April 21, 2020 — As with many government offices and legal institutions across the country, COVID-19, and the resulting workplace shifts, have had an impact on the processing times and delays for procedures passing through the Canadian Intellectual Property Office [CIPO]. Below we will provide a clear overview of the changes to take note of, as well as some interesting COVID-19 related news, that is worth keeping track of.

Changes to Processing Times, Office Hours, and Delays

• As of March 16, the four regional CIPO offices in Montreal, Toronto, Edmonton, and Vancouver have stopped accepting correspondence. This leaves only the regional office in Ottawa, and the main CIPO office in Gatineau, open to receiving mail.
• As of March 27, any statutory deadlines relating to patents, trademarks, and industrial design patents that would have fallen between March 16, 2020 and April 30 now have the deadline of the first business day following April 30. It is important to note that this delay may be extended as the situation surrounding COVID-19 in Canada develops.
• As of March 30, any deadlines set under the Trademarks Act, Trademarks Regulations or by the Registrar for proceedings with the Trademarks Opposition Board that would have fallen between March 16 and April 30, 2020 now fall on May 1, 2020. Further, disruptions caused by COVID-19 have been recognised by the government as sufficient circumstances to obtain an extension on deadlines already set. It is important to note that this delay may be extended as the situation surrounding COVID-19 in Canada develops.
• The CIPO Client Services Centre has ceased providing service, and plans to resume on April 30. Any requests sent to CIPO for documents will be processed in the order they were received (including those sent during the suspension) once services resume. It is therefore valuable to continue to send requests during the suspension to maintain one’s position in the processing order.
• CIPO is strongly encouraging everyone to continue to use their online services wherever possible. Specifically, applications for or amendments to trademarks can be done online in the regular fashion.

Government Powers to Use Patented Inventions

On March 25, Bill C-13, An Act respecting certain measures in response to COVID-19, received Royal Assent. This bill gave, among other things, the government the power to use patented inventions useful for fighting COVID-19 without them being liable for patent infringement.

This power, which extends until September 30, 2020, allows the Minister of Health to ask the Commissioner to authorize the government to use a patented invention, and to notify the patent owner as well as set any remuneration they may be entitled to. The right lasts maximum one year, or less if the invention is no longer of use to the government.

COVID Trademark Applications, Five and Counting?

As of April 20, there are five formalized applications for trademarks in Canada containing the word “COVID” (and none for “coronavirus”). In comparison, there are 98 active applications using “COVID” in the United States, and 37 using “coronavirus”. Of the Canadian applications, one of these is for “Antimicrobial and antiviral preparations for sanitizing display screens of computers and mobile phones” and two others, both registered by the same law firm, are for medical services and vaccines, respectively.

Since the changes to the Trademarks Act in June of last year, it is no longer necessary to show “use” when applying for the registration of a trademark (for more about the changes to the act, check out our newsletter on the topic). This means that while a vaccine against COVID-19 is still at least many months away, someone legitimately planning on producing such a vaccine could hypothetically register the trademark now. The registrability of these trademarks is dubious however, since the registrant needs to demonstrate that the mark is not descriptive and is distinctive in some way. All five of the proposed trademarks filed in 2003 that incorporated the term “SARS” were ultimately abandoned.

As always, if you have any questions regarding any of the above, our Intellectual Property team is here to help you navigate this exceptional time. Please don’t hesitate to reach out to Richard Uditsky or Sydney Warshaw if you want to know more, or for any of your other intellectual property needs.