Prof David Vaver is a Professor of Intellectual Property Law at Osgoode Hall Law School and Emeritus Professor of Intellectual Property & Information Technology Law at University of Oxford. This is an abstract from Prof Vaver's recently published article which will also appear in the Intellectual Property Journal. You can read the full article either on or .

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As current and prospective intellectual property (IP) owners around the world continue to find themselves in a difficult situation as a result of the COVID-19 outbreak, many may be challenged to adhere to the deadlines and procedures that must be followed in order to protect their IP rights. Many IP offices around the world, including the Canadian Intellectual Property Office (CIPO), have responded to these challenges and demonstrated flexibility in order to enable IP owners to comply. A full list of the measures adopted by various international IP offices can be found on the World Intellectual Property Organization’s (WIPO) . Information on changes to services and operations, international filings, and frequently asked questions on the effects of COVID-19 on patents, trademarks and industrial designs are available on the page.

Below you will find a brief explanation of some of the modified procedures for patent applicants in Canada. However, it is important to note that given the fact-specific nature of patent prosecution, the information gathered here, and provided on , should not be considered legally binding. ��More information related to and are available on CIPO’s website. In all instances, applicants should review the Patent Rules, and/or consult with a registered patent agent for more information relevant to their specific cases.

If applicants need additional time to act beyond the designated period, they may be able to request an extension of time prior to the expiry of a time limit under subsection 3(1) of the However, some deadlines cannot be extended, and others have prescribed limits to extensions of times. It is essential to review the Patent Rules or consult with a for more information.

Information Related to the Patent Cooperation Treaty (PCT) deadlines:

It is also important to note that extensions of time periods under subsection 78(1) of the Patent Act in relation to designated days under subsection 78(2) have no effect on international procedures under the Patent Cooperation Treaty (PCT). These time periods are not extended as a result of designated days under subsection 78(2). For information regarding filing a PCT international application, and possible extensions of time, it is advised that applicants consult WIPO and the March 2020 and April 2020 editions of the . This newsletter contains a section with entitled Practical Advice about possible remedies in the case of missed time limits where the PCT Office with which an action needs to be taken is exceptionally closed, or if the applicant’s or agent’s company/firm is forced to close temporarily.

If applicants have disclosed their invention to the public before filing a patent application in Canada, and the last day of the 12-month grace period falls on one of the designated days, CIPO encourages applicants make every effort to file a patent application in Canada before the expiry of the grace period either electronically, in person, by fax or by mail. CIPO also strongly cautions applicants from relying on subsection 78(1) of the to extend the grace period and recommends consulting a registered patent agent for advice on this issue.

Legislation Takes Precedence and Consult Your IP Agent:

If there are inconsistencies between the information provided here and/or on CIPO’s website and the applicable legislation, the legislation must be followed. The information provided reflects CIPO’s interpretation of the legislation and should not be relied upon for legal purposes or business decisions. CIPO recommends you consult a registered patent agent who can advise you on your particular situation.

Written by the Canadian Intellectual Property Office (CIPO)

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According to some, patent applications are declining in the US due to a combination of the following factors: (a) a reduction in potential returns to patent litigation; (b) a decrease in cash-on-hand due to the recession; (c) a decline in foreign investment due to the strong US dollar; and (d) a more stringent interpretation of patentability standards by the USPTO, making it more difficult to obtain a useful patent.�� However, to put the decline in perspective,�� by�� indicates that on a macro time scale, the recent decrease in patent applications is merely a blip in the steady growth that began in 1945.�� According to the study, which focused on USPTO filings, two patents were issued per 10 000 people in 1945, peaking at approximately six patents per 10 000 people in 2002, and falling to just above five patents per 10 000 people at the end of 2007.

In addition, applications were down in Korea by nine percent and were down in France by five percent.�� The United Kingdom, Denmark and Australia experienced similar declines in applications and have even laid-off patent office staff.�� Furthermore, the World Intellectual Property Organization reported that the filing of PCT applications is down five percent relative to last year at this time.

Whether the recent decrease in patent filings will have a positive or negative effect on innovation remains an open question.�� According to��, "patents have become a minefield that inhibit innovation."�� For example, "many software patents are of poor quality and are difficult to interpret...[and are] made worse by the fact that patent boundaries are often vague: a patent can cover an invention the patent holder never conceived."�� In addition, they postulate that a greater number of patent applications do not necessarily translate into higher quality issued patents.�� According to��:

"Considering the large number of bad patents that got through over the years, and the resulting flood of applications from others hoping to strike it rich by gaining monopolies on obvious ideas, it should be seen as a good thing that applications are finally dropping. If anything, we should be wondering why they're not dropping more. Patents were supposed to be given out in the rarest of circumstances, when other incentives weren't enough. Somewhere along the way, those who controlled the patent system seemed to forget this and lose their way."

However, many others argue that the current decrease in application filings is a crisis.�� They contend that since the USPTO is funded by application fees, the decrease threatens the financial security of the USPTO, and thus, the entire US patent system.�� Further, they argue that obtaining a patent can be a��.�� This is because start-ups can use their patents to attract investors and protect their technology from larger companies.

As we��, history suggests that the number of patent applications will increase.�� However, whether this increase will translate into a greater number of high-quality inventions remains to be seen.

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