Canadian Intellectual Property Office – CIPO – oversees the administration and
processing of intellectual property rights applications and registrations in
Canada. Over the last year, CIPO has
both proposed and made a number of revisions to its practices impacting
Canadian IP practitioners and applicants alike.
patent space CIPO has conducted, and continues to conduct, consultations
concerning changes to its Manual of Patent Office Practice and the Patent
Rules. The changes proposed concerning
the Patent Rules are particularly extensive, having originated from suggestions
of the government’s Standing Committee
for the Scrutiny of Regulations.
The changes include the provision of additional guidance respecting
patentable subject matter; the provision of clarity with respect to
administrative aspects of the examination process; alterations to the process for amending
patent applications following rejection; the introduction of safeguards for
applicant interests in the face of a failure to meet procedural requirements;
amendments to disclaimer practice; provisions to more clearly permit the Patent
Appeal Board to deal with defects beyond those contained in a final Action; and
general revisions to the language of the Rules and the Manual to add legal
clarity and simplify processes. Many of
the changes being introduced help bring Canada’s processes and procedures more in line
with those of the Patent Law Treaty, an international treaty to which Canada
has not yet acceded, though it is considering doing so.
has also commenced investigations into extending its Patent Prosecution Highway
(PPH) initiative. The PPH program was
introduced between CIPO and its US counterparts in January 2008, and has served
to accelerate the examination of local patent applications where examination
has already occurred in the US. Though
the investigations are in a fledgling stage, current prospects for Canadian PPH
extension include Japan, Denmark, and Korea.
trade-mark space, CIPO has also completed consultations and implemented various
amendments, addressing such matters as extending the time for responses to
Examiner objections (from 4 months to 6 months); ceasing the practice of
alerting applicants to confusing co-pending applications that have a later entitlement
date; and amending the processes related to having a transfer of trade-mark
rights recognized by the office.
CIPO has implemented significant changes in trade-mark opposition proceedings,
where it undertook wholesale revision of the opposition proceeding rules,
purporting to streamline the opposition process by strictly limiting the
opportunities to obtain extensions of time in the course of the proceeding
while at the same time introducing a ‘cooling off period’ to permit parties to
attempt to negotiate to their dispute.
The concept of a cooling off period will be quire well-known to
practitioners outside of Canada, where it has long been a mainstay of
trade-mark opposition proceedings.
overhauled its procedures relating to summary expungement proceedings, where it
has similarly attempted to streamline proceedings by severely limiting the
extensions of time available to the parties in nearly all stages in a summary
interestingly—in a change that would impact patent and trade-mark filers
together with those in the copyright and integrated circuit topography
spaces—CIPO is considering amending its various regulations to permit the
filing of documents and the acquisition of filing dates on days CIPO is not
normally open for business: Saturdays, Sundays, and holidays. Though this proposed amendment would allow
parties to make a filing and obtain a filing date on any day of the year, CIPO
has no plans to amend its dies non
practice: as such, a local or international deadline that falls on a weekend or
holiday would still be met if the Canadian filing were made on the next day
CIPO was open for regular business.
Like some of the other changes discussed above, this proposed change is
designed to bring CIPO practices in line with those of the regulatory agencies
of other jurisdictions, including the United States and Australia. A decision on the possible change is
expected some time later this year.
Canadian practitioners clearly need to understand and keep abreast of all of
these changes, many of the changes—and particularly those concerning trade-mark
opposition proceedings and those indicating a more conservative approach to subject-matter criteria for patentability—will also impact foreign
counsel who are often managing proceedings in Canada in the midst of a larger
global prosecution and maintenance strategy.
In such circumstances, advice should be sought from Canadian counsel in
order to understand how the changes may impact a particular case.