by the Intellectual Property (IP) Practice Group in Baker McKenzie’s Toronto Office, with the assistance of J. Andrew Sprague (Professional Support Lawyer).
* * * * *
Baker McKenzie has put together a global Coronavirus Resource Center and Canada: Coronavirus Resource Centre with key insights to assist our clients understand, prepare and respond quickly to the significant legal and business challenges posed by COVID-19. Baker McKenzie understands that these times are challenging for all our clients and we want to assure you we are here to assist.