Bobby Leung and Wael Louis Nackasha discuss amendments to the Manual of Patent Office Practice
During prosecution of a patent application, issues may be raised that require a response from the applicant within a prescribed time limit. For certain due dates as specified in the Patent Act and Patent Rules, the applicant may submit a request for an extension of time to provide their response.
The Commissioner of Patents has authority under subsection 3(1) of the Patent Rules to grant extensions of time for said due dates, “if the Commissioner considers that the circumstances justify the extension.” The request for extension must be filed on or before the due date, with a fee.
Submission of extension of time requests have become more frequent, in part, because of the amendments to the Patent Act and Patent Rules in October of 2019. The amendments permitted a request for an extension of time to be submitted to extend the time limit for responding to an Examiner’s Requisition from four months to six months from the date of the Examiner’s Requisition.
Historically, requesting an extension was merely a formality and CIPO’s policy for granting an extension of time was relatively lenient. CIPO would grant extensions based on a simple, often boilerplate justification, such as “Applicant requires more time to consider the issues.” No evidence or affidavit was required when requesting an extension of time.
Recent amendments to the Manual of Patent Office Practice — which, although not law, sets out CIPO’s interpretation of the law — change this policy significantly.
In particular, s. 2.03.03e has been amended from requiring the applicant to provide “a simple justification that explains why an extension of time is being requested” to “a justification, rationale, or description of circumstances” that will satisfy CIPO that the extension of time should be granted. Amended s. 2.03.03e further states that CIPO “will consider reasonable and detailed explanations as to why the Applicant was incapable of fulfilling prescribed requirements within the prescribed time.” Section 2.03.03e was also amended to emphasize that the grant of an extension is discretionary and not as of right. It is noted that the use of the word “incapable” in particular appears to create a heavy burden.
At the time of writing, and further acknowledged in amended s. 2.03.03e, CIPO has not provided specific guidelines as to the content of the justification, rationale or description of circumstances that would be considered satisfactory or reasonable for an extension of time to be granted. As such, even if the applicant provides a justification, rationale or description of circumstances that is believed to explain why the applicant was incapable of providing their response within the prescribed time in the request, it may be possible that CIPO still determines that the provided justification, rationale or description of circumstances is, in fact, unsatisfactory or unreasonable, such that CIPO will refuse to grant the extension. This presents considerable uncertainty for an applicant in determining whether an extension of time will be granted.
If the request is refused, and if time permits — i.e., the time limit for the applicant to provide their response has not expired — subsequent requests for an extension of time for the same action on the same file can be submitted to and will be considered by CIPO.
If the request is refused and if the time limit has expired, then the application will be deemed abandoned. It may be possible to reinstate the application, but in certain circumstances, a showing of due care may be required and third-party rights may arise.
Even if a request is granted, there is now file wrapper estoppel in Canada, and it is not unforeseeable that the reasons provided in a request for an extension may be challenged in litigation.
For actions where abandonment and reinstatement does not require a showing of due care or creation of third-party rights, such as a response to an Examiner’s Requisition, it may, therefore, be more prudent to reinstate an abandoned application, rather than requesting an extension.
Bobby Leung is an associate at Ridout and Maybee LLP in the firm’s Toronto office. His practice is directed toward the creation, acquisition, protection and exploitation of intellectual property rights, in Canada, the U.S. and around the world.
Wael Louis Nackasha is an associate at Ridout & Maybee LLP in the firm’s Toronto office. His practice focuses on patent and trademark prosecution.