Options to consider when requesting an extension to respond to the Patent Office

Introduction
Summary
Deadline for responding to examiner's reports
Time extensions
Circumstances justifying time extensions
Commissioner's decision on extensions
Abandonment and reinstatement
Calculation of deadlines
Legal consequence of obtaining extensions or using reinstatement procedures
Privacy issues
Practical considerations

Introduction

The extensive amendments to the Patent Act and Patent Rules that came into force on 30 October 2019 have complicated the process for responding to an office action (ie, examiner's report) issued by the Patent Office.

Previously, examiner's reports were 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 an extension is not guaranteed, making it difficult for applicants to plan.

This article addresses the legal and practical issues surrounding extensions for responding to examiner's reports and alternative approaches that may be taken.

Summary

A summary of the amended process is as follows:

• The initial term for responding to an examiner's report is four months, extendable by a maximum of two months.
• Extension requests and fees 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.
• Extensions will be granted only if the commissioner of patents considers that the circumstances justify the extension. The commissioner's decision may be issued after the expiry of the original deadline.
• If a response to the examiner's report is not filed by the original (or extended) deadline, the application will be abandoned.
• Applications abandoned for failure to respond to an examiner's report may be reinstated as of right within 12 months of the date of abandonment.
• Government fees for requesting an extension or reinstatement are the same.
• If an extension is granted, or the abandonment and reinstatement procedure is used, applicants cannot obtain expedited examination of the application.

Deadline for responding to examiner's reports

The deadline for responding to an examiner's report issued by the Patent Office is four months from the date of the report.(1) This deadline may be extended, but not beyond six months from the date of the report.(2) Therefore, an extension of up to two months from the original deadline is available.

Time extensions

The deadline for responding to an examiner's report may be extended pursuant to Section 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 fee(3) is paid on or before the original deadline; or
• the commissioner of patents considers that the circumstances justify the extension.

Circumstances justifying time extensions

The Manual of Patent Office Practice explains that applicants 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 time extensions explains that the commissioner will refuse:

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.

It provides the following examples of circumstances that may justify an extension:

• a recent transfer of the rights to the application;
• a recent change in the appointed patent agent;
• any health issues affecting the applicant or patent agent;
• specific logistical issues affecting communication between the applicant and the patent agent;
• specific additional efforts that an applicant must make to comply with an outstanding office action; and
• any other unforeseen issues.(5)

Commissioner's decision on extensions

Provided that 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 an extension request within two months of the date of the request.(6) However, in practice, the Patent Office has been issuing extension decisions more promptly. Applicants are nevertheless advised to request the extension well before the original deadline so that there is time to take action if the commissioner refuses the extension.

The Patent Office's practice notice indicates that if a request for a time extension is refused, applicants may submit supplementary reasons to justify the extension without payment of an additional fee, but only before the original deadline. It thus appears that if the Patent Office refuses an extension request after the original deadline has expired, the application is deemed abandoned and further explanations to justify 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 is granted – the application will be abandoned.

Applications 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 to reinstate the application;
• payment of a government fee; and
• submission of a response to the examiner's report.

The reinstatement deadline cannot be extended, and an application will lapse terminally if the reinstatement deadline is missed for any reason.

Calculation of deadlines

Extensions are calculated from the date of the examiner's report. However, the 12-month term for reinstatement runs from the date of abandonment, as illustrated by the following example.

If an examiner's report was issued on Friday 22 January 2021, the four-month term for response would expire on 22 May 2021. However, a response may be filed on Tuesday 25 May 2021 without penalty because 22 May 2021 is a Saturday and Monday 24 May 2021 is the federal Victoria Day holiday.

If no response is filed by 25 May 2021, the application will be abandoned. The deadline for reinstating the application will be 25 May 2022, 12 months from the date of abandonment.

If an extension of time to respond to the examiner's report is obtained, the response deadline will be Thursday 22 July 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. The deadline for reinstating the application will be 22 July 2022, 12 months from the date of abandonment.

Legal consequence of obtaining extensions or using reinstatement procedures

Pursuant to Section 84(1) of the Patent Rules, the commissioner of patents must advance the examination of an application out of its routine order at the request of:

• any person which pays the prescribed government fee and files with the commissioner a statement indicating that failure to advance the examination of the application is likely to prejudice its rights; or
• the applicant, if it files with the commissioner a statement indicating that the application relates to technology which, if commercialised, would help to resolve or mitigate environmental impacts or to conserve the natural environment or natural resources.

Section 84(2) of the Patent Rules provides that the commissioner must not advance the examination of an application for a patent out of its routine order or, if the examination is advanced, must return it to its routine order if:

• the commissioner has, under Section 3(1), extended the time fixed for doing anything in respect of the application; or
• the application is or was deemed to be abandoned.

The legal consequence of obtaining an extension or using the reinstatement procedure is thus the same – the opportunity to expedite prosecution of the application is lost. The government fee is also the same.

An extension or abandonment and reinstatement will not result in a loss of expedited examination status if the examination has been expedited through the Patent Prosecution Highway procedure.

Privacy issues

Canadian patent applications are open to inspection by the public 18 months after 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 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 applicants are entitled to reinstatement as a matter of right and no reasons need be provided.

Practical considerations

The extension procedure is uncertain and impractical because of:

• 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.

It is difficult for applicants to plan effectively if it is unclear whether an extension will be granted.

A more efficient and practical approach may be to dispense entirely with an extension application and use the reinstatement procedure if it is impossible to meet the original deadline to respond to an examiner's report. 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 (ie, loss of the possibility to expedite examination). Moreover, the reinstatement procedure avoids the requirement to go on the public record with an explanation as to why the extension is needed.

However, the reinstatement procedure also has disadvantages. 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 helpful if the original deadline was missed through error. However, 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.

For further information on this topic please contact David Schwartz at Smart & Biggar by telephone (+1 613 232 2486) or email (deschwartz@smartbiggar.ca). The Smart & Biggar website can be accessed at www.smartbiggar.ca.

Endnotes

(1) Sections 86(2) and 131(1) of the Patent Rules.

(2) Section 3(2) of the Patent Rules.

(3) As of 1 January 2021, the government fee was C$204. 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) Manual of Patent Office Practice, Section 2.03.03e.

(5) Extensions of Time, Canadian Intellectual Property Office.

(6) Client Service Standards, Canadian Intellectual Property Office.