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Extensions of Time – A Change of Approach in Canada

The Canadian Patent Office has recently clarified its approach concerning requests for extensions of time before the office.

In Canada, it is possible to obtain extensions of time for response to communications such as examination reports. Extensions are available provided a request is filed before the expiry of the existing deadline, the necessary fee is paid and the circumstances justify the requested extension.

Previously, a lenient approach was taken to the third of these criteria, with a simple statement indicating that a party required more time to respond proving sufficient. However, the Canadian Patent Office is now taking a tougher approach.

While the Canadian Patent Office does not offer specific guidelines regarding circumstances that justify the need for an extension, any request for an extension should be accompanied by an explanation specific to the patent application in question and should provide sufficient information for an informed decision to be taken.

The Canadian Patent Office has helpfully indicated that the following circumstances are a non-exhaustive list of scenarios where an extension is likely to be granted.

  • A recent transfer of the rights to the application
  • A recent change in the appointed representative
  • Any health issues impacting the applicant or representative
  • Specific logistical issues slowing communication between the applicant and the representative
  • Specific additional efforts that an applicant must take to comply with an outstanding examination report
  • Any other unforeseen issues

Any extension request that does not include an explanation as to its necessity will be refused, although an applicant may subsequently provide a supplemental explanation before the expiry of the existing deadline to obtain an extension.

If a request for extension of time is refused and the deadline has expired, the patent application may be considered abandoned. An application that is considered abandoned may be reinstated, with the reinstatement process before the Canadian Patent Office unaffected by these changes.

If you have any questions, please contact Thomas Gibb, Director, Patents – thomas.gibb@murgitroyd.com