Patent Practice Committee Meeting PB/IPIC –

June 10, 2025

Tuesday,

June 10, 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 Meetings and Touchpoints
  • 2.2 CPATA
  • 2.3 Abandonment queries
• 3. Mandatory Interview Implementation
• 4. Digital Services CIPO Website
  • 4.1 Patentable Subject Matter
  • 4.2 Scammers
  • 4.3 Legacy applications
  • 4.4 General Correspondence
  • 4.5 Event History
• 5. Digital Services CIPO Website
  • 5.1 Patent search tools available on premises
• 6. Operations - Business Processes
  • 6.1 Identifying utility model priority documents
  • 6.2 PCT national form letters
  • 6.3 List of all notices and courtesy letters
  • 6.4 PCT application number on correspondence
  • 6.5 NGP entries for physical correspondence
  • 6.6 Accuracy in responding to OFM
• 7. Examination - Practice
  • 7.1 Double patenting/overlap vs obviousness
  • 7.2 Obviousness analysis
  • 7.3 Patentable subject matter review policy?
  • 7.4 Substantive issues not identified at the first opportunity
  • 7.5 Concise claims
  • 7.6 Report Withdrawal
• 8. Administrative Policy (International Policy)
  • 8.1 Conditional requests for reinstatement
  • 8.2 Requests for change of address
  • 8.3 Legal OPI vs availability to the public
  • 8.4 Issued vs granted
  • 8.5 Availability of transfer documents (assignments, etc.) on the CPD
  • 8.6 Date of determination of due care
• 9 Conclusion
• Acronyms

Attendees

Co-chairs: Virginie Ethier and Jenna Wilson

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

Guests: Cecilia Alperin, Marie-Claude Gagnon, Patrice Cousineau

Secretariat: Helena Forbes

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Items

1. Introduction

CIPO welcomed everyone to this hybrid meeting.

2. CIPO updates

2.1 Meetings and Touchpoints

CIPO reported that they had had meetings with the CEO from Australia, IPIC, and IPH, and the information from these meetings is stored on the website and was communicated in the Touchpoint. A further meeting with FICPI has yet to be scheduled.

Touchpoints occurred on the 15 th, 23 rd, and 29 th with another to come.

2.2 CPATA

CIPO reported their senior leadership team met with CPATA's Registrar and Communications lead on

June 3, 2025

. A broad range of topics were covered including:

• unauthorized practice and fraud notices,
• an update on NGP/NGT,
• enhanced search functionality on CPATA's public registry, and
• practice issues CPATA is seeing with AI hallucinated cases. IPIC asked if CIPO is planning to implement any AI tools. CIPO replied that it is something needs to be investigated further, as there are challenges with ensuring confidentiality.

2.3 Abandonment queries

CIPO reported that the NGP ListServ of

May 30, 2025

included an message on "inaccuracies in patent status on the CPD." The Office is closely monitoring files that, prior to the change to the new system, would have been subject to an abandonment notice. CIPO noted there is a joint responsibility to have a record of dates within the docketing systems to ensure that everything has been inputted into the system. CIPO will be publishing a report summarizing what is on the listserv.

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3. Mandatory Interview Implementation

CIPO reported that effective

June 2 nd, 2025

Patent Examiners are expected to attempt to initiate an interview when five (5) or fewer defects from a predetermined list remain in an application. Exceptions to this process may include previous indication from clients that they would prefer a written report rather than an interview to correct defects, an interview was previously conducted for at least one of these defects and the applicant did not successfully amend to cure the defect or the applicant lacks facility in English or French and is not willing to provide a translator for an interview.

Patent Examiners will maintain the discretion to write an office action rather than conduct an interview when:

• An application contains more than 5 minor defects
• A defect is present that is not listed in Appendix A CIPO noted that successful implementation of the examination interview process requires collaboration between Patent Examiners and stakeholders. To ensure effective communication, CIPO indicated that interview participants are encouraged to update their contact information on MyCIPO Patents. This includes replacing fax numbers with phone numbers in the contact tabs and ensuring files reflect any changes in representation.

CIPO further indicated that clients should also respond to the Examiner's phone call in a timely manner (3 days). Should an examiner not receive a call back after the stated deadline, an office action may be issued with the date of the attempt recorded in said office action. All attempts to initiate an interview with a participant will be documented on the Canadian Patent Database (CPD) as part of the official record. Clients are also reminded to properly submit the voluntary amendment by appropriately categorizing it as such on MyCIPO Patents in order to facilitate processing.

CIPO indicated that changes to office practice will be communicated via multiple channels including meetings, updates to CIPO's examination interview service webpage and direct email notifications. Clients are encouraged to provide feedback on the revised procedure via CIPO's Online Feedback Mechanism, ensuring continuous improvement in the patent examination process.

IPIC asked what should be done if a report was issued, where an interview should have been initiated. CIPO replied that an OFM should be completed, but noted that the report would not be withdrawn.

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4. Digital Services CIPO Website

4.1 Patentable Subject Matter

Issue:

IPIC asked when they can expect the MOPOP consultation on patentable subject matter?

CIPO's response:

CIPO noted that the consultation would be June 2 to July 11.

CIPO is proposing updates to chapters 12, 17, 22 and 23 of the MOPOP. These amendments set out how examiners will assess patentable subject-matter based on the latest jurisprudence. In addition, revisions to the sections on plants and animals in chapter 23 have been proposed to offer clearer guidance.

IPIC indicated that they felt that this was not a significant amount of time for the consultation. IPIC further inquired if there was an opportunity for verbal conversation after the consultation comments were submitted. CIPO replied that this could be considered.

4.2 Scammers

Issue:

IPIC asked what steps are taken to stop scammers claiming an association with CIPO?

• Recently, several companies received emails purporting to come from "Cipo Law Solution", with emails from cipolawsolution.com
• Is CIPO aware of this, and what has been done? This seems to be a case where domain name arbitration could be used to take over the domain name. Does CIPO ever do this?

CIPO's response:

CIPO is aware of this issue, and steps have been initiated and taken. A scam warning banner is now on CIPO's main website page. The content of our scam page will also be updated shortly to better reflect the types of scams, phishing attempts that are currently occurring. Websites that use the CIPO acronym are now being blocked through The Canadian Centre for Cyber Security. Additional steps undertaken include meetings with the Canadian Anti-Fraud Centre, Deceptive marketing practices at the Competition bureau. CIPO is further investigating the development of a spam reporting mechanism (form) on our website. Additionally, CIPO is beginning to identify TM applications that may be impacted and creating a more tailored message for CSC Information Officers when providing guidance to clients regarding these scammers.

IPIC asked what new scammer ploys have been noted. CIPO replied that the CIPO Law Solution scam is a new strategy, and thanks IPIC for drawing their attention to this matter. IPIC further indicated that scammers are taking the identities of existing lawyers. CIPO indicated that it is a matter of "whack amole", in which as one scammer is identified and dealt with, other scams arise.

4.3 Legacy applications

Issue:

IPIC asked that CIPO confirm whether applications filed via a "legacy" method by a user with a MyCIPO Patents account after the launch of NGP are associated with that user's account (and the user's organization) in MyCIPO Patents.

IPIC noted that they understand that legacy applications filed before NGP are not linked, but they have discovered that confidential applications filed after the launch of NGP are available to the organization's users in MCP. They would like to confirm that this is expected behaviour.

CIPO's response:

CIPO confirmed that the applications filed before NGP are not linked. The applications filed via a legacy method and processed by ICU in NGP that are from an office that exists in the portal will be visible in that office's portal since ICU is associating the application to that office.

4.4 General Correspondence

Issue:

IPIC indicated that their members are still very concerned about the continued availability of General Correspondence.

For example, it has been discovered that PPH requests cannot be filed via MyCIPO Patents in applications filed via a legacy method, if the application is still confidential, because the priority data is not automatically populated and cannot be entered by the user in the PPH form.

CIPO's response:

CIPO indicated that, in regards to the PPH form example, the filing date and earliest priority date are sometimes blank; however, they are not indicated as required fields and a PPH request can still be filed in the MyCIPO portal. CIPO continues to work on user experience improvements for the PPH form in MyCIPO Patents. CIPO noted that applicants are reminded, where applicable, to submit a separate Service Request in their MyCIPO cart to request early opening of applications when submitting a PPH request. CIPO further noted that applicants are encouraged to use MyCIPO to submit PPH requests since this is more efficient and reduces errors.

CIPO thanked IPIC for their support in achieving a high adoption rate of the MyCIPO Portal, which is currently more than 90%.

4.5 Event History

Issue:

IPIC indicated that The Event History label for protests is confusing: regarding a "Correspondent Determined Compliant" event and a "Voluntary Submission of Protest Received" event, IPIC asked whether– should the "of" be an "or"? They further noted that they would like to have a list of all possible events that could appear in the Event History with a brief explanation.

CIPO's response:

CIPO indicated that the information on statuses as well as event history has been updated on

May 1, 2025

, to match the ST.27/SP information (CITMNGPT-7220).

Additional updates are currently underway to ensure the information is accurate and up to date. These updates are expected to be completed in the fall.

CIPO indicated that the name could be changed to "Voluntary Submission or Protest Received".

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5. Digital Services CIPO Website

5.1 Patent search tools available on premises

Issue:

IPIC asked exactly what tools are available for searching Canadian patents and applications in the search room. They further inquired what tools are available for searching foreign patents and applications.

CIPO's response:

CIPO reported that with the launch of NGP, walk-in clients no longer have access to Techsource or Intellect. Clients can access CPD, WIPO database or anything which is available publicly on the internet. Upon request or after placing an order, CIPO can provide copies of files on a USB Key, which the client can view on a computer in the search room.

CIPO confirmed that there are no other advantages to coming in, so that there is no geographically privileged access and CIPO can provide equal access to clients across the country.

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6. Operations - Business Processes

6.1 Identifying utility model priority documents

Issue:

IPIC indicated that agents have found that analysts processing new application filings do not notice when the application claims priority to a utility model as opposed to a utility patent unless they are explicitly told in a separate letter submitted with the filing. This causes problems, since their attempt to retrieve the priority document from WIPO DAS fails, resulting in additional work on the part of the Office and agent to ensure the document is properly retrieved.

IPIC requested that CIPO ensure that analysis are trained to correctly identify and retrieve utility model priority documents.

IPIC suggested an alternative would be to include a checkbox or dropdown interface in MyCIPO Patents where a filer could indicate the type of priority document to be retrieved.

CIPO's response:

CIPO thanked IPIC for pointing this out. CIPO indicated that they are currently investigating how to add utility models as a priority document option in the MyCIPO portal. In the meantime, they have provided training and guidance to the operations teams to avoid unnecessary notices to applicants regarding failed DAS retrieval requests related to utility models.

6.2 PCT national form letters

Issue:

IPIC indicated that it appears that PCT national notices (or at least, the Commissioner's Notice – Establishing Entitlement) do not have the same due date box at the top of the first page as notices sent in regular applications. Instead, the due date is written in words (e.g., within 3 months of the date of the notice) in the body of the notice. IPIC asked whether these forms could be updated?

CIPO's response:

CIPO indicated that if the relevant application numbers could be submitted, it would help us to take the necessary corrective measures. CIPO further indicated that the confirmation of submission form from MyCIPO also includes the CA number.

Broader discussion:

IPIC indicated that there seemed to be a specific form for where the requester is not the same as in the PCT application and with boxes indicating how the application did not comply, but agreed to provide an example.

6.3 List of all notices and courtesy letters

Issue:

IPIC indicated that MOPOP contains a list of common notices that are sent by the Office. They would also like a list of all template courtesy letters that are used by the Office.

This request was prompted by receipt of a courtesy letter concerning a defective request for restoration of the right of priority. The request was defective because it was not timely, but the courtesy letter content did not include the reason that the request was out of time, which was surprising. This leads us to speculate that there might be other courtesy letters that IPIC is not aware of.

CIPO's response:

CIPO requested the relevant application number in order to take action. IPIC replied that they could not provide an example as they didn't know what to look for. CIPO replied that they could provide a current list of courtesy letters, but that this list may change.

6.4 PCT application number on correspondence

Issue:

IPIC indicated that Office correspondence often bears the WIPO publication number, but not the application number (e.g., the Confirmation of Electronic Submission). It would be very helpful if all such correspondence included the PCT application number; agent docketing systems typically use the application number as a reference, not the publication number. While they provided an example of an NPE request, they noted that this may not be the only type of document that is missing the PCT application number.

CIPO's response:

CIPO confirmed that the portal confirmation of submission indeed does not include the PCT application number, and have created CITMNGPT-7745 to capture this requirement. However, this may not be a high priority relative to other CDS work.

6.5 NGP entries for physical correspondence

Issue:

IPIC asked if correspondence is mailed, is it populated differently in NGP than email correspondence?

This question was prompted by the discovery that an examiner's report that was received in the mail was listed in the Event History in the CPD, but not in the Documents tab.

CIPO's response:

CIPO noted that examination reports are Custom Correspondence (not automated) so if it was missing from the document tab, this would be due to human error.

CIPO indicated that a QC step has been added to the process of examiner's report sent by mail to avoid this situation. CIPO further indicated that the step was already in place for examiner reports sent by email, but not for those sent by mail.

6.6 Accuracy in responding to OFM

Issue:

IPIC noted that members continue to find that responses to OFM are not appropriate to the questions asked or issues raised. Responders are often too quick to assume that a complaint is due to NGP backlog issues, and do not provide a suitable response. In an egregious case, complaints about industrial design applications were routed to Patent Branch, and were answered as though the complaints related to patent applications.

CIPO's response:

CIPO noted that such incorrect responses would not be sent intentionally. Over the past two months, all OFMs have been handled by Client Service Information Officers, who are very experienced officers. Given their familiarity with the systems and processes, it is unlikely that they would have provided responses that misidentify the subject matter of the complaint. When a response was provided mentioning the backlog, it was really the case. For example – delay to provide cover page,

When an OFM concerns an industrial design (ID), the CSC is usually able to quickly identify this based on the format of the application number—ID numbers are six digits, whereas patent application numbers are seven digits. Additionally, CSC has a well-established practice of verifying the application directly in the system before responding to any inquiries. This ensures that our replies are tailored to the specific application and its context.

The mix-up may have occurred earlier in the intake process if a client selected the "Patents" category instead of "Industrial Designs" on the online form. In such cases, it's possible that the initial routing caused the confusion, especially when the client did not include an ID application number or provided a general question.

CIPO requested that examples be provided where IPIC believes the feedback provided by CSC was either inaccurate or lacked sufficient investigation in order that further study may be conducted.

Broader discussion:

CIPO indicated that the transition behind the scenes on OFMs, which is now completed, may have contributed to the errors. The Office is trying to respond to each one in a timely and appropriate matter.

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7. Examination - Practice

7.1 Double patenting/overlap vs obviousness

Issue:

IPIC asked how examiners are trained to apply prior art as evidence of CGK in a double patenting or overlap situation? Two examples were provided.

CIPO's response:

CIPO noted that MOPOP explains in section 12.02.02c CGK and in section 18.06 how to approach assessing double-patenting. Specifically, MOPOP mentions the assessment involves a comparison of the claims rather than the disclosure, as the claims define the monopoly. However, claim comparison is not done on a literal construction of the claims; claims are to be given a purposive construction based on a reading of the specification through the eyes of the skilled person, taking into account their common general knowledge. If the claims of the existing patent, when understood by the person skilled in the art in light of the common general knowledge on the claim date and the teachings of the specification as a whole, anticipate or render obvious the claims of the application being examined, the claims are not patentably distinct from each other. Granting both sets of claims would therefore result in double-patenting.

Evaluating "not patentably distinct" is not well-laid out in the jurisprudence but has been likened to an obviousness analysis with some constraints. Establishing a mosaic vs prior art + CGK is very much a factual evaluation, one that will not be further analyzed for this case. Although two examples were provided, they are considered to be the same one-off item, as the 2 applications form part of the same double patenting group of applications. Finally, without saying that double patenting exists or not, it is possible that the examiner here might have been swayed by foreign prosecution to lay out their argument that might not best reflect Canadian Practice.

Broader discussion:

IPIC further asked why CGK can be used to cover a full element. CIPO replied that in obviousness, several documents can be cited to indicate that an element is CGK, which is distinct from the practice of mosaicking. CIPO confirmed that there is nothing beyond what is in MOPOP and the basic training manual to address Double Patenting- obviousness.

7.2 Obviousness analysis

Issue:

IPIC indicated that they have been seeing instances of examiners applying incorrect tests for obviousness, suggesting that examiners believe that there is only invention if there is a surprising result. Examples were provided.

CIPO's response:

CIPO replied that examiners are instructed to use the Sanofi four part test in assessing obviousness. However it is clear in the jurisprudence (echoed in MOPOP) that the evaluation occurring in step 4 is flexible with no single test. It is true that an unexpected result is neither necessary nor sufficient for inventiveness. That said in many situations an unexpected result is taken as a strong factor in favour of inventiveness.

This is also noted in MOPOP section 18.02.05 under obviousness and utility, where something unexpected or inventive must be in play to support a patent. Generally speaking, 'unexpected result' is a short hand for looking for something that is not obvious and requires some degree of invention. It is hard to think of scenarios where something is inventive but the result is exactly what you would have expected unless the invention lay in actually getting it to work and provide that expected result.

While in these examples, the language might not always be phrased optimally, CIPO would read the conclusion as being that the examiner believes that the claimed subject-matter lies well within the bounds of being obvious and would only have a chance of being inventive if there was the presence of an unexpected result weighing on that side of the balance.

Broader discussion:

IPIC brought forth another example where there were several issues with a second report, including the examiner not replying to the Agent's arguments. The issues brought up were successfully dealt with after the meeting with the agent on record.

7.3 Patentable subject matter review policy?

Issue:

IPIC indicated that an examiner's report was received that included the sentence:

A Section Head review of this application has determined that Patentable subject-matter defects identified in the office action dated

30 October 2023

have not been overcome.

IPIC inquired as to whether this was a new procedure?

CIPO's response:

CIPO replied that this is not a new procedure.

This one case was simply to communicate the reason the report was issued with a substantial defect raised after an interview with the examiner had suggested only minor defects remained. It was agreed among those involved that including a brief explanation of the situation would help mitigate discontent from the applicant.

7.4 Substantive issues not identified at the first opportunity

Issue:

IPIC indicated that they continue to see cases in which substantive defects (i.e., beyond indefiniteness or description defects) are not identified until a second report, even though they could have been raised in the first report. Three examples were provided.

CIPO's response:

CIPO replied that the 3 cases with substantive defects involved art citation stemming from foreign prosecution that was not available at the earlier stage of examination, i.e. previous report(s). It is hard to ignore the existence of the art and the examiner chose to use it in the later report.

The other case involved a defect that should have been either identified before or use the interview service to deal with it.

It is not ideal to identify issues later in prosecution when they were present already. The Office does strive to minimize those, but cannot prevent all of them from happening, as such issues can arise for a number of reasons including that QC occurs sporadically.

CIPO is aware of the pressures of RCE, and notes that the newly-implemented mandatory service should help to address this issue.

Broader discussion:

CIPO indicated that there may be some changes to unity deferral in the future, but at present, the Office reserves the right to defer searching.

7.5 Concise claims

Issue:

IPIC noted that historically, examiners frequently objected to claim sets with several independent claims in the same category (machine, process, etc.) on the basis that the claim set as a whole lacked conciseness.

IPIC inquired whether guidance to examiners has changed in view of the fact that applicants now pay for excess claims?

CIPO's response:

CIPO replied that during this time of transition where examination of pre-excess claims applications coincides with post-excess claims applications there has been no change to the guidance. As the transition progresses, CIPO may evaluate whether any change in guidance is necessary. CIPO suspects that the defect would become less frequently used based on these changes.

7.6 Report Withdrawal

Issue:

IPIC requested clarification about what constitutes examination of incorrect pages "that affect the relevancy of the report in full". In the attached example, the examiner refused to withdraw the report because there was still a live indefiniteness defect concerning dependent claims ("and/or"), and an incorporation by reference statement. But the amended claims included a limitation that was not there previously that surely would have impacted the anticipation and obviousness analyses. It seems that "in full" really should be revisited if the Office wants to treat applicants fairly. If a defect is addressable by a telephone interview or CNOA, it really should not be used to avoid withdrawing a report.

CIPO's response:

CIPO noted that while they are reviewing this particular provision of the withdrawal guidance and may propagate some changes, a validly issued report will not be withdrawn just because the defects could have been the subject of a telephone interview or a CNOA. CIPO will strive to minimise those circumstances but sometimes there are valid reasons for a report to be issued instead of an interview or CNOA.

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8. Administrative Policy (International Policy)

8.1 Conditional requests for reinstatement

Issue:

IPIC noted that while the Office's position that conditional requests for reinstatement (e.g., "should this application be deemed abandoned… we hereby request reinstatement…) will not be honoured may be reasonable, IPIC requests that the Office's position be reconsidered during this period of uncertainty caused by the launch of NGP.

IPIC indicated that there are cases where applicants requested extensions of time to respond to notices (typically examiner's reports), where the Office's response letter (granting or refusing the extension) has not yet been received. An applicant filing a response by the theoretical extended due date does not know whether they need to request reinstatement or not together with the response.

Further, there are also cases where the applicant requested an extension of time, received no response to the request, then filed a response by the hypothetical extended due date; and now, months later without any word as to whether the extension is granted, the reinstatement deadline (based on the unextended response date) is approaching. The applicant does not know whether they need to request reinstatement.

IPIC noted that it would be ideal if the Office would honour conditional requests for reinstatement if it turned out that the extension was not granted.

If not, what procedure should be followed? For example:

• If the applicant responds by the extended due date with a request for reinstatement, will the request for reinstatement be honoured and the request for an extension of time considered moot (with a refund of the extension of time fee)?
• Alternatively, will the extension of time review be completed, and the reinstatement fee refunded?

CIPO's response:

CIPO replied that there are a number of scenarios that would need to be considered and thanked IPIC for the examples provided. The Office is willing to consider a little more flexibility to not penalize applicants for the current circumstances. There does appear to be a backlog of assessing and responding to extensions of time. From a right's perspective, a conditional request for reinstatement would seem to be a sensible solution. In cases where the reinstatement request is made before the deadline, CIPO could refund the extension of time fee and proceed with reinstatement.

This is the situation of a conditional request.

Broader discussion:

IPIC further asked about an unconditional request for reinstatement. IPIC asked if it is possible to submit an OFM to determine whether reinstatement is necessary, particularly when the timeline is tight. CIPO replied this is not a recommended approach. IPIC indicated they would appreciate it if specific guidance could be provided for this circumstance. CIPO asked IPIC to specify in writing the particulars of this circumstance.

IPIC asked if the Event History seems to indicate the Office has not yet received the letter, should they rely on the Event History? CIPO indicated that Applicants can probably rely on the Event History, but a conditional letter of reinstatement might be a prudent choice is this case. IPIC asked why this situation occurs. In the situation of a ST27 event saying it had been accepted, but the letter had not been sent, CIPO explained that the extension of time letter is a custom correspondence, and there are technical blockers around extensions of time, which are requiring a lot of incident management.

8.2 Requests for change of address

Issue:

IPIC asked who is authorized to request a change of address on behalf of an owner in respect of an application or a patent?

CIPO's response:

CIPO indicated that the current representation ' who can act ' tables available in MOPOP could provide an answer. Patents: the appointed agent or the single patentee or common rep or a registered foreign practitioner or any person authorized by the single patentee or CR. Applications: the agent, if the agent is appointed. If no agent is appointed in the application, then the single applicant or the Common Rep.

The information provided for in MOPOP is taken from s. 36 and s.37 of the Patent Rules which provide who can act and identifies the exceptions to the general rules of representation.

Broader discussion:

IPIC noted that it would be helpful to have the change of address included in the MOPOP table.

8.3 Legal OPI vs availability to the public

Issue:

IPIC asked to review the distinction between:

• The confidentiality period in section 10 of the Act;
• Legal opening to public inspection (e.g., for the purpose of section 55)
• The offensive prior art date of a Canadian application (specifically, the date that it can be cited under 28.2(1)( b))
• Availability of an application on the CPD
• Availability of an application via MyCIPO Patents (which is not always the same as the date it is available on the CPD)

CIPO's response:

CIPO indicated the following distinctions:

Confidentiality period:

The confidentiality period in section 10 of the Patent Act. This is the date marking the end of the confidentiality period defined by S10 of the Patent Act (18 months from filing or the earliest priority), for the application for a patent and any document related to that application included in the application file.

Legal opening to public inspection:

This is the date the application and the contents of its file were disclosed to the public in English or French on outlets administered by CIPO. For national entry applications of PCT applications published by WIPO in English or French, it is the date of publication by WIPO. For all other applications, it is the date of publication on CPD.

The offensive prior art date of a Canadian application:

For the Canadian application, this date would be the OPI date as that would be the date on which the subject-matter became available to the public in Canada. One should note that there are frequently application family members that may be published at different dates elsewhere in the world. If the date elsewhere in the world is earlier than the OPI date in Canada, then the family member could be cited as of its publication date even though the Canadian application is not yet open to public inspection.

Availability of an application on the CPD:

For NER that were published at WIPO in English or French, the OPI date is that of the WIPO application, which would be in the past in relation to when CIPO receives the app. These applications should be entered into CPD as soon as the OPI date is captured against the file, which would be the day they become "entered national phase". In theory, this would be the day of the event "National Entry Requirements Determined Compliant" (SC104) in the logs (at end of day, see below).

For all other applications (including divisionals), the OPI date reflects the date that the flow "queue for publishing" was completed. This flow also creates an event "Application Published (Open to Public Inspection)" (SC130) with the same date. Normally, the mechanism creating the dissemination xmls, and accordingly putting these apps on CPD, runs at end of day, so typically, it should correspond to the day the application was available on CPD (at end of day).

Availability of an application via MyCIPO Patents:

A file is available on MyCIPO Patents when the application has an OPI date – this is what the GET calling SP is checking. So typically, the only nuance would be the day on which the OPI is set: the file would be immediately accessible in the portal, but it would only go to CPD at end of day, at creation of the dissemination xml. Also, for the agent on file, the application is available in MyCIPO Patents before OPI – as soon as the application is in SP.

Broader discussion:

IPIC asked about why there is a gap between the end of the confidentiality period and the OPI date. CIPO replied that this relates to system requirements of the CPD. IPIC pointed out that this has an impact on citation dates, reasonable compensation, etc. CIPO indicated that an applicant could request early OPI, if the Office has not yet opened the application to public inspection. IPIC believes the confidentiality period is in actuality the period before it is OPI'd.

IPIC indicated a concern with NGP: the availability of the application on the CPD means that it is open to public inspection, which in turns relates to the other dates noted above. They indicated that they have seen circumstances in which the application is on NGP before it is officially OPI, even if this time difference is only a day. CIPO replied that this case happens when the case goes at end of day since the data for CPD is generated at the end of day and the portal is instantaneous. So typically, the end of confidentiality period is marked by availability in NGP. Unless there are technical issues in the update to CPD, when an OPI date is captured, at the end of the date, it goes to CPD. IPIC noted a case where early publication was requested, and the application was published on MyCIPOPatents one day before it was available on CPD. CIPO replied that this was again related to the end of day data generation in CPC. IPIC noted that if an applicant requests OPI, there should not be a gap between the end of confidentiality and OPI dates. CIPO indicated that the system is set up this way currently, but it should not be a problem as long as the bibliographic data contains the correct OPI date. IPIC asked how long an Applicant should expect between when they submit the early OPI request and implementation? CIPO was not sure of the current processing time.

8.4 Issued vs granted

Issue:

IPIC noted that the Office now uses these two words to describe a patent. How does the Office define these words?

CIPO's response:

CIPO replied that the status in NGP is called "granted and issued" so the system does not distinguish between the two terms.

Even though NGP does not distinguish between the terms, the Commissioner does have the responsibility of not only granting the patent but also issuing the patent. Section 4(2) indicates that the Commissioner shall perform and do all acts and things requisite for the granting and issuing of patents. The grant occurs when the application complies with all of the requirements and the issue is the delivery of the patent to the client.

Broader discussion:

IPIC asked if these actions could occur on different days? Theoretically, they can. They remarked that there had been a Proctor & Gamble court case in which the two events were on different dates since the Commissioner was not able to sign. CIPO replied that while grants and issuance are separate events, and could have separate dates, it would not be the norm. The court case in question was based on a physical signature on paper, which complicated the issue, but is less typical of our current process today. While legally there is a distinction, technically there is no distinction in the system. Since the events are not separate in our current system, the status is Granted and Issued.

8.5 Availability of transfer documents (assignments, etc.) on the CPD

Issue:

IPIC would like to understand the rationale for the Office's policy of suppressing these documents from the CPD. IPIC's position is that this policy is not logical, but they would like to make sure they understand the complete basis for the Office's position before they present further arguments.

CIPO's response:

CIPO replied that this was a legacy policy during the time of Techsource as a way to mitigate exposure of sensitive documents sometimes provided by service requestors.

Section 10 does say the Office will publish all documents submitted to the office but there could be a larger privacy issues. Our current outward message to clients is as follows:

Protect your privacy on the Canadian Patents Database

Documents submitted by applicants and/or agents effecting transfers may contain sensitive personal information. CIPO will not publish these documents on the CPD, but they will be available to the public either in person at our Office in Gatineau or upon request and payment of a prescribed fee.

Not required: Portions of the transfer documents such as a purchase agreement, will or bankruptcy document that contain sensitive personal or confidential information which detail purchase prices, other assets, due diligence assessments, etc., are not required by CIPO to effect the transfer.

You may redact or suppress any information that you do not wish to be made public before you submit the document to CIPO, so long as this information is not required information according to the Patent Act or the Patent Rules. Please note that CIPO will not redact or suppress any information from documents.

CIPO is open to reviewing this policy.

Broader discussion:

IPIC asked if there was written documentation about what a sensitive document is. IPIC further pointed out that a petition document also contains sensitive information such as addresses. CIPO noted that they could review the policy if IPIC provided further arguments about this.

8.6 Date of determination of due care

Issue:

IPIC asked whether it is the Office's position that the reinstatement/reversal date is the date of the courtesy letter, unless the letter indicates an earlier date of determination?

CIPO's response:

CIPO indicated that NGP does not have an event that represents the legal date of reinstatement and reversal, but it's captured as a future improvement (CITMNGPT-7718 – slated for "medium term"). There is at the present time a lack of nuance in how the gradients/steps are recorded.

Acceptances – Reinstatement would be in effect from the date of the signing of acceptance/letter of the acceptance (Director in lieu of the Commissioner), per the Patent Act, when the Commissioner makes the positive determination. The current event log does not capture this.

Reversals of Deemed expiry acceptances have dated letters however, the 'effect' of the acceptance is that the deemed expiry never occurred. The acceptances on patent term expiry reversals do NOT indicate the signing date for this reason. The event log does not capture this.

Non-response to an Intent to Refuse. If no new reinstatements are received, or the time has run out on the 12 month period AND no response was given to the one month Intent to Refuse letter, then the Intent to Refuse serves as the final determination. The date of deemed abandonment is unchanged. The date of deemed expiry remains the date of the last triggering (unpaid) anniversary.

Final Determinations of Refusal: The letters are dated accordingly, but the date of significance, the date of deemed abandonment remains is as it was. The date of deemed expiry (if the reversal is refused) is the date of the last unpaid anniversary.

Broader discussion:

CIPO clarified that our current events reflect when items were processed. The legal date of reversal does not currently have an event recorded with it, but it can be found by relevant data. Currently, the date is the date CIPO sent the letter.

CIPO noted that they would shortly be publishing some information on GRTK.

CIPO also indicated that they would welcome IPIC to share any of their experiences with the USPTO to see whether our experiences align.

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9 Conclusion

The date for the next Patent Practice Committee meeting is set for November 12; it will be determined later if the format will be hybrid.

The meeting adjourned at 4h16.

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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