There has been some uncertainty surrounding the Canadian Intellectual Property Office's (CIPO) practices related to granting extensions of time to respond to an office action on a patent application. Typically a response to an office action will be due 4 months from the date of the office action. Section 3(1) of the Patent Rules empowers the Commissioner of Patents to grant an extension of time where 1) the extension is applied for before the expiry of the time limit to respond to the office action, 2) the required fee is paid, and 3) the circumstances justify the extension.
Initially CIPO was allowing requests on the basis of more time being needed to prepare a response. This came to an abrupt end late last year without warning. CIPO has now provided some guidance on the circumstances that may justify an extension. However, there remains ambiguity regarding whether a particular explanation required to justify an extension will be accepted. CIPO is clearer on what will not be accepted: "a request that includes 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 will also be refused."
Where a request is refused after the expiry of the time limit for response, the application may be deemed abandoned. An application deemed to be abandoned for failure to respond to an office action may be reinstated as of right (i.e. no reason necessary) within 12 months of the deadline for responding to the office action without triggering third party rights.
Where an extension of time is requested but refused, causing abandonment and the need for reinstatement, an applicant may find themselves paying two government fees, one for the denied extension request and one for reinstatement of the abandoned application in addition to the agent fees for preparing the requests. It appears that a denied extension request will not be refunded. The government fee for requesting a 2 month extension that may be refused is the same as the government fee for reinstating an application within 12 months of the due date of the outstanding office action. As such, with the uncertainty surrounding when extensions of time will be granted, utilizing the reinstatement provisions under sections 73(1) and 73(3) of the Patent Act and section 135 of the Patent Rules may not only be the more certain way to proceed, but also the more cost-effective way to proceed while also providing a certain 12 months of time to respond instead of a possible 2 months. Under the current practice, an extension of time for responding to an office action seems not worth the trouble.
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