Canada: Update No. 4 - COVID-19 and Canadian Intellectual Property

In brief

Our first three updates can be found at:

The purpose of this Update No. 4, 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.

This Update No. 4 covers updated guidance from:

  1. the Canadian Intellectual Property Office (CIPO);
  2. the Federal Court of Appeal; and
  3. the Federal Court.

Update re: Canadian Intellectual Property Office (CIPO)

CIPO Remains Open and Operational

CIPO remains open and operational, albeit with delays and reduced service.

CIPO webpage titled “COVID-19 and CIPO operations” is located here.

Previously, the Client Service Centre continued to receive orders for intellectual property documents but those orders were not being fulfilled.  CIPO’s Client Service Centre has resumed its intellectual property document order service; however, CIPO notes that delays are to be expected in the processing of requests while CIPO works to fulfill backlogged orders.  CIPO’s Public Search Room remains closed.

Under a heading of “Most deadlines are extended”, this webpage now states:

Most deadlines that fall between March 16, 2020, and July 3, 2020, are extended until July 6, 2020. This designation is in addition to the previous designations of the days in the period beginning on March 16, 2020, and ending on June 12, 2020. This period could be extended.

Exceptions

  • Patent FAQ #4: What time periods are not extended under subsection 78(1) of the Patent Act, in relation to designated days under subsection 78(2), during the COVID-19 service interruptions?

Ottawa and Gatineau continue to remain the only CIPO offices that are accepting correspondence. 

CIPO’s webpage titled “COVID-19 and CIPO operations” contains a list of CIPO’s latest service interruption notices.

Update No. 1 set out the following CIPO service interruption notices:

Update No. 3 set out the following CIPO service interruption notices:

Since Update No. 3 was published, two new service interruption notices have been posted.  These are:

CIPO’s COVID-19 Frequently Asked Questions

In Update No. 1, Update No. 2 and Update No. 3, we noted that CIPO has published COVID-19 frequently asked questions (FAQs) documents concerning trademarks, patents and industrial designs.

These FAQs continue to be updated by CIPO.

Trademarks

CIPO’s June 9, 2020 COVID-19 FAQs for trademarks is available here.

Patents

CIPO’s June 10, 2020 COVID-19 FAQs for patents is available here.

Industrial Designs

CIPO’s June 9, 2020 COVID-19 FAQs for industrial designs is available here.

Trademarks Opposition Board

CIPO’s June 9, 2020 COVID-19 FAQ for the Trademarks Opposition Board is available at Trademarks Opposition Board COVID-19 service interruption notices

Update re: the Courts

Federal Court of Appeal

On June 11, 2020, the Chief Justice of the Federal Court of Appeal (FCA) issued a new Notice titled “Gradual phase-out of Suspension Period: COVID-19”.  The Notice is available here.

The Notice advises, in part, the following:

  1. By Notice to the Parties and the Profession dated March 19, 2020, the Federal Court of Appeal suspended the running of time under the Federal Courts Rules, orders and directions to respect government regulations and orders concerning the COVID-19 pandemic. The Suspension Period set out in that notice was further extended on April 2, 2020, May 12, 2020 and May 28, 2020.
  2. The public health situation has now improved in many regions. Some authorities are relaxing their regulations and orders. Accordingly, it is now appropriate that the Suspension Period be lifted over certain files and these files be allowed to progress.

According to the Notice:

Default Position

  • Subject to the FCA issuing a future notice directing otherwise, the Suspension Period applies to and is extended indefinitely for all files commenced in the FCA before or after June 11, 2020, except for Selected Files and files already released from the Suspension Period.

Gradual Relaxation of Default Position

Selected Files and Selected Files List

  •   The Suspension Period will be lifted for certain selected files (the “Selected Files”)
  •   On Monday, June 22, 2020, a list of Selected Files (the “Selected Files List”) will be posted to the FCA’s website.
  • New Selected Files will be added to the Selected Files List every subsequent Monday. 
  • The Selected Files List will show the date on which a particular file was added to the Selected Files List (the “Selection Date”). 
  • The Suspension Period for a Selected File will end on the first Monday after the Selection Date. 
  • Files will be designated as a Selected File primarily based on the age of the file.  The FCA may also have regard to other factors that are set out in the Notice. 

Motions to be designated or de-designated as a Selected File

  • Parties may bring motions to have a file designated as a Selected File or de-designated as a Selected File.  The procedure is set out in the Notice. 

Selected Files: the computation of time and other procedural matters

  • The Notice sets out several procedural matters. 

Hearings

  • The FCA will continue to hear proceedings remotely (by online video-conference, teleconference or in writing) until public health advice in a particular jurisdiction allows in-person hearings. 

Registry Operations

  • By the end of this month, the FCA is hoping have more onsite Registry personnel.  The FCA is advising that onsite staffing levels will continue to be reduced for some time, and the FCA recommends continuing to communicate via email or telephone.

Federal Court

On June 11, 2002, the Federal Court issued “Practice Direction and Order (COVID-19): Update #4 (June 11, 2020)” (“Federal Court Update #4”).  It is available here.

According to the Federal Court, this practice direction and the attached Order amend the following:

Federal Court Update #4 states, in part, the following:

  •  Subject to the amendments set out in Federal Court Update #4, the previous practice direction and Orders (noted above) remain in force. 

Western Canada and Atlantic Canada

The Suspension Period expired at the end of the day on June 15, 2020 for British Columbia, Alberta, Saskatchewan, Manitoba (collectively, the “four provinces of Western Canada”) and for Newfoundland and Labrador, New Brunswick, Nova Scotia, and Prince Edward Island (collectively, the “four provinces of Atlantic Canada”).  

  •  Subject to some carve outs set out in the practice direction and Order, the timelines for the filing of documents and the taking of other procedural steps in proceedings in those provinces are extended to June 29, 2020. 

Ontario, Quebec and the Territories

  • Subject to the exceptions set out in Practice Direction and Order (COVID-19): Update #2 (April 29, 2020), the Suspension Period for Ontario, Quebec and Canada’s three territories is further extended through June 29, 2020, and all matters that were previously scheduled to be heard at a special sitting from July 11, 2020 to July 26, 2020 are adjourned sine die.
  •  Furthermore, all General Sittings that were previously scheduled to occur between July 11, 2020 and July 26, 2020 are cancelled.

According to the Federal Court, 

All Provinces and Territories

  1. Where a hearing has been adjourned as a result of an Order establishing or extending the Suspension Period, parties shall provide the Judicial Administrator with their mutual dates of non-availability up to December 18, 2020. For Western Canada and Atlantic Canada, such dates should be provided no later than June 29, 2020. For Ontario, Quebec and the territories, such dates shall be provided no earlier than June 15, 2020 and no later than the close of business on July 13, 2020. Such dates shall be communicated to the Court by email to HEARINGS-AUDIENCES@FCT-CF.CA. Where a matter has previously been placed in case management, such correspondence shall be addressed to the attention of the Case Management Judge
  2. Except to the extent set forth above, the Orders issued by the Court on April 4, 2020 and April 29, 2020, and May 29, 2020 remain in effect.
  3. The waiver of fees pursuant to paragraph 8 of the Court’s Order dated April 4, 2020 will expire on June 29, 2020. With respect to fees relating to a proceeding against the Crown, the statutory filing fee ($2.00) contemplated by section 48 of the Federal Courts Act shall be paid before the close of business on July 29, 2020.

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).

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Baker McKenzie has put together a global Beyond COVID-19 Resource Centre and Canada: COVID-19 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.
 

 


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