CIPO’s practice notice alters extension period to respond to an examiner’s report

The Canadian Intellectual Property Office (CIPO) has issued a practice notice curtailing applicants’ ability to obtain time extensions to respond to examiner’s reports. It was issued on 17 January 2020, with immediate effect.

Background

Under the prior regime, CIPO granted applicants one six-month extension to respond to an examiner’s report as of right. Coupled with the initial six-month deadline for a response to the examiner’s report, this extended deadline effectively provided a 12-month examiner’s report response window – with further extensions available in ‘exceptional circumstances’.

The new practice notice, titled “Extensions of time in Examination and to respond to a section 44.1 notice”, treats all extensions as exceptional. Going forward, ‘free’, as of right extensions are no longer available to respond to new examiner reports. Instead, applicants must establish exceptional circumstances to justify any extension of time beyond the initial six-month response period.

The notice sets out seven examples of exceptional circumstances, which could justify an extension; these are largely holdovers from the prior regime. An applicant may request multiple extensions based on one of these seven circumstances. Further, extensions are typically granted if the applicant can establish that the circumstances exist or persist (as the case may be), making further time to respond necessary. These are:

• recent change in the trademark agent of record;
• circumstances beyond the control of the person concerned (illness, accident, death, bankruptcy or unforeseen circumstance, among other things);
• a request is pending to record or register the transfer of an application or registered trademark that would overcome a confusion objection;
• a cited co-pending trademark is the subject of a pending opposition proceeding;
• a cited registered trademark is the subject of a pending non-use summary cancellation proceeding;
• the applicant is in the process of actively negotiating consent from the holder of a cited prohibited mark or official mark; and
• the applicant has filed a request to divide, in respect of Canada, the international registration on which the original protocol application is based.

The notice also adds two sets of exceptional circumstances– but these come with a catch: an applicant can only request one six-month extension based on each of these circumstances, per prosecution (ie, once during the life of a given application). These are if the applicant:

• requires more time to consider and prepare a response to a refusal on substantive grounds – namely that the trademark is not registrable, is confusingly similar to a prior third-party mark or lacks inherent distinctiveness; and
• is compiling evidence of acquired distinctiveness based on use of the trademark in Canada, to show that the trademark was distinctive as at the filing date of the application.

Considering the nine circumstances on the whole, the effect of the practice notice is that for examiner reports containing only formality related objections (eg, goods and services description issues, translation requirements or Nice classification requests), extensions of time are generally not available. Only in the event of a change in the trademark agent of record, a request to divide or circumstances otherwise beyond the control of the person concerned might an extension be granted.

That said, for examiner’s reports containing both formality and substantive objections, if an applicant obtains an extension on exceptional circumstances, this will extend to the more minor, formality focused issues as well.

As noted above, the new practice notice has immediate effect, which raises questions about its impact on pending applications. For an examiner’s report issued on or after 17 January 2020, all aspects of these new rules apply. For an examiner’s report issued prior to 17 January the rules limiting the availability of extensions do not apply, and an initial extension as of right, as provided under the old regime, is available.

Comment

In light of these changes, clients and foreign counsel should avoid delays in instructing Canadian counsel – particularly where it concerns more straightforward examiner’s reports, where extensions of time will be less readily available than in the past. Simply put: do not delay; instruct today!