Delayed processing at CIPO leading to incorrect abandonment / expiry status on Canadian Patents Database

The Canadian Intellectual Property Office (CIPO) is undergoing a modernization effort to provide a new online portal for patent services that serves as a centralized online platform for filing, tracking and managing patent files.

However, as part of this upgrade, we have noticed a delay in CIPO’s processing of correspondence over the last few months (e.g., timely filed responses to examiner’s requisitions that had a deadline in July). Despite the response being timely, the delay in processing had incorrectly triggered an automatic status shift to “deemed abandoned.” This, understandably, has alarmed some patent applicants.  

CIPO has provided updated guidance in its roadmap on this issue (under “Changes to office processes,” bold emphasis from original, italics and underline mine):

Important: If you have submitted a response or taken the appropriate action on time, the abandonment or expiry status appearing for your application or patent on the Canadian Patents Database (CPD) or in MyCIPO Patents may be incorrect. Please note that the correct status will be shown once we have fully processed your timely submission. Also, if you think a pending correspondence (e.g., revocation or appointment of an agent) is delaying other actions, contact our Client Service Centre with the submission date details. If confirmed, we will prioritize processing of the pending correspondence.

This issue can also impact paying maintenance fees through the CIPO portal as the user interface may not be usable. A workaround approach may be to use the general correspondence form.

CIPO is also updating the CIPO internal backend “grace dates” (not to be confused with grace periods) to allow more time after the due date to process correspondence before the system triggers abandonment or deems patent expiry. CIPO expects this update to reduce the incidents of incorrect abandonment or deemed expiry.

For more information, please contact your IP professional at Norton Rose Fulbright Canada LLP.

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