Limiting Extensions of Time in Examination


Further to an earlier post, the Canadian Intellectual Property Office (“CIPO”)  has announced a change in practice with respect to the granting of extensions of time in examination.  This new Practice Notice will come into effect on March 11, 2010.

Currently, responses to examiner’s reports are due within six months of the date of issuance of the report.  Under the changed practice, CIPO will grant an applicant one extension of time up to a maximum of six months to respond to the examiner’s report, “if the request is justified”.

Once 12 months from the date of the examiner’s initial report has expired, CIPO will require the applicant to demonstrate exceptional circumstances to justify why it is not possible to respond to all objections raised or requests made in the examiner’s report.

CIPO has provided a list of examples of what could constitute an exceptional circumstance to justify a further extension of time, as follows:

  • recent change in trade-mark agent for the applicant
  • circumstance beyond the control of the person concerned (e.g. illness, death, bankruptcy or other serious or unforeseen circumstances)
  • recent assignment of the trade-mark
  • certified copy of the corresponding foreign registration (for applications including a claim of registration and use abroad) is not available as the foreign application has not issued to registration
  • if a cited co-pending and confusing application is the subject of an opposition proceeding initiated by the applicant or if the application is going to be abandoned with the next two months
  • if the cited registered mark is subject to a summary expungement proceeding (under Section 45 of the Trade-marks Act) initiated by the applicant
  • if the applicant is negotiating for the consent from the holder of a cited official mark

It appears from the text of the practice notice that this list is illustrative and not exhaustive.

While this streamlining should result in faster prosecution of trade-mark applications, the shortened time frames will mean that applicants and their agents must act quickly to prepare full responses to examiner’s reports.

However, the practice notice perhaps raises more issues than it answers.  For example:

  • When seeking the first six month request, CIPO indicates it will be granted where “the request is justified” – yet it is not clear what will constitute a justifiable request under this new regime.
  • CIPO has not indicated what time frame it considers as “recent”  (with respect to a change in agent or an assignment of mark).
  • Section 45 proceedings are often initiated by agents (on behalf of applicants) rather than the applicant itself, in order to shield the identity of the agent’s client.  However, it remains unclear if CIPO will grant a further extension on the above criteria if the Section 45 proceeding does not list the applicant as the requesting party.
  • It is not clear if CIPO will require “proof” of negotiations between an applicant and the holder of an official mark for consent to the registration of the mark.
  • There seems to be an element of subjectivity raised by the wording  “could amount to an exceptional circumstance”.

As well, examiner’s reports are still paper-based and delivered by postal mail.  If streamlining is indeed the goal, streamlining the method of delivery of examiner’s report  to include email would aid in the process.

Time will tell if this new practice will result in more effective prosecution of applications or if this “streamlining” will cause more problems than it is intended to remedy.