The extensive amendments to the Patent Act and Patent Rules that came into force on October 30, 2019 have complicated the practice for responding to an Office Action (i.e. an "Examiner's Report") issued by the Canadian Patent Office.
Previously, Examiner's Reports issued with a six-month term for response that could not be extended. Now, Examiner's Reports have a four-month term for response. The deadline may be extended in certain circumstances, but there is no certainty whether an extension will be granted, making it difficult for the applicant to plan.
This article addresses the legal and practical issues surrounding extensions of time for responding to Examiner's Reports and alternative approaches that may be taken.
- The initial term for responding to an Examiner's Report is four months, extendible by a maximum of (effectively) two months.
- The extension request and fee must be submitted on or before the expiry of the original four-month deadline.
- An explanation as to why the applicant was unable to meet the original deadline must be submitted-a mere statement that more time is needed to consider the Report will not be sufficient.
- The extension will only be granted if the Commissioner of Patents considers that the circumstances justify the extension. The Commissioner's decision may be issued after expiry of the original deadline.
- If a response is to the Examiner's Report is not filed by the original (or extended) deadline, the application will be abandoned.
- An application abandoned for failure to respond to an Examiner's Report may be reinstated as of right within 12 months of the date of abandonment.
- The government fee for requesting an extension of time and for reinstatement is the same.
- If an extension of time is granted, or the abandonment/reinstatement procedure is used, the applicant will not be able to obtain expedited examination of the application.
Term for responding to an Examiner's Report
The deadline for responding to an Examiner's Report issued by the Canadian Patent Office is four months from the date of the Report.1 This deadline may be extended, but in no case may the deadline be extended beyond six months from the date of the Report.2 Therefore, at most a two-month extension of the original deadline is available.
Extensions of time
The term for responding to an Examiner's Report may be extended pursuant to subsection 3(1) of the Patent Rules, which is the general provision governing extensions of deadlines fixed by the Rules. An extension may be granted if:
- The extension is requested, and the prescribed government fee3 is paid, on or before the original deadline.
- The Commissioner of Patents considers that the circumstances justify the extension.
Circumstances justifying an extension of time
The Manual of Patent Office Practice (MOPOP) explains that the applicant must provide "a justification, rationale or description of circumstances that will satisfy the Commissioner that the extension should be granted" and that the Commissioner will consider "reasonable and detailed explanations as to why the applicant was incapable of fulfilling prescribed requirements within the prescribed time."4
The Patent Office's Practice Notice on extensions of time explains that "a simple statement indicating that more time is required to respond to an outstanding Office action or to obtain instructions from an applicant etc., but does not include a description of the circumstances" will be refused, and provides the following examples of circumstances that may justify an extension of time:
- A recent transfer of the rights to the application
- A recent change in the appointed patent agent
- Any health issues impacting the applicant or patent agent
- Specific logistical issues effecting communication between the applicant and the patent agent
- Specific additional efforts that an applicant must take in order to comply with an outstanding Office action
- Any other unforeseen issues5
The Commissioner's decision concerning the extension
Provided the extension request and fee are submitted on or before the original deadline for responding to the Examiner's Report, the Commissioner may grant the extension after the original deadline has passed. The Patent Office's published service standard commitment is to issue a decision on a request for extension of time within two months of the date of the request.6 However, in practice, the Patent Office has been issuing extension of time decisions substantially more promptly. It is nevertheless advisable to request the extension well before the original deadline so that there is time to take action in the event the Commissioner refuses the extension.
The Patent Office's Practice Notice indicates that, if a request for an extension of time is refused, the applicant may submit supplementary reasons justifying the extension without payment of an additional fee, but only if such reasons are submitted before the original deadline. It thus appears that if the Patent Office first refuses the extension request after expiry of the original deadline, the application is deemed abandoned and a further explanation justifying the extension will not be considered.
Abandonment and reinstatement
If a response to an Examiner's Report is not submitted by the original deadline-or by the extended deadline if an extension of time is granted-the application will be abandoned.
An application abandoned for failure to respond to an Examiner's Report may be reinstated as a matter of right within 12 months of the date of abandonment. Reinstatement requires:
- A request that the application be reinstated
- Payment of a government fee7
- Submission of a response to the Examiner's Report
Importantly, the reinstatement deadline cannot be extended, and the application will lapse terminally if the reinstatement deadline is missed for any reason.
Calculation of deadlines
Extensions of time are calculated from the date of the Examiner's Report whereas the 12-month term for reinstatement runs from the date of abandonment, as illustrated by the following example.
If an Examiner's Report issues on Friday January 22, 2021, the four-month term for response expires on May 22, 2021. But a response may be filed as late as Tuesday May 25, 2021 without penalty, because May 22, 2021 is a Saturday, and Monday May 24, 2021 is the federal Victoria Day holiday.
If no response is filed by May 25, 2021, the application will be abandoned, and the deadline for reinstating the application will be May 25, 2022, 12 months from the date of abandonment.
If an extension of time for responding to the Examiner's Report is obtained, the response deadline will be Thursday July 22, 2021, six months from the date of the Examiner's Report. If a response is not filed by the extended deadline, the application will be abandoned, and the deadline for reinstating the application will be July 22, 2022, 12 months from the date of abandonment.
Legal consequence of obtaining an extension of time or using the reinstatement procedure
Pursuant to subsection 84(1) of the Patent Rules, the Commissioner of Patents must advance out of its routine order the examination of the application on the request of
(a) any person, if they pay the prescribed government fee and file with the Commissioner a statement indicating that failure to advance the examination of the application is likely to prejudice that person's rights; or
(b) the applicant, if the applicant files with the Commissioner a statement indicating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment or natural resources.
Subsection 84(2) of the Patent Rules provides that the Commissioner must not advance the examination of the application for a patent out of its routine order or, if the examination is advanced, must return it to its routine order if
(a) the Commissioner has, under subsection 3(1), extended the time fixed for doing anything in respect of the application; or
(b) the application is or was deemed to be abandoned.
The legal consequence of obtaining an extension of time or using the reinstatement procedure is thus the same-the opportunity to expedite prosecution of the application is lost. Moreover, as noted above, the government fee is the same in both cases.
An extension of time or abandonment/reinstatement will not result in loss of expedited examination status if examination has been expedited through the Patent Prosecution Highway (PPH) procedure.
Canadian patent applications are open to inspection to the public starting 18 months from the earliest priority date. Even if an application is subsequently abandoned, all correspondence submitted by the applicant will be permanently available in the Patent Office's official records and on the Patent Office's website.
Applicants should bear this in mind when considering whether to request an extension of time and the nature and extent of information submitted to establish that the circumstances justify the extension. No privacy issues arise with respect to the reinstatement procedure, because the applicant is entitled to reinstatement as a matter of right, and no reasons need be provided.
The requirement that the Commissioner of Patents be satisfied that the circumstances justify the extension and the relatively little additional time available even if the extension is granted make the extension of time procedure uncertain and impractical. It is difficult for the applicant to plan effectively if it is not known whether an extension of time will be granted.
The more efficient and practical approach may be to dispense entirely with an extension of time and simply use the reinstatement procedure if it is not possible to meet the original deadline to respond to an Examiner's Report. Indeed, if the response and reinstatement request are submitted within two months of the original deadline, the outcome is essentially the same as if an extension had been granted and a response filed by the extended deadline. The response is filed at the same time, the same government fees are paid, and the legal consequences are identical (i.e. loss of the possibility to expedite examination). Moreover, the requirement to go on the public record with an explanation as to why the extension is needed is avoided.
But use of the reinstatement procedure has disadvantages too and is ideally avoided. Although not required by the Patent Act or Patent Rules, if the original or extended deadline for responding to an Examiner's Report is missed, the Patent Office will usually issue a "notice of abandonment." This can be very helpful in the event the original deadline was missed through error. But the Patent Office will provide no further notice concerning the reinstatement deadline or any requirements that must be met. Missing the reinstatement deadline for any reason will result in a loss of rights.
1. Subsections 86(2) and 131(1) of the Patent Rules.
2. Subsection 3(2) of the Patent Rules.
3. As of January 1, 2021, the government fee was CAD $204.00. Pursuant to the Service Fees Act, this fee is subject to annual adjustment (potentially an increase or decrease) to reflect changes in the Consumer Price Index.
4. MOPOP § 2.03.03e
7. As of January 1, 2021, the government fee was CAD $204.00. Pursuant to the Service Fees Act, this fee is subject to annual adjustment (potentially an increase or decrease) to reflect changes in the Consumer Price Index.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.