CIPO Consultation on Extensions of Time in Trade-mark Prosecution; Comments Due October 30

The Canadian Intellectual Property Office (CIPO) is seeking comments on a proposed Practice Notice regarding extensions of time to respond to trade-mark office actions. The deadline for comments is October 30.

Under the proposed Practice Notice:

  • The Trade-marks Office (TMO) will generally grant only one (1) extension of time, up to a maximum of six (6) months, to respond to an office action if the request is justified. No further requests for extensions of time will generally be considered. The Practice Notice does not clarify what constitutes sufficient justification for an extension.
  • If an applicant is requesting an extension of time 12 months after the office action’s date, the TMO will require significant substantive reason(s) which clearly justify a further extension of time and which particularize why it is not yet possible to fully respond to the office action. The Practice Notice is silent on what “significant substantive reasons” will justify a further extension of time.
  • If the applicant has not filed a proper office action response within the aforementioned 12 month period or if the reasons provided in an extension request do not justify a further extension of time, the application will default.

This new proposed Practice Notice, if enacted in its present form, would be a significant change in Canadian practice. In the past, multiple extensions of time to respond to Canadian trade-mark office actions have been  routinely granted, provided reasons are provided in the extension request. Those reasons have ranged from awaiting instructions from the applicant or instructing counsel to awaiting the outcome of related opposition or expungement proceedings which will determine what office action response (if any) is filed.

Details on where comments on the proposed Practice Notice can be sent are provided at the bottom of this page.

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