Since there is no requirement for “due care” in the current Canadian patent law, CIPO is more inclined to adopt WIPO’s guidance on due care in the context of restoration of priority in current practice.
Successful rights restoration requests include the following methods:
A. Isolated human errors caused by experienced, carefully selected, trained and well-supervised administrative staff, such as:
- When paying the maintenance fee, the application number or patent number was entered incorrectly.
- The maintenance fee was incorrectly marked as "paid" and the Late Notice and late payment deadline were not correctly recorded.
- Senior process personnel cited maintenance fees and late fees as mistakes made during the training experience for new employees.
B. Computer, software or website problems that prevent payment, such as:
- CIPO's online payment system is down or inaccessible.
- CIPO's online payment system made an unexpected request to pay fees through another payment method.
C． Failure to pay maintenance fees or late fees due to reasons beyond the control of the applicant or patentee, such as:
- The patentee's payment attempts were unknowingly blocked by the credit card company due to suspected fraudulent activity.
- The applicant is legally prohibited from making decisions relating to spending money during the relevant time.
- The applicant was imprisoned.
- Because of war and government sanctions, patentee representatives had to close foreign offices.
If the deadline is missed for a variety of reasons, a substantial amount of evidence may be required to be provided to CIPO. The applicant or patentee will need to state that the party has worked hard at every step and all relevant aspects of the payment process and has a reliable system. , and assign appropriate personnel to handle related tasks. In fact, in most cases, the loss of rights caused by only one reason is not recognized by CIPO, for example:
- Lack of understanding of requirements and deadlines for paying maintenance fees and late fees.
- lack of funds.
A particularly obvious case is that many applicants or patentees cited COVID-19 as the cause of invalidation. However, CIPO believes that even if COVID-19 has a very obvious force majeure factor, this is not enough to be a reason for failure to adapt. CIPO will usually adopt a more stringent approach to evaluate requests for restoration of rights based on COVID-19. Whether the applicant or the patentee has taken due care.
