mercredi, juin 23, 2010

Canada: New restrictions on time extensions in trademark and industrial design prosecution

New restrictions on time extensions in trademark and industrial design prosecution

Contributed by Smart & Biggar/Fetherstonhaugh


As of March 11 2010, the availability of time extensions for responding to the examiner's reports in connection with pending trademark and industrial design applications has become more limited. Unless there are circumstances that are beyond the applicant's control or which are otherwise exceptional to justify a further extension, only one extension of six months will be granted during prosecution. If following the expiry of the extension the applicant fails to reply, the application will be considered abandoned.

Examples of exceptional circumstances that could justify an additional extension beyond the first six-month extension include a recent change in the application (because of an assignment) or illness, an accident, death, bankruptcy or other serious and unforeseen circumstances.

This is a significant change from previous practice and will require trademark and industrial design applicants to make decisions and move forward with handling the examiner's objections and other requirements in a more timely manner.

For further information on this topic please contact Elliott S Simcoe at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486), fax (+1 613 232 8440) or email (esimcoe@smart-biggar.ca).