Patent Practice Committee Meeting PB/IPIC –

December 3, 2025

Wednesday,

December 3, 2025

• 1:00 – 3:00 p.m.

Hybrid format: videoconference + in person meeting at 50 Victoria Street, Gatineau, Québec, Phase I, 4th floor boardroom.

On this page

• Attendees
• Items
• 1. Introduction
• 2. CIPO updates
  • 2.1 Budget, departmental and CIPO decisions
  • 2.2 Additional Term
  • 2.3 Softphones
  • 2.4 CRM
• 3. Digital Services CIPO Website
  • 3.1 "Override" option when submitting NPEs
  • 3.2 Preferred workaround when a translation is filed?
  • 3.3 Issues uploading sequence listings
  • 3.4 One document to cover multiple service requests
• 4. Operations - Quality
  • 4.1 Delays in issuing refunds?
  • 4.2 Refresher on Office handling of inquiries concerning outgoing correspondence that was not received
  • 4.3 CNOAs indicate that excess claim fee is $0 even when there are excess claim fees to be paid
  • 4.4 Providing complete information regarding final fees to be paid when notice of allowance is incorrect
  • 4.5 Furnishing corrected WO publications
  • 4.6 Failure to enter Art 19/34 amendments
  • 4.7 Retrieval of PCT application documents when a partial translation is provided
• 5. Examination - Quality
  • 5.1 Training issues
  • 5.2 Failure to identify which references apply in prior art defect
  • 5.3 Citation to the Patent Act or Rules to identify a legal basis for a defect
  • 5.4 Examiner interview summaries and statements in reports when agent unreachable
  • 5.5 Examiner reports should not include references to interview attempts
  • 5.6 Addition of further issues in interview summary
• 6. Administrative Policy (Agent-related matters)
  • 6.1 Updated agent data from CPATA
• 7. Additional Items
• 8. Conclusions
• Acronyms:

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Attendees

Co-chairs: Virginie Ethier and Jenna Wilson

Members: Jeff Leuschner, Jean-Charles Grégoire, Jennifer Marles, Scott Vasudev, Jeffrey Orser, Serge Meunier

Guests: Cecilia Alperin, Marie-Claude Gagnon

Secretariat: Helena Forbes

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Items

1. Introduction

CIPO welcomed everyone to this hybrid meeting.

2. CIPO updates

2.1 Budget, departmental and CIPO decisions

CIPO thanked IPIC for their patience while this meeting was delayed due to the budget period.

The Office acknowledged that they had received several inquiries about whether there will be impacts from the reductions in federal public service. CIPO noted that it is a fee-generating entity with a solid production model, and it bases their recruitment and retention on this. Due to these facts, CIPO is not subject to the government's comprehensive expenditure review. However, there may be challenges relating to the enabling teams (e.g. contractors for NGP IT) that provide support being subject to the comprehensive expenditure review. The Office will make sure that any memorandums of understanding are extremely clear in relation to these teams, so that the organization is minimally impacted. Government reductions in other departments may provide recruitment opportunities for the Office. CIPO will also closely monitor the impact of early retirement initiatives.

CIPO also recognizes that there may be changes to the telework situation for public service employees. However, CIPO notes that due to pre-pandemic exemptions, the telework situation will most likely not change for examiners and analysts.

IPIC thanked CIPO for proactively addressing these items and expressed concerns that slow processing of allowances and grants might be exacerbated by the above items. CIPO replied that the technical issues are not related to government reductions. CIPO further noted that due to their mindfulness of the cyclical processes of government, they have modeling these eventualities, and learned from past events. Based on these models, they have conducted staffing processes proactively, including adding 6 examination cohorts and additional capacity on the operation side.

In relation to the recent Dusome court case, CIPO indicated that while the appeal period is ongoing, they cannot share too much. They noted that the Office is reviewing the decision, and if it is determined that Practice revisions are necessary, changes would likely be incorporated into a Practice Notice, followed by incorporation into MOPOP (including a process soliciting feedback for the changes to MOPOP), bearing in mind any timing conflicts with the release of the SCC decision in Pharmascience v Janssen.

CIPO thanked the PPC members for their feedback given in the informal meeting. CIPO had planned to incorporate that feedback into MOPOP before the Dusome decision was released. CIPO will reinitiate the communication when further MOPOP updates are underway.

2.2 Additional Term

CIPO reported that patents granted on or after

December 2, 2025

would be eligible for Additional Term, and a new Chapter 32 of MOPOP had been accordingly added.

2.3 Softphones

CIPO provided an update on the Telephony Modernization initiative at ISED, in view of Shared Service Canada's change in direction and strategy.

Softphones (VoIP) will become the primary voice service for all ISED employees. The decommission all building fixed lines will start on

January 1, 2026

. The reduction of mobile devices will start in Q1 of the 2026-2027 fiscal year.

Tactically what this means for Agents is that Examiners and Operations Analysts will be allocated new phone numbers, and there will be a transition period where examiner/analyst's phone numbers will be modified on written correspondence.

Section Heads will maintain their mobile device and can continue to be reached through and post the transition.

IPIC asked if the numbers will be updated on Government Electronic Directory Services (GEDS). CIPO confirmed GEDS would be updated.

2.4 CRM

CIPO reported that there will be changes to the online feedback mechanism early in 2026. There will be a new Client Relationship Management (CRM) system, which will allow the Office to streamline operations between the CSC and all business lines in managing enquiries, feedback and escalations. Feedback will serve as driver to identify opportunities for improvement across the Patent Branch.

The current OFM solution received nearly 7400 inquiries in 2024/25. These inquiries will transition to the new CRM system and a Request for Office Error Investigation via myCIPO Patents portal. Of note:

• Requests for file corrections, missing correspondence, fee inquiries, and other functions will be handled via the MyCIPO Patents portal.
• Clients will use the "Request Office Error Investigation" workflow to submit these requests
• Each request will remain linked to the application and processed upon receipt
• Submission confirmation will serve as acknowledgment
• Clients will be responsible for verifying that corrections have been made via the portal or the Canadian Patent Database (CPD). IPIC asked whether these communications would be captured in the application file history. CIPO confirmed this was the case. IPIC then asked if this correspondence could be used for 117.03.12 to provide the statements in order to avoid time being deducted from additional term. CIPO said they would confirm. CIPO noted that this process would aid in providing a broader of view of clients and thus providing improvements from a customer relationship management perspective. By having communication linked with an application number, a more holistic view would be obtained, and thus, the system would provide more efficient, proactive, and organized communication.

IPIC observed that currently OFM are perceived to get a quick response and resolution. CIPO replied that CRM will be incorporated into the workflows, so response and resolution will remain efficient. CRM will also provide efficiencies for the analyst, and the correspondence will remain on the file. IPIC also raised concerns that currently, emailing provides an opportunity for conversation between analysts and agents, such that agents can clarify demands without submitting additional submissions for the same issue. CIPO thanked IPIC for this feedback.

IPIC also noted that currently, the email exchange is with the submitter of the OFM. IPIC asked if the email would now be addressed to the submitter or to the authorized email correspondence. CIPO replied that this was yet to be determined. CIPO noted that the aim was to collaborate and achieve a harmonized approach that does not compromise promptness or responsiveness.

For cases that fall under two Office workflows such as a request to investigate Office errors, in combination with a notice withdrawal, IPIC asked if two submissions will be necessary in order to have both things happen and avoid a deduction of Additional Term? CIPO replied that it would be similar to how OFMs currently work. IPIC asked whether from an Office perspective, it will matter if the request is submitted through CRM or through a letter on MyCIPO patents to get an erroneous notice corrected. CIPO replied that if it a letter is submitted through MyCIPO patents, it is routed directly to the analyst. CIPO continued that the CRM will be mainly managed by the CSC and will direct complaints appropriately with an efficient routing program. However, CIPO indicated they would take this input into account.

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3. Digital Services CIPO Website

3.1 "Override" option when submitting NPEs

Issue:

IPIC noted when a PCT application is flagged by WIPO as being in English or French, MyCIPO Patents will not permit the applicant to upload a translation. However, WIPO is not always correct; an agent encountered a case where WIPO erroneously marked a foreign-language application as English when it was not. Is it possible to modify MyCIPO Patents to allow the user to upload a "translation" document in any event, rather than use a workaround?

CIPO's response:

CIPO will consider this item, although it is not a priority task.

3.2 Preferred workaround when a translation is filed?

Issue:

IPIC indicated that In addition to incidents where WIPO erroneously flags an application as English or French, it is sometimes the case that an applicant of a French-language PCT application wishes to prosecute the Canadian application in English, and files a translation. There appear to be a number of ways to file a translation when MyCIPO Patents does not permit it:

• Submit the NPE by GenCorr (or fax/physical delivery) with a translation
• Submit the NPE by MyCIPO Patents, but provide the translation as "Additional Information"
• Submit the (French language) NPE by any means, and file the English translation as a voluntary amendment Does the Office have a preference as to how this should be done?

A related policy question: in the case where an applicant of a French-language PCT application wishes to prosecute the Canadian national phase application in English: the Rules do not contemplate a French-English translation since these are both official languages. When an applicant switches languages in this manner, is the switch treated legally as a voluntary amendment or a translation?

CIPO's response:

CIPO noted that the Office had had cases where the official language had been switched during prosecution, but in the case in question, CIPO indicated that this would be considered more of an amendment than a translation. The provisions on translation are limited to when a translation is required because the language of the application is not English or French. Thus, in filing an amendment, the applicant would have to adhere to the new matter provisions but would not be affected by the translations provisions.

Broader discussion:

IPIC asked if there is a preferred way to handle submissions of translations? CIPO replied that for WIPO errors, it would be best to provide the translation in the additional information document with a cover letter explaining why it is being included. This will alert the analysts who can then correct it in the database.

CIPO continued that otherwise, if the applicant wishes to switch between English and French, using an amendment would be preferred. To streamline the process at national phase entry, CIPO recommended filing the application, then following up with a voluntary amendment to allow it to proceed into the correct workflow.

IPIC mentioned that an Information Officer at the CSC had recommended using a form called Miscellaneous Translation Voluntary; however, CIPO confirmed that using an amendment was preferred. IPIC asked if it would be possible to publish the guidance around MyCIPO workarounds and/or the list of current issues.

3.3 Issues uploading sequence listings

Issue:

IPIC indicated There is a recent report of an agent being unable to upload a sequence listing in response to a compliance notice. This issue is not listed on the Updates and Solutions webpage. Is this a new issue?

CIPO's response:

CIPO indicated that this is not a common issue on the portal and encountering instances should be reported to the CIPO Client Service Centre.

CIPO noted that as both of the application numbers stem from the same firm, it appears to be a very isolated issue. CIPO recommended the following procedures that when a SL is submitted post-filing:

• In response to a notice – applicants should use SR – Response to other Office Communication
• If not in Response to an Office communication – applicants should submit through MISC or Addition of Missing parts Service Requests

Broader discussion:

IPIC asked if, for any documents requiring a response to an Office Communication, it would be possible to indicate the correct workflow in MyCIPO Patents to choose. CIPO replied that, at the moment while things are still in flux, it may not be feasible; however, in the future, when things are more stable, it might be possible, either in templates or in MOPOP.

3.4 One document to cover multiple service requests

Issue:

IPIC indicated they would like clear, published guidance concerning the use of a single document to support multiple service requests submitted via MyCIPO Patents

In one instance, an agent filed a divisional application, in which the claims were included in the same document as other application parts.

MyCIPO Patents generated a warning, but the submission was accepted, and a receipt was issued. However, the agent was then contacted and told to refile the divisional application with the claims in a separate document in order to have the divisional status recognized.

IPIC asked why should the applicant be forced to refile the application? The Office received the claims, and the application met the legal requirements for a divisional application.

IPIC maintained that if this is not acceptable, the MyCIPO Patents should not permit the submission to be made, and not simply display a warning message. While a MyCIPO Patents document type is defined for claims, it is not clear from the User Guide that the claims must be submitted in a separate document to be recognized as such when the filing is processed.

Similar confusion has arisen in connection with the submission of a request for examination together with a voluntary amendment and request for early lay-open, when supported by a single letter. In one case an agent was told that the early lay-open request should be in a separate letter. Again, while there is a distinct document type for this purpose, it is not clear that a submission must use every single applicable document type for a submission to be accepted.

While the Commissioner is entitled to define administrative policies concerning electronic submissions, those policies need to be clear, logical, and communicated to the public.

CIPO's response:

CIPO confirmed that they had noted this as a wishlist item. IPIC indicated that this was a one-off situation, and there had been a miscommunication. The isolated issue has been resolved. However, IPIC suggested that there might be a need for some education around what happens when a request goes into the wrong channel. CIPO indicated there could be delays in cases like this, but the Office should eventually send it to the correct workflow if the request is clear. The Office acknowledged the request for further clarification and refinement related to administrative policies concerning electronic submissions.

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4. Operations - Quality

4.1 Delays in issuing refunds?

Issue:

IPIC indicated that there are reports of delays in responding to requests for refunds for overpayments; in one case, the agent has not received a response to a request made over a year ago, and the agent says they have been following up regularly. Are there delays in the refund process?

CIPO's response:

CIPO replied that yes, there are delays; however refunds are occurring: refunds are processes that require both patent operations as well as CIPO finance resources. Additional factors outside of NGP, in additional to NGP, have impacted the velocity of refunds. Thus, the velocities of refunds are not at pre-NGP level.

For the particular application in question related to a case, where as a small entity, they had paid the regular entity size fee. CIPO indicated they would follow up on an estimate time for resolution.

Broader discussion:

IPIC asked if there is an external deadline for remissions. CIPO replied that yes, anything processed in the current fiscal year (

April 1, 2025

-

March 30, 2026

) would need to be remitted by

June 30, 2026

. Both remissions and refunds are currently occurring based on service standards, and they are processed by the same team members. Thus, there might be a shift to processing more remissions than refunds as this deadline nears.

4.2 Refresher on Office handling of inquiries concerning outgoing correspondence that was not received

Issue:

IPIC indicated that from discussions a few years ago, their understanding was that if it was discovered that outgoing email correspondence (e.g., a Commissioner's notice or an examiner's report) was apparently generated but not received by the agent, IPIC could contact CSC and inquire, and the Office would check the sent folders to confirm that the correspondence was sent. If it was determined that the Office had actually sent the email, the agent would be advised to file an affidavit to have the correspondence withdrawn, but if it was discovered that the Office had not actually sent the email, the Office would take corrective action without requiring the agent to provide an affidavit.

IPIC asked if this was still correct? Agents have reported instances where (1) the Office confirmed the email was not sent, but then (mistakenly) told the agent to submit an affidavit; and (2) the agent contacted CSC, and the Information Officer said that because the document had a date, it must have been sent (but the fact that there is a date does not mean it was actually sent).

IPIC then asked, if this procedure is still correct, will the Office include information about this procedure in MOPOP?

CIPO's response:

CIPO described the current Practice of allegations of missing communication from the patent office or the Commissioner of Patents.

Agents should submit a formal communication on the application/patent in question to the office using one of the official means of communication and follow the process outlined in section 2.02.09b of MOPOP (Practice for allegations of missing communications from the Patent Office or the Commissioner of Patents).

In the rare case when the applicant, patentee or other person alleges that a written communication from the Office was not received at the postal or email address to which the communication was addressed, the Office will conduct an internal review of its records to ensure that correspondent information originating from a compliant request by the default correspondent has been accurately recorded coincident or prior to the sending of the missing communication. That is, the Office will ensure that the correspondence information originating from a compliant request has been accurately recorded.

There are 2 possible scenarios that would result from the office's internal review:

A- If the Office determines that an error or delay in its record keeping in relation to the address on file resulted in the missing communication, the Office will withdraw the communication and issue it again with a new due date.

B- If the Office establishes that the communication was sent to the applicant's correct recorded address, it will consider withdrawing the communication if an affidavit or statutory declaration containing evidence is submitted in support of the allegation.

The practice for allegations of missing communication from an external client to the patent office of the Commissioner of Patents is clearly described in MOPOP section 2.02.09(c)

If upon review of the affidavit or statutory declaration, the Office is satisfied that the communication was not received at the postal or email address to which the communication was addressed, the Office will withdraw the communication and issue it again with a new date. The Office recommends that the affidavit or statutory declaration contain information about the person's record keeping systems and copies of the relevant records (e.g. mailroom or email docketing records) to demonstrate that the communication was not received.

If the Office is not satisfied, it will inform the person by letter and the Office will consider the communication to have been received.

Broader discussion:

IPIC noted that this issue may now be moot, as in the future it will be directed to MyCIPO. The current issue is that sometimes officers will assume that because a document is dated, it must have been sent. IPIC asked if it was possible to have an informal mechanism to check whether it was indeed sent? IPIC noted that by providing a screenshot of the sent folder, the issue can be easily resolved. IPIC further stated that the current affidavit process is onerous and burdensome. CIPO noted they had worked through issues with one firm in which the firm was accidentally filtering out the Office's correspondence; however, CIPO acknowledged the need to do a complete and thorough investigation in these cases. IPIC asked whether the more formal CRM process would allow for the current dialogue in which agents could simply ask CSC information officers to check for screenshots in these cases. CIPO suggested that a checklist might be added for staff, and mechanisms built in to communicate the outcome of these actions to agents. CIPO further noted that, from line of sight of operation and IT teams, the CRM process will allow the Office to align these processes and make sure the knowledge is transferred to all shareholders in order to better align all teams' actions.

4.3 CNOAs indicate that excess claim fee is $0 even when there are excess claim fees to be paid

Issue:

IPIC indicated that they have learned that there is a known bug that conditional notices of allowance will indicate that excess claim fees are $0, even when there are excess claim fees owing. Currently, this bug does not appear on the Updates and Solutions page.

Given that the Office knows that this is an error, IPIC believes that a courtesy letter should automatically be sent along with every affected CNOA, advising the applicant of the correct fee to be paid. The Office should not wait to be prompted by the applicant to send a courtesy letter clarifying the fee to be paid.

CIPO's response:

CIPO confirmed this was a one-off case, not a known issue. This is not indicative of a systematic issue, but appears to be human error.

4.4 Providing complete information regarding final fees to be paid when notice of allowance is incorrect

Issue:

IPIC indicated that they understand that the Office's policy is that a corrected notice of allowance (or conditional notice of allowance) is not be sent in the event a fee calculation error is discovered. However, the Office will send a courtesy letter explaining the error if prompted to do so.

The Office should understand, however, that when an agent advises a client regarding an official fee to be paid, they often need to provide the client with an official statement of that fee. IPIC has also seen badly written courtesy letters with vague statements such as "the excess claims will appear as 3" without explaining that this is only in NGP, and without advising of the correct fee to be paid (in that particular example, the agent made a further complaint and eventually got a more informative courtesy letter with the fee amount).

It appears that the content of the courtesy letter provided in response to a complaint about an incorrect final fee calculation depends on who is writing it that day. These letters must follow a template that includes the correct calculated fee amount. However, agents and applicants would greatly prefer receiving a corrected notice of allowance, even if it still bears the original notice date.

A related policy question: please confirm that in the event the applicant pays the incorrect amount based on an erroneous NOA/CNOA and the application is deemed abandoned as a result, they may rely on subsection 3(4) of the Rules to obtain a retroactive extension of time to pay the correct amount and have the abandonment removed without needing to request reinstatement in the following circumstances:

• No courtesy letter with the correct fee amount was provided;
• A courtesy letter with the correct number of claims was provided, but no corrected fee amount was indicated; and
• A courtesy letter with the correct fee was provided (this is not a communication from the Commissioner; 7(1) contemplates that communications may be sent by either the Commissioner or the Office)

CIPO's response:

CIPO indicated that as correctly mentioned in the question, the Patent Office policy is that it does not send out corrected NOAs or CNOAs where a fee calculation error has occurred. That being said, the Office has a template it uses when it needs to let the client know the NOA or CNOA included the wrong fee. This template does include the correct calculated fee amount.

It would appear as though there may be an issue with consistently using this formal template as opposed to exam support staff writing something on their own. CIPO will remind exam support to use the proper template.

Concerning the related policy question, subsection 3(4) would apply. If the notice sent had incorrect information, then the extension of time under 3(4) would apply. In such a case, the Commissioner must consider that the circumstances justify an extension (e.g. incorrect NoA or CNOA would be a reason that the extension would be justified), and the applicant must meet the administrative requirements.

The Commissioner is authorized to extend the period of time for the payment of a fee after the expiry of that period if the Commissioner considers that the circumstances justify the extension and if the following requirements are met:

• the Commissioner provided erroneous information in writing concerning the amount of the fee (note that information contained in Schedule 2 of the Patent Rules is not considered to be erroneous information provided by the Commissioner);
• the applicant or patentee paid an insufficient amount as a result of that erroneous information;
• the applicant or patentee identifies the source of the erroneous information relied on and files a statement that the application for the extension is being filed without undue delay after the applicant or patentee became aware that the amount paid was insufficient; and
• the applicant or patentee pays the difference between the amount that was paid and the amount of the fee that was payable on the day on which the insufficient payment was made. If the requirements are met, the 'top-up' payment will be considered to have been made on the date of the original insufficient payment (subsection 3(5) of the Patent Rules). Where applicable, the Office will reverse any consequences that may have occurred due to the insufficient fee being paid before the expiry of the period to pay the fee.

The above applies irrespective of whether the applicant received a courtesy letter trying to explain the error in the Final Fee. If the notice is wrong then 3(4) should apply immediately, and it would not matter if the applicant received a courtesy letter trying to inform them of the mistake in identifying the wrong Final Fee. Applicants are advised to ask for the extension and say they relied on the official Commissioner's notice (NoA or CNOA) provided for in the Rules.

Broader discussion:

IPIC asked about the hypothetical case where the Applicant received a courtesy letter indicating the correct amount, but, despite that, they then paid the incorrect amount. CIPO replied that it is a courtesy letter. IPIC asked whether the Commissioner would still think that the circumstances justified the extension if the Commissioner knew the courtesy letter was sent? CIPO replied that it was likely, but did not want to fetter any discretion the Commissioner had in such a situation. IPIC asked if CIPO double checks for incorrect excess claim fees, and whether an Applicant could potentially allow the application to go abandoned by not paying excess claim fees they were not aware of. CIPO replied that when the Applicant pays the final fee, the analyst has a workflow to update the claim numbers, if the claim numbers are flagged as incorrect. Thus, there is an opportunity to correct the claim number before the application goes to grant.

IPIC asked what happens if it is not flagged as incorrect when it goes to allowance and before the final fee is paid; specifically, does the analyst go to the documents to double check the claim numbers. CIPO was not sure, but replied that the Applicant could attach a letter with payment indicating why the amount of claims being paid for diverged from the number of claims being indicated by the system. CIPO noted there could be 2 potential failures: 1) the correspondence does not represent what the analyst has assessed or what is in the system or 2) the determination was incorrect. Pre-NGP, there was a validation step. IPIC asked if they should double check the claim number themselves.

4.5 Furnishing corrected WO publications

Issue:

IPIC indicated Agents continue to have problems with national phase entries when the Office fails to retrieve documents from WIPO. IPIC provided an example, where WIPO issued a notice in the PCT application on

May 5, 2025

stating that a copy of the Notification was being sent to the Receiving Office (RO):

This application entered the Canadian national phase on

May 8, 2025

. However, despite having been notified by WIPO, the Office did not download the corrected pages (which were only made available about a month later). When the agent complained, they were advised that the Office does not automatically update its records based on corrections published after the 30-month deadline, and only refers to WIPO if something appears to be missing, such as a priority document. The Office took the position that it was the agent's (applicant's) responsibility to provide the corrected information, which would be entered as an amendment.

IPIC would like to understand the legal support for this position. If the applicant furnished complete information to the RO on the international filing date, that information was deemed received by the Commissioner on that date once the application became a Canadian national phase application, per paragraph 156(1)(a) of the Rules.

• The national phase applicant should not be expected to furnish an application part that was present in the application on the international filing date. The one exception is if the PCT application was not published at the national phase entry date—but this application was published, albeit incorrectly. What is the correct legal basis for requiring the applicant to furnish the missing pages?
• Even if the applicant is legally required to furnish these pages in the national phase application, why should it be submitted as an amendment? This would likely cause the applicant to run afoul of subsection 38.2(2) of the Act.

CIPO's response:

CIPO indicated that upon national phase entry on

May 8, 2025

, the corrected version of the description was not yet published at WIPO. It is correct that the Office does not look at Patentscope for future corrections published by WIPO when CIPO is not notified that a correction has been made. There is however one notable exception: the Office will look for any Chapter II amendments that were made before national entry and published after national entry, and sometimes to look for other information when there is a reason for investigation.

CIPO specified the applicant should bring corrections to publications to the Office's attention, otherwise the Office will not be aware of it. Although the WIPO notice states that designated offices are notified, it is not clear "notified" that this necessarily happens, particularly in a timely manner.

CIPO further indicated that in the case above, it appears that the description that was republished was meant to be the description that should have been published on

May 16, 2024

, and due to a technical error, it was not. Therefore, in this case, the republished description should be put on file and should not be considered an amendment.

It was noted that this was also discussed at the recent PCT round table meeting. CIPO indicated that it is a shared responsibility to determine that the right documents are being looked at. IPIC indicated that there appears to be a known issue with a ticket (8493) relating to the corrected A9 documents not always being found. If this is known issue, what is the follow up and will it be published on the CIPO website? CIPO replied that recent WIPO backend changes mean that A9 documents are currently not being automatically pulled in; however, users can add them manually. CIPO said they would follow up with a resolution, and that this issue may be added to next listsrv in December. CIPO indicated that if gaps in the portal are observed, CIPO appreciates this being reported. Update – as of

January 7, 2026

, this issue has been resolved. An update message was added to the CIPO NGP website and message included in the

January 9, 2026

, listserv.

4.6 Failure to enter Art 19/34 amendments

Issue:

IPIC indicated that it is still the case that the Office sometimes fails to download or apply Article 19/34 amendments in national phase applications.

IPIC would like clarification of the Office's procedure in handling these amendments when:

• The amendment was submitted in the PCT application prior to national phase entry, but not published by WIPO at the time of national phase entry; and
• The amendment was both submitted and published by WIPO before national phase entry. IPIC is also still concerned that examiner's reports drawn up on incomplete national phase applications will not be withdrawn, despite the fact that section 156 of the Rules seems to place the responsibility for obtaining the correct pages on the Office.

CIPO's response:

CIPO indicated that at national entry, MyCIPO Patents pulls application data from Patentscope. However, Article 34 amendments will only be published on Patentscope after 30 months from the priority date due to Article 38 of the PCT. In general, Article 19 amendments should be available on Patentscope before national entry. Therefore, depending on the timing of the National Entry, Article 34 amendments may not be uploaded automatically from Patentscope.

CIPO analysts will double check Patentscope when they are processing the national entry. If the processing occurs after 30 months, they may find the Article 34 amendments at that time and will enter them into SP. Examiners will also check Patentscope before beginning examination and will request entry of any missing amendments into SP at that time.

It is recommended that the applicant ensure that all amendments are on file in MyCIPO Patents when processing the national entry request. If amendments are missing, the applicant should inform the office of this fact. Note that CIPO will always examine the latest Article 34 amendments made prior to national entry. This includes amendments that were not considered for the purposes of the IPRP due to either new matter or the lack of a letter indicating the basis for the amendments (see item 4 of Box No. I). If the latest Article 34 amendments are not the ones that the applicant wishes to prosecute, a voluntary amendment must be submitted.

It is also important to verify the number of claims on file at Request for Examination and pay for the correct number (i.e. the number of claims in the latest Article 19 or 34 amendment if applicable). If this number does not match what is on file in MyCIPO Patents, it could be an indication that the amendments have not been pulled from Patentscope. CIPO is also exploring the possibility of using ePCT to pull national entry data. However, more research is required to determine whether this is a feasible option, both in regard to IT infrastructure and privacy considerations.

CIPO is also exploring the possibility of using ePCT to pull national entry data. However, more analysis is required to determine whether this is a feasible option, both in regard to IT infrastructure and privacy considerations.

4.7 Retrieval of PCT application documents when a partial translation is provided

Issue:

IPIC indicated that a related issue is the Office's procedure in retrieving documents of a foreign-language PCT application from WIPO when only some of the application parts are translated. In one case, a German-language PCT application entered the national phase; the applicant supplied a translation of the description and claims, but not the drawings. The Office failed to download the drawings and include them in the national phase application.

How is the Office supposed to handle these cases?

CIPO's response:

CIPO indicated they should have downloaded the German drawings and issued a notice under 155.5(6) PR.

Broader discussion:

IPIC asked if the German drawings have no German language in them, would it be required to submit a new set of drawings. CIPO replied that from a technical standpoint, the analyst would not know to include the drawings in the application as the Office does not have an indicator of whether there is text or not. To avoid delays, CIPO specified it would be better to provide a copy of the drawings with the other translated material.

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5. Examination - Quality

5.1 Training issues

Issue:

IPIC indicated that It appears that some examiners are being excessively literal in following their training. Some examples:

Comprising is indefinite when used as a transitional phrase

The claim in question read, "A method of making a composition for topical applications, comprising:"

Any negative is indefinite

Some claims have been objected to as indefinite because they allegedly defined the invention in terms of what it was not, rather than what it is:

• "without providing more than one offset to said CNC machine" It does seem that any negative term triggers an indefiniteness defect when the scope of the claim is clear, and the negative clearly defines the bounds of the claimed invention.

CIPO's response:

CIPO indicated these two examples are quite different, and it is unclear how they show a training issue trend.

However, CIPO agreed that Examiners were being too strict in identifying indefiniteness defects in these circumstances. CIPO indicated they would remind examiners about these broad topics.

Broader discussion:

IPIC indicated that Canadian Examiners do catch some indefiniteness errors that Examiners in other jurisdictions do not; however, sometimes Examiners are too literal.

5.2 Failure to identify which references apply in prior art defect

Issue:

IPIC indicated that In some cases, examiners have not provided sufficiently precise information to allow an applicant to respond to an alleged prior art defect.

IPIC would appreciate a reminder to examiners that the applicant needs to understand precisely why a claim is considered defective.

CIPO's response:

CIPO indicated that the examiner's report is clearly missing the description of prior art documents D8 to D12. CIPO agreed that this information is needed to allow the applicant to respond properly and completely. This issue really seems like a one-off, and would have been better dealt with using the OFM. CIPO has already made this reminder at the November Patent Examination Section Head (PESH) meeting.

Broader discussion:

IPIC asked whether there had been any change in the use of the PERM paragraph for citing international opinions in a national context. CIPO replied there has been no change in the use of the PERM paragraph and this could be due to it being new examiners who are not allowed to use this paragraph in their first year.

5.3 Citation to the Patent Act or Rules to identify a legal basis for a defect

Issue:

IPIC believes that any alleged defect in an application needs to be supported by a specific citation to either the Patent Act or Patent Rules, and would like to understand if there is any circumstance where an examiner is permitted to identify a defect without citing the legal basis.

For example, in one example, the applicant had elected one invention prior to allowance. Post-allowance, the applicant filed an RCE and added further claims. In the first report after RCE, the examiner indicated that the applicant had already made an election, and the new claims would not be prosecuted "in accordance with subsection 36(2) of the Patent Act ". Subsection 36(2) does not identify a defect, but rather enables the applicant to file a voluntary divisional. The report only implied, but did not actually state, that the new claims were patentably distinct from the elected claims.

• Should the report not have identified the legal basis for the defect, subsection 36(1) of the Act?
• If a report does not identify a legal basis, should that not be grounds for withdrawing the report?

CIPO's response:

CIPO replied that they rely on s36(2) as a defect to identify situations where the applicant has changed unity groups: this is more appropriate because the claims could be directed to a single invention so there would be no defect under s36(1). In the case of a unity group switch, CIPO would not examine the new claims even for the purposes of unity.

However, in the application in question, the situation was not one of a pure "unity group switch" but more the addition of further claims and reintroduction of claims from groups previously identified as lacking unity to those already on record. In such situations, a unity defect is called for and should have been part of the report. CIPO has reminded the examiner, and will also be reminding all examiners of the unity group switch practice.

Broader discussion:

IPIC asked about the case where a client had previously selected Group A, but then provided new claims that were similar in content to Group B, without being the exact original Group B claims. The new claims similar in content to Group B will be labelled B'. CIPO replied with the following scenarios:

• If the applicant completely switches the pending claims to B, deleting all the A claims, then the examiner will cite 36(2)
• If the applicant completely switches the pending claims to B', deleting all the A claims, then the examiner will cite 36(2)
• If the applicant completely switches the pending claims to C, deleting all the A claims, then the examiner will cite 36(2)
• But as long as the applicant retains some A claims, and adds B' to the claims, then the examiner will cite 36(1) and 36(2)
• Similarly, as long as the applicant retains some A claims, and adds C to the claims, then the examiner will cite 36(1)

5.4 Examiner interview summaries and statements in reports when agent unreachable

Issue:

IPIC noted it has been noted that on occasion, when an agent is not available to respond to an examiner's telephone call, an incorrect interview summary form is uploaded, indicating that the agent declined to amend the application.

Evidently the problem is that the "outcomes" of the interview summary form do not include the possibility that the agent was unavailable. IPIC suggested that perhaps the form should be revised?

CIPO's response:

CIPO indicated that statements in examiner interview summaries should accurately describe the situation (i.e. exactly what happened). CIPO agreed that if the agent was unreachable, it should not mention that the agent declined to amend the application.

CIPO does have a new template that explains what to do in this situation. There is a paragraph to include on the form for this exact situation with the rest being left empty. This is likely a transition matter, and CIPO will monitor to see the situation so that it does not occur further. CIPO also made a reminder at the November PESH meeting.

5.5 Examiner reports should not include references to interview attempts

Issue:

IPIC noted examiners will indicate in their reports when they were unable to reach an agent.

IPIC found this statement to be excessive. It appears that examiners need to document their attempts to contact the agent to show that they did try to have an interview; but there is no need for this to be included in a report. It is not relevant to the substance of the report, and there is no need to explain why a report was sent. The examiner's need to justify the lack of interview is an internal Office matter, and should be documented in internal records rather than in the file history.

It seems more than sufficient to simply upload an interview summary that indicates that an interview was declined or that the examiner was unable to contact the applicant/agent, as the case may be.

CIPO's response:

CIPO replied that when the mandatory examiner-initiated interview service was launched, this paragraph was introduced at the beginning of the report depicting the accurate situation of the outcome of the interview. This was done as an improvement to the process following feedback received from participating in interviews prior to making the service mandatory.

CIPO notes that if they do not have it in reports, they will get complaints as to why the report was not an interview, which were received multiple times in the past.

There are other things not directed to the substance of the report in examination reports: like the SH phone number if the examiner is unreachable, link to the survey, etc. This paragraph similarly deals with client service.

CIPO is of the opinion that this paragraph is useful and still has its place in examiner's reports.

Broader discussion:

CIPO further indicated that examiners might have different work processes. Some examiners may pre-populate the interview summary, while others may not populate it until they have made contact with the agent. IPIC noted that a shift in language or merely reducing it to the first sentence might be better. CIPO agreed to look into simplifying the language of the paragraph. There may be particular situations where the agent is not able to reply. IPIC also suggested that sometimes a report is preferred to agents, particularly when there are multiple different issues or complex issues to discuss. Finally, IPIC asked Examiners to not use piecemeal in interviews. A case was raised where 3 different interviews were conducted for different issues.

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5.6 Addition of further issues in interview summary

Issue:

IPIC noted that in one case, the examiner added further defects to the interview summary.

The agent and examiner only discussed an alleged lack of support defect during the interview. However, when the agent viewed the interview summary, he noted that the interview included some indefiniteness defects. The interview summary does implicitly acknowledge that these defects were not discussed during the interview.

Of course, the applicant would never have realized the examiner identified these defects if they had not elected to download the interview summary. Perhaps examiners need to be reminded that the interview summary is not sent to the applicant and it cannot be used to notify the applicant about defects.

CIPO's response:

CIPO replied that this does seem like a one-off, but it is definitely a problem.

CIPO confirmed that the interview summary should only include what was discussed on the phone. If there are additional defects that should have been raised, a subsequent interview should have been held, and a further interview record created.

CIPO has already made a reminder at the November PESH meeting.

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6. Administrative Policy (Agent-related matters)

6.1 Updated agent data from CPATA

Issue:

IPIC asked if there is an update on automating the retrieval of agent information from CPATA.

CIPO's response:

CIPO indicated there were no updates on this subject.

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7. Additional Items

CIPO reported that the October listsrv represented a different approach to looking ahead in NGP. The Office has tried to be a lot more prescriptive; by providing shorter timelines, the Office can provide improved accuracy. Thus, CIPO announced that everything in the October 31st listsrv has been initiated as planned. The next listsrv will be coming shortly for December and January and will take a similar approach. CIPO wanted to validate this approach with IPIC, particularly concerning the granularity of the message and specificity, and taking into account the challenges intrinsic to software programming of a project such as NGP. IPIC confirmed that that level of realistic detail is useful, and further indicated that they would appreciate proactive messaging about the processing of grants. CIPO indicated that some of the issues associated with grants are translation and the size of the representative drawings. Resolving these issues accurately and automatically is still in process.

CIPO reported that there were concerns raised about Due Care in in the IPIC Annual Meeting. CIPO would like to engage further with the agent community about this topic. An IPIC member expressed that it is too much of a burden for agents, patentees, and applicants to have to educate the Office as to what standard an applicant, patentee, or agent should be held to when there is already a body for that purpose. IPIC thanked CIPO for continuing the conversation.

IPIC asked why there are no General Authorization Statements for maintenance fee payments? CIPO replied it is because the maintenance fees have a bulk configuration in the portal. The maintenance fee section is built distinctly from the rest of the portal.

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8. Conclusions

The date for the next Patent Practice Committee meeting is set for March 4; the format will continue to be hybrid.

The meeting adjourned at 4h08.

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Acronyms:

| Acronyms | Definitions |
| --- | --- |
| CDAS | CIPO documents access system |
| CGK | Common General Knowledge |
| CIPO | Canadian Intellectual Property Office |
| CNOA | Conditional Notice of Allowance |
| CPATA | College of Patent Agents and Trademark Agents |
| CPD | Canadian Patents Database |
| CRM | Computer-Readable Medium |
| CUSMA | Canada-United States-Mexico Agreement |
| CSC | Client Services Centre |
| EB | Examiners' Bulletin |
| EPO | European Patent Office |
| FCA | Federal Court of Appeal |
| GRTK | Genetic Resources and Traditional Knowledge |
| IGC | Intergovernmental Committee |
| ICU | Incoming Correspondence Unit |
| IPIC | Intellectual Property Institute of Canada |
| IPRP | International Preliminary Report on Patentability |
| ITM | Information Technology Modernization |
| JPO | Japan Patent Office |
| MMT | Method of Medical Treatment |
| MOPOP | Manual of Patent Office Practice |
| NER | National Entry Request |
| NOA | Notice of Allowance |
| NGP | Next Generation Patents |
| OPI date | Open to Public Inspection Date |
| QC | Quality Control |
| PCT | Patent Cooperation Treaty |
| PPC | Patent Practice Committee |
| PPH | Patent Prosecution Highway |
| RCE | Request for Continued Examination |
| RE | Request for Examination |
| SME | Small and Medium-sized Enterprises |
| SP | Backend portion of NGP |
| USPTO | United States Patent and Trademark Office |
| VA | Voluntary Amendment |
| WIPO | World Intellectual Property Organization |

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Date modified:

2026-02-25