Patent Practice Committee Meeting PB/IPIC –

February 4, 2025

Tuesday,

February 4, 2025

, from 1 to 3 pm (ET)

Hybrid (videoconference and in person) – 50 Victoria Street, Gatineau, Quebec, Phase I, 4th floor boardroom.

On this page

• Attendees
• Items
  • 1. Introduction
  • 2. CIPO updates
  • 2.1 CIF Additional Term
  • 2.2 Examiner initiated interview Service
  • 2.3 Roundtables
  • 2.4 Government update
  • 3. Backlog
  • 3.1 Backlog Issues
  • 3.2 Abandonment Data
  • 4. Digital Services (CDAS and CPD)
  • 4.1 Accents
  • 4.2 Revise name of MyCIPO Patents submission types: "Filing of prior art" to "Voluntary submission of references" and "Protest against the grant of a patent" to "Protest against the grant of a patent/filing of prior art"
  • 4.3 Random ordering of inventors in new application submissions and autogenerated petitions
  • 4.4 Submission of correspondence via MyCIPO Patents when application number unknown
  • 4.5 Population of multiple dossiers from a submission against multiple applications/patents
  • 4.6 Interview summaries
  • 4.7 Duplicated submissions filed via MyCIPO Patents
  • 5. Operations (General Correspondence)
  • 5.1 Transmission of national phase status to WIPO
  • 5.2 Disambiguation of submissions made in the wrong application in MyCIPO Patents
  • 5.3 Document descriptions in CPD
  • 5.4 Timing of MyCIPO Patents shutdowns
  • 5.5 Backdated courtesy letters
  • 5.6 Patent notice concerning backdated courtesy letters
  • 5.7 Reissued correspondence bearing original date
  • 6. Examination (Examiner's Report)
  • 6.1 Amendments filed in 2024 not being considered in subsequent examiner's report
  • 6.2 Examiners citing work product of other patent offices
  • 6.3 Methods of medical treatment
  • 6.4 Not all claims listing alternatives are Markush claims
  • 6.5 Objections to Beauregard/computer readable medium claims
  • 7. Administrative Policy (Correspondence and Communications Fees)
  • 7.1 Additional designated establishments
  • 7.2 More time to provide observations in a due care request
  • 8. Client Services
  • 9. Roundtable, Next meeting and closing remarks
• Acronyms

Attendees

Co-chairs: Virginie Ethier and Jenna Wilson

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

Guests: Guillaume Poirier, Saida Aouididi, Marie-Claude Gagnon

Secretariat: Helena Forbes

Items

1. Introduction

V. Ethier welcomed everyone to this hybrid meeting.

2. CIPO updates

2.1 CIF Additional Term

CIPO noted that amendments to the Patent Rules came into force on

January 1, 2025

and set out how the legislative framework for additional term will be operationalized and administered in Canada. These amendments include a determination process for additional term; the number of days to be subtracted in the calculation to determine if there is an additional term; a protocol for the reconsideration of the additional term; and new fees related to additional term. With the coming into force of amendments to the Patent Act and Patent Rules on

January 1, 2025

, Canada has implemented our CUSMA commitment by the expiration of the 4.5 year transition period and now our focus is on implementing the details of the framework prior to receiving applications for additional term. It is important to note that due to the 5 year threshold for the granting of a patent, PB will not start to receive applications for additional term until

December 2, 2025

at the earliest.

CIPO would be pleased to take note of IPIC's views regarding the AT framework, bearing in mind that the framework only recently entered into force. It is too early to assess the functioning of Canada's regime for additional term; the Office would be pleased to share experiences as PB begins processing applications in this area.

Broader discussion:

IPIC followed up on the contact point within IPIC for international questions: it will be Shauna Paul. CIPO noted that WIPO will be conducting a survey with respect to sequence listing.

2.2 Examiner initiated interview Service

CIPO reported that the Examiner-initiated Interview Service will become mandatory in the new fiscal year. The mandatory nature of the interview will be for clear and limited situations and be based in terms of number and types of defects. Examiners will be asked to make a single attempt to contact the agent. Thus, CIPO requests that agents respond in a timely fashion. The intent is to streamline this contacting process, so everybody knows what to expect. CIPO indicated that they will equip examiners with proper PERM paragraphs so there is consistency for the interview process as a whole.

CIPO asked applicants/agents for the following to ensure a smooth and efficient processing of interviews:

• It would be courteous to contact the examiner once a VA is submitted (even if it is only a voicemail) and especially if the examiner is unsure of whether a VA will be submitted.
• Have clear contact information on prosecution correspondence (especially reports and RE) including the individual responsible for the application in the firm.

Broader discussion:

IPIC requested that the list of interview criteria would be published.

2.3 Roundtables

CIPO previously held four waves of roundtable discussions with stakeholders in 2012-13. The information gathered was used to direct the development of information and services that SMEs need to effectively use the IP system. In 2022, CIPO conducted a client satisfaction survey to collect data on service delivery and client needs. The results were mixed with concerns expressed around the lack of information and timely services. Roundtables are now being held, starting last week in Montreal and being held across the country in the next few months. Further information can be found on the CIPO website under Service Strategy, including:

• key barriers and challenges faced by SMEs in filing for IP protection and using IP
• types of tools, services and information that SMEs need to optimize their use of the IP system
• stakeholders
• diversity – experience with CIPO services (SMEs) and groups that represent under represented interests

Broader discussion:

IPIC asked if this was invitation only. CIPO confirmed this was the case.

2.4 Government update

CIPO noted that hiring of patent examiners continues as planned in all divisions. Letters of offer have been sent in Mechanical and BioTech.

Broader discussion:

IPIC expressed concerns about proper training of new examiners. CIPO assured them that learning and continuous learning was a priority and that trainers and mentors have been put in place.

3. Backlog

3.1 Backlog Issues

Issue:

IPIC indicated that they need to know when the backlog of both incoming and outgoing correspondence will be cleared. Agents are now dealing with very disgruntled clients—some of whom are now accusing their agents of lying about filing applications or not having received documents.

It is also crucial that erroneous abandonments be cleared as soon as possible. IPIC's understanding is that examiners are unable to proceed with examination so long as the status of an application is abandoned.

At a minimum, it would be helpful to know what range of incoming correspondence dates CIPO believes they have cleared and for which tasks have been created for analysts or examiners; this would help agents and applicants determine whether OFM or other measures should be taken.

For example:

1. New filings and national phase entries:
   1. Filing certificates for applications submitted via General Correspondence/fax/physical delivery have been sent for submissions up to July 1
   2. Filing certificates for applications submitted via MyCIPO Patents have been sent for submissions up to January 1
   3. Acknowledgements of national phase entry for requests submitted via General Correspondence/fax/physical delivery have been sent for submissions up to July 1
   4. Acknowledgements of national phase entry for requests submitted via MyCIPO Patents have been sent for submissions up to January 1
2. OA (office action) responses and other amendments:
   1. Tasks have been created for examiners for submissions made via General Correspondence/fax/physical delivery up to July 1
   2. Tasks have been created for examiners for submissions made via MyCIPO Patents up to January 1
3. MF (maintenance fee) payments:
   1. Payments submitted via General Correspondence/fax/physical delivery up to October 31 have been captured against the relevant application; however, the piece evaluating the timeliness of the payment has not yet been "turned on"
4. Final fee payments:
   1. Payments submitted via General Correspondence/fax/physical delivery up to October 31 have been captured against the relevant application (not merely determined to be compliant).
   2. Payments submitted via MyCIPO Patents up to January 1 have been captured against the relevant application (not merely determined to be compliant) The payment is put on file immediately upon ingestion (received event), and then processed and accepted (compliant event).
5. Change of agent (appointment/revocation of primary agent, associate agent):
   1. Changes of agent submitted via General Correspondence/fax/physical delivery up to October 31 have been applied (not merely determined to be compliant)
   2. Changes of agent submitted via MyCIPO Patents up to January 1 have been applied (not merely determined to be compliant)
6. Recordals of transfers, changes of name, registrations of documents:
   1. Recordals/registrations submitted via General Correspondence/fax/physical delivery up to October 31 have been processed
   2. Recordals/registrations submitted via MyCIPO Patents up to January 1 have been processed Similarly, IPIC would like revised target dates for receipt of outgoing correspondence. Clients require application numbers in order to properly instruct annuity services and to complete their own records. Applicants are now receiving examiner's reports before even receiving a filing certificate. In some cases, the lack of a filing certificate is hampering the filing of priority claims in other jurisdictions.

CIPO's response:

CIPO observed that IPIC had raised a large amount of issues and will do their best to address as many as possible in the time provided. They also noted they are gathering additional information and insight daily based on additional capacity overtime hours that are being invested in the continuous prioritization of issue tickets and advancements and the releases that continue to be planned on both the front and back ends.

The first thing in terms of backlog issues is to differentiate the two filing options or "entry doors": that is, applications filed through the legacy filing mechanism such as general correspondence or fax or paper as opposed to a portal filed application. This will provide context from a visibility perspective and operations perspective. Ultimately, the legacy mechanisms require a fair amount of manual intervention in terms of receipt, processing, and quality control before it is pushed to the back end system. When it is pushed to the back end system, it becomes visible within CPD if the application is published and the submitted content is of a publishable type. There have been some challenges with regards to specific types of incoming applications, specifically divisionals and applications that have had a combination of requests (e.g. maintenance fee paid, request for examination, special order, etc. at the same time as an application). CIPO is addressing these, particularly with respect to divisionals, but ultimately, that data is slower to be processed: sub-elements need to be submitted manually from legacy system, whereas portal filed elements will go straight to the back end system. For our operations teams, there is no difference based on the filing source; however, portal filed content are seen by the team faster if there are delays in the manual processing.

In terms of filing certificates, for legacy filing, CIPO asserted that they are not running onto the issues that they had mentioned in terms of divisionals from approximately mid-January 2025 onwards. They are still having issues sending service requests in terms of combinations on new applications when they came together in a package via ICU. A filing number is required to be able to make and process a request for examination, special order, or PPH, etc. or otherwise make a submission on an ICU-filed application; the issue is the sequencing of these requests. CSC was providing application numbers on request for cases where the filing receipt had not yet been sent. Once the combination issue is resolved, the older submissions will be processed by priority.

IPIC asked about cases where they might need the application number, particularly when it is time sensitive, in order to, for example claim priority. CIPO indicated that the CSC can provide an application number on request. IPIC indicated that, although CSC has been quick in replying with application numbers, they did not want to overwhelm the CSC. CIPO replied that particularly when it is time sensitive or there is a potential impact to rights, this is an appropriate mechanism.

CIPO indicated that applications that have been pushed to backend system (SP) directly through the portal or having been previously filed for which the number is already provided are currently within the service standard.

CIPO further explained that ensuring the correct processing of priority applications for divisionals was an issue because the system expects specific dates in specific fields. Divisionals are exceptions because they take on the dates of the parent applications: thus, unexpected issues have been experienced with the handling of divisionals. As of last week, this issue has been unblocked, and CIPO can now process divisionals and provide a clearer picture with respect to divisional backdated filings.

With respect to amendments, this is a known issue. The issue on the CPD is in terms of specific erroneous statuses which stem from the need to process those amendments in a timely manner and then enable the data correction to reflect the correct status. Processing of amendments is a high priority for the team right now in terms of both regular time capacity and overtime hours. Data correction is also a priority so that status can be corrected. CIPO is aware of the significant impact from incorrect statuses based on OFM perspectives, client input perspective, webinar and blog perspectives and other feedback. This refers to both voluntary amendments and responses.

CIPO indicated that the 3 priorities of the operations team are divisionals, amendments, and Notices of allowance.

CIPO further noted that another priority area is the processing of final fees. An IT issue existed until mid-November, which is now resolved. CIPO indicated that the team is now ramping up, gaining familiarity, and achieving minimum baseline of functionality on a weekly basis.

CIPO suggested it might be possible to publish current wait times and dates for key incoming and outgoing processes.

Broader discussion:

IPIC inquired about how prioritization works within this context. CIPO explained prioritization from a processing or operational perspective takes into account inventories and existing delays as well as impacts on downstream processes for clients and examiners. From a technology perspective, this means ensuring that issues impacting operational processes are addressed in a timely manner and are balanced with the ongoing continuous improvement prioritized outlined in the roadmap. In operations, the concept of tiger teams is also utilized, so there are dedicated resources to specific issues. IPIC noted that the issuance of NOAs seems inconsistent with some days being zero, and others having significant volume. CIPO suggested that it will become the norm to have more significant volume. Stakeholders have asked about updates and how the current status aligns with the road map. IPIC suggested having updates on the CIPO website with updated timelines and that previous dates were not met. Some clients are not believing agents; thus, it would be helpful to have some official recognition of the situation. IPIC also noted that the delay on final fees can affect business realities such as staffing and legal issues. IPIC inquired as to when the timeline for publishing these updates was envisioned. CIPO noted that it would be good to have it in place before the webinar. IPIC observed that they try not to overburden the office, but it is difficult to know what is an unusual delay in the current situation.

3.2 Abandonment Data

Issue:

IPIC requested information on whether the Office can supply deemed abandonment data, broken down by month, starting with about 2021 and on an ongoing basis. For example, January 2021 – 250 deemed abandonments, etc. IPIC observed that this information is extremely difficult to extract from the bulk data.

CIPO's response:

This discussion was postponed as it is a long term question.

4. Digital Services (CDAS and CPD)

4.1 Accents

Issue:

IPIC noted that with TechSource, it was not possible for entries to include accented letters. They then enquired if this is still the case with NGP?

CIPO's response:

CIPO indicated that our system handles accented letters; however, for the moment, correspondences do not reflect the system data as they are not being reproduced. This is a known issue and will be fixed. CPD and backend system will show accented characters.

Broader discussion:

IPIC noted that CPD supports colour in pdf and asked if this would this result in changes CIPO replied that they do not transform documents that are stored in our document system.

4.2 Revise name of MyCIPO Patents submission types: "Filing of prior art" to "Voluntary submission of references" and "Protest against the grant of a patent" to "Protest against the grant of a patent/filing of prior art"

Issue:

IPIC indicated that in the list of submission types, the Office distinguishes between a "protest" under section 12 of the Patent Rules versus a submission of prior art under section 34.1 of the Patent Act.

However, as the Office has no doubt noticed, third parties objecting to the grant of a patent seldom distinguish between a "protest" and a submission of prior art, often calling both a "protest".

Furthermore, most submissions of references come from the applicants themselves, and of course they seldom provide much of an explanation of the pertinency of the references as required by subsection 34.1(2) aside from perhaps mentioning that the references were discovered during the examination of a foreign counterpart. However, the mere fact that the applicant submits a reference is not an acknowledgement that the reference is citable prior art; therefore, applicants are reluctant to characterize a submission as "prior art".

IPIC suggested these submission types to be renamed:

• "Filing of prior art" to "Voluntary submission of references" (or something that does not indicate prior art)
• "Protest against the grant of a patent" to "Protest against the grant of a patent/filing of prior art". IPIC noted that currently "Filing of prior art" requires the submitter to upload an "explanation" document. It would be preferable if this were optional rather than mandatory to use MyCIPO Patents, since sometimes there is no separate explanation document.

CIPO's response:

CIPO indicated that this this issue had already been brought to our attention and is already captured in our backlog as a medium term improvement. CIPO cannot reshuffle the flows as suggested for technical reasons, but the change already approved by policy will be:

"Filing of prior art" submission type (i.e. name of service request) updated to: Filing of prior art or submission of information (FR: Dépôt de dossiers d'antériorités ou soumission de renseignements) and the document types available in the service requests to be renamed:

Filing of prior art or submission of information – explanation (FR: Dépôt de dossiers d'antériorités ou soumission de renseignements – raisons) and Filing of prior art or submission of information - document(s)" (FR: Dépôt de dossiers d'antériorités ou soumission de renseignements - document(s)). While this has not yet been updated, it is planned.

CIPO further indicated that while the explanation document is technically required, from a content point of view, it can simply be a letter saying that they are enclosing prior art with the usual disclaimer, etc.

CIPO explained that the same flow exists in the backend for both types of submission (third party or applicant). While they have different paths, they need to come in via the same "door".

4.3 Random ordering of inventors in new application submissions and autogenerated petitions

Issue:

IPIC indicated that when a new application is filed via MyCIPO Patents, both the draft submission and the automatically generated petition list the inventors in a different order than that submitted (although the ordinal assigned to each inventor remains consistent). For example, the petition of an application with five inventors lists the inventors in the order 3, 4, 2, 5, 1. This order is not alphabetical by first or last name, either.

IPIC questioned why this is happening, and asked if the petition could reflect the order in which names were actually input.

CIPO's response:

CIPO noted, in theory, the ordering of inventors is not random: it is controlled by the user as a field in the data entry. As the order is specifically indicated in the documents and is sent to the backend, this number is used to order the inventors. While this reflects the planned operation, testing has indicated that issues exist, and a ticket has been created.

4.4 Submission of correspondence via MyCIPO Patents when application number unknown

Issue:

IPIC noted that it is impossible to submit correspondence via MyCIPO Patents if the submitted document does not have an application number. Furthermore, IPIC maintained that applicants are entitled to communicate with the Office even if they do not know the application number.

IPIC then questioned if there will be a function to permit parties to submit correspondence via MyCIPO Patents without providing an application number? If so, when? And if not, IPIC suggested that this is sufficient reason to maintain General Correspondence for national applications in the future.

CIPO's response:

CIPO responded that CSC can provide the application number upon request, based on other available information (e.g. the agent reference number, the parent number for a divisional, etc).

The MyCIPO patents portal cannot technically intake submissions without an application number, given that it has a direct connection to the backend to send the content to the selected file.

Broader discussion:

IPIC notes that agents are very concerned about the loss of general correspondence as an alternative. CIPO noted that paper and fax will still be there even when general correspondence is gone.

4.5 Population of multiple dossiers from a submission against multiple applications/patents

Issue:

IPIC noted that Pre-NGP, they were given to understand that when a submission is made against multiple applications or patents (e.g., recordals, appointments of agent), that correspondence is supposed to appear in every file history in the CPD, but this was often not the case.

It still appears to be the case, from the CPD, that these submissions are still not being added to all file histories. IPIC inquired why, and when will this be fixed?

CIPO's response:

CIPO inquired whether this is an issue with migrated or new content. CIPO further noted that an additional nuance is whether any of the multiple/bulk files are non-OPI (open to public inspection). There's logic within the process to publish to CPD, such that if even one associated file is non-OPI then the correspondence does not appear in any of the associated files.

Broader discussion:

IPIC indicated that on Nov 7, a transfer was submitted against 3 applications, taking ownership, but there is no record of this in CPD yet. CIPO noted transfer documents are not published, but confirmed that the confirmation of submission should be visible on the portal. IPIC elaborated that they submitted a transfer and then an appointment of agent, and an error message was received saying certain transactions are not currently being processed. CIPO replied that the appointment of agent issue should be resolved in the next week, and the transfer issue should be resolved shortly. IPIC inquired whether, when NGP is fully functional, it is the intention that correspondence should be published in CPD. CIPO replied that it depends on the document in question.

4.6 Interview summaries

Issue:

IPIC inquired whether it is possible now, with NGP, to do one of the following:

• send a notification to the applicant when an interview summary is added to the file history?
• send the interview summary itself to the applicant? If not currently possible, can this functionality be added in the future?

CIPO's response:

CIPO noted that adding a further mailing step to the interview process renders it even more complex than the report process that it purports to replace. The interview record should appear on the CPD a few days following an interview with an examiner. That said, a notification service associated with CPD could be an improvement considered once NGP is stabilized.

4.7 Duplicated submissions filed via MyCIPO Patents

Issue:

IPIC indicated that it appears that on occasion, submissions by MyCIPO Patents result in duplicate entries of documents in the CPD, or even on the submission receipts issued in MyCIPO Patents.

For example, multiple claims (or other documents) appear with the same date; or in a submission against multiple applications, the receipt lists applications twice. Several examples were provided

CIPO's response:

CIPO noted that a similar issue had been seen and presumably fixed. It is unclear if these examples are due to the fix being incomplete. At least one of these is related to a known issue which is in the process of being resolved. While the root cause is fixed, the affected files are not yet corrected. The duplicates will be removed once more urgent corrections have been prioritized. CIPO also observed that there is a nuance here: this is a case of duplicated documents rather than duplicated submissions.

5. Operations (General Correspondence)

5.1 Transmission of national phase status to WIPO

Issue:

IPIC noted that PatentScope provides information on national phase entries of international applications. They inquired about how this information is transmitted to WIPO? Is it provided only as part of the bulk data released by CIPO that is freely available to the public, or are there special transmissions of national phase data to WIPO? If the latter, how frequently is this done?

CIPO's response:

This will be dealt with offline due to the full agenda.

5.2 Disambiguation of submissions made in the wrong application in MyCIPO Patents

Issue:

IPIC asked about the scenario when a submitter files a submission intended for application XXXXXX (as clearly indicated on the correspondence) against application YYYYYYY in MyCIPO Patents, will the Office consider the submission to have been filed in XXXXXXX, or YYYYYYY?

In other words, when the submission is reviewed by a human, will it be transferred to the correct application?

And in which circumstances will this not be done? For example, maintenance fee payments submitted via MyCIPO Patents are applied without human intervention in most cases; is there anything else?

On a related note, when a submitter chooses the wrong document type when making a submission via MyCIPO Patents, what happens? For example, is a task automatically created for the wrong analyst, who must then create the correct task, causing delay?

CIPO's response:

This will be dealt with offline and discussed in the webinar.

5.3 Document descriptions in CPD

Issue:

IPIC asked how document descriptions are created for documents submitted via MyCIPO Patents? IPIC questioned whether they are still created by humans and thus potentially inaccurate.

CIPO's response:

This will be dealt with offline.

5.4 Timing of MyCIPO Patents shutdowns

Issue:

IPIC would like to remind the Office that, whenever possible, they would appreciate that MyCIPO Patents unavailability be limited to times outside office hours across Canada, and not simply Eastern time.

CIPO's response:

CIPO indicated that downtime for planned releases has been kept to early Wednesday mornings to limit impact on clients and CIPO staff, while allowing for availability of technical resources to perform the release. At times, CIPO has had to do emergency deployments at lunch hour. There have also been emergency deployments in the evenings for the NCR. Coordination of many people is needed when there are deployments, and it is not feasible to do this at times that are far outside our time zone.

Broader discussions:

IPIC noted that this was prompted by an update on a Friday at 5pm, but continued that the regular Wednesday morning updates seem to be working well. CIPO indicated that ad hoc updates such as the one described may be driven by the availability of IT resources or coordination of deployments of broader shared services.

5.5 Backdated courtesy letters

Issue:

IPIC noted that automated correspondence now emerging from the Office sometimes bears a date months before the date it was actually sent by the Office. For example, an acknowledgement of national phase entry submitted in July 2024 is finally received in January 2025, but the acknowledgement letter itself bears a date of September 2024.

This is inconvenient, and misrepresents the date that the Commissioner was finally able to send the correspondence. This does not appear to be compliant with the Commissioner's general duty to maintain accurate records.

IPIC asked what steps are being taken to ensure that the file history correctly reflects the date that correspondence was sent?

CIPO's response:

CIPO noted that only filing certificates and Acknowledgements of National entry are being sent back-dated.

Broader discussions:

The ST27 event which is captured on CPD would have the proper date. IPIC inquired whether the date of the courtesy letter is being recorded or whether it is the date of the filing certificate. IPIC continued that it would be helpful to have a public announcement which explains the discrepancy between the two and a list of which documents are being backdated.

CIPO noted that with respect to host correspondence, there was previously dissatisfaction because they did not store our host correspondence. When a copy of the filing document was requested, a regeneration on the current template was sent, as opposed to a real copy of the letter. With the new system, this is not done anymore. Even the host correspondence is generated on pdf and is stored on file, so an exact copy can be provided. Thus, this is the downside of that improvement. However, when the host correspondence needs to be re-sent to change a date, this could be accomplished.

5.6 Patent notice concerning backdated courtesy letters

Issue:

IPIC noticed that they would appreciate having the Office issue a practice notice, available on the CIPO website, acknowledging that in view of the delays incurred after the launch of NGP and MyCIPO Patents that many pieces of automated correspondence bear a letter date that may be several weeks or months in earlier than the date that it was actually sent by the Office. That way, agents will be able to show this notice to foreign clients, and also retrieve a copy of the notice to include in file histories should the pendency of a patent application be raised in subsequent litigation.

CIPO's response:

CIPO has noted the concerns.

5.7 Reissued correspondence bearing original date

Issue:

IPIC reported an instance in which they discovered a CNOA during a status check that they had not yet received. The CNOA was dated November 25; it was discovered in the CPD in mid-December. In response to their OFM (online feedback mechanism), the Office simply re-sent the CNOA with a more recent letter date but the same due date.

This gives rise to some questions concerning Office policy and operations:

• What is the Office's policy concerning the due date of re-sent correspondence when the Office accepts that the original correspondence was not sent? Under what circumstances will the Office revise the due date of a notice? Or, put another way: what is Office policy concerning timely transmission of due date bearing correspondence? Does the Office consider a notice timely sent when it is dispatched within a week of the notice date? two weeks? three? a month?

CIPO's response:

CIPO replied that MOPOP 2.02.09b defines office practice for allegations of missing communications from the Office or the Commissioner. The Office would withdraw a communication and issue it again with a new due date if (1) the Office determines that an error or delay in its record keeping in respect of the address on file resulted in the missed communication or (2) if the Office is satisfied that an affidavit or statutory declaration demonstrates that the communication was not received at the address to which the communication was addressed.

CIPO indicated that it would be reasonable to investigate within a week or two. CIPO believed there is no published service standard for this situation, but would investigate further.

6. Examination (Examiner's Report)

6.1 Amendments filed in 2024 not being considered in subsequent examiner's report

Issue:

IPIC reported that agents have noted multiple instances in which reports issued in late 2024 or early 2025 failed to take into account voluntary amendments filed more than a month in advance. They assume that this is due to the fact that the Office has not yet processed all submissions since July 2024.

However, the Office's stringent policy on withdrawing reports means that applicants are deprived of accurate examination, simply because they are able to respond to part of a report. This also potentially results in an additional report, increasing the likelihood of a need to pay for an RCE: had the examiner actually examined the correct pages, they could have identified the defects that actually needed to be addressed in the first report. Instead, a second report may be necessary. It is grossly unfair to expect applicants to pay a further examination fee due to the Office's oversight.

IPIC intimated that this (as well as the backlog) reflects poorly on the Office internationally, since many applications originate from other countries.

CIPO's response:

CIPO indicated that it is aware of the situation and are open to temporary flexibility on the withdrawal of report guidance. Written requests would still be necessary for a report to be withdrawn and each case will be dealt with in a case-by-case manner, as it is currently.

Initial discussion has commenced on what this flexibility could look like. Any temporary changes to the guidance will be communicated as soon as available.

6.2 Examiners citing work product of other patent offices

Issue:

IPIC reported that a couple of applicants received examiner's reports last year that cited EPO or USPTO work products in the same manner as an IPRP. The fact that this occurred with different examiners in different fields gives rise to a concern that there is a training issue.

IPIC requested that the Office please remind examiners that it is not appropriate to cite and adopt foreign patent office work products in the manner that the IPRP is cited. The IPRP forms part of the application file history in a PCT national phase entry; foreign patent office work product does not.

CIPO's response:

CIPO confirmed this is contrary to guidance: it is not something that the Office condones.

That said, the examples provided both come from a single examiner. On one of the examples there was an OFM about this exact situation, and the examiner was reminded that only PCT National phase application can use the IPRP PERM paragraphs, when warranted. The practice does not extend to other foreign prosecutions.

CIPO noted that they also published an EB in 2024, telling examiners that they cannot use the IPRP PERM paragraphs when an application is not the PCT national phase application of the international application having the IPRP cited. The implication should be clear that the practice is very narrow and only applies to IPRPs for the corresponding PCT national phase application.

6.3 Methods of medical treatment

Issue:

IPIC indicated that it appears that some examiners are automatically concluding that any claim with particular language—"modulating", "treating", "preventing", "enhancing", "inducing"—is automatically construed as a method of medical treatment and thus defective.

IPIC suggested that this is entirely improper. It is possible for a claim to be compliant with section 2 even if it contains these words; the claim must be properly construed to determine whether it impinges on the application of professional skill. 3 examples were provided.

CIPO's response:

CIPO noted that this topic originally relates to MMT and the use of certain language. However, when additional information/examples were provided, it became 3 different topics.

1. The first example is about examiners failing to raise objections to claims that are clearly inappropriate and mentioned plants. The application provided did not deal with plants, and it was not apparent what was actually missed in the application.
2. The second topic relates to the completeness of the clarity defects in the reports. CIPO suggested that perhaps the examiners thought that it was self-evident what the issue was based on their proposed suggestion. CIPO will remind examiners of the importance of well-drafted reports with complete explanations of the defects, instead of simply suggesting language for a potential fix.
3. With regards to use of certain language and MMT, the office takes the position that the presence of active steps in a use claim renders it into a method claim. This is outlined in MOPOP 16.10.02 and will be further developed in the upcoming versions of chapter 23 coming for public consultation. An active step in a use claim is not a per se issue unless the use is a medical use. In that case, it would be a method of medical treatment and be identified as a S2 defect. However, if the active step is not related to a medical treatment, i.e. the active step is not a medical method step, the use claim should not be defective under S2 of the Act, as this claim would probably not impinge on the application of professional skills.

At present, the Office practice remains unchanged for product or composition claims having active medical treatment steps and follow our medical use claim practice just described.

CIPO will remind examiners to not use the old 27(4) PERM and instead identify those defects under S2. Also, they will remind examiners to not automatically raise a S2 defect when the language identified in the examples is present in claims, and instead to properly construe those claims.

6.4 Not all claims listing alternatives are Markush claims

Issue:

Some examiners are continuing to object to claims as lacking clarity simply because they recite a set of alternatives, but do not conform to the strict wording of a Markush claim. For example: "comprising at least A, selected from X, Y, and Z" is not unclear.

Subsection 27(4) does not mandate the use of Markush language simply because the examiner thinks the claim could be phrased as a Markush claim. Please remind examiners that it is not their role to force Markush language on an applicant, but simply to construe the claim as presented.

CIPO's response:

CIPO confirmed their agreement with the comments.

There is a 2024 EB on this topic, and the Office will remind examiners about it.

6.5 Objections to Beauregard/computer readable medium claims

Issue:

IPIC reported that some examiners are again objecting to CRM preambles simply because they do not conform exactly to examples given in MOPOP or training materials. For example, the following have been found to be improper:

• A computer program product comprising a hardware computer-readable memory device having computer program logic recorded thereon that, when executed by at least one processor of a computing device, causes the at least one processor to perform operations, the operations comprising:
• A computer program product for [performing a task] using a [system] configured to perform [a defined protocol], the system comprising a control device operatively associated with each of [a first component configured to do X] and [a second component configured to do Y], wherein the computer program product comprises non-transitory computer readable media storing the computer executable instructions thereon that, when executed by at least one processor, cause the at least one processor to: The above claims include language indicating that there is a physical storage medium and that the code/logic/instructions are stored thereon.

An interview was held with the Examiner and Section Head concerning the second example. The Section Head recommended amending the preamble as follows:

• A computer program product comprising a non-transitory computer readable storage medium having stored thereon computer executable instructions for [performing a task] using a [system] configured to perform [a defined protocol], the system comprising a control device operatively associated with each of [a first component configured to do X] and [a second component configured to do Y], wherein the computer program product comprises non-transitory computer readable media storing the computer executable instructions thereon that, when executed by at least one processor, cause the at least one processor to: IPIC observed that this suggested amendment makes absolutely no difference and suggests that examiners do not actually understand how to examine CRM claims.

A third example of a claim that was objected to is the following:

• A non-transitory computer readable medium encoded with non-transitory computer readable instructions for [performing a task], the non-transitory computer readable instructions comprising:
• an instruction for [a first method step, beginning with a gerund];
• an instruction for [a second method step, beginning with a gerund]… As the medium is clearly not transitory (not physical), IPIC suggested that the lack of the word "stored" or "storing" does not negate the fact that instructions must be stored thereon—because the medium is not transitory. Indeed, MOPOP 22.08.04 provides an example of an acceptable claim that does not require a "storing" word:

3. A computer readable memory having recorded thereon statements and instructions for execution by a computer, said statements and instructions comprising:

• code means for performing an initial channel assignment;
• code means for comparing the channel assignment with predetermined constraints to determine a difference; Further, IPIC asked while the third example does not explicitly recite that the code is "for execution", adding those words does not change the scope of the claim either—what else are instructions for?

CIPO's response:

CIPO noted that a brief analysis of the three examples given would indicate that the wording used by the applicant appears to be acceptable.

Although the exact wording from chapter 22 of MOPOP was not used, someone could conclude that it falls within the realm of acceptable language.

It appears two of the applications were not selected for quality control from the section head at least for the latest action from the examiner. CIPO recognized that this might not necessarily have fixed the issue, but it could have helped the situation.

Furthermore, as noted in the counter examples, potential issues in claim language are not always raised even when it appears they should. This seems to highlight either a lack of consistency in how examiners approach these claims and/or the need for some refresher training on this particular topic.

CIPO noted, Chapter 22 of MOPOP is presently in revision and should be ready for consultation in the near future. It should be a great opportunity for both the Office and the agent community to ensure the chapter clarifies expectations when it comes to computer-readable medium (CRM) claims.

In the meantime, the Office is also creating a small working group to work with the practice and training groups in order to improve the consistency in the short term.

Broader discussion:

IPIC questioned whether preamble changes could fall under the interview service. CIPO replied that it could potentially, but Section 2 defects will not be required to be addressed by interviews. IPIC requested that examples be provided in terms of what defects would require an interview when this guidance is published.

7. Administrative Policy (Correspondence and Communications Fees)

7.1 Additional designated establishments

Issue:

IPIC requested that particularly in view of last year's Canada Post strike, the Office add courier services to the list of designated establishments under subsection 10(1).

IPIC realizes that nationwide access is a concern—but they are not aware of any rule preventing the Commissioner from designating smaller courier services that service remote regions in addition to larger services such as FedEx and DHL that serve more populated regions.

CIPO's response:

The Office has reviewed the request to add couriers as designated establishments, but at this time, the Office does not intend on adding new designated establishments. CIPO is committed to providing a modern client service experience and work environment for our employees and this means moving away from paper applications. The Office encourages clients to use MyCIPO Patents.

CIPO hopes that clients will enjoy the benefits of using the new system to submit patent applications. This includes:

• Increased visibility: Track and share with colleagues your submissions and drafts with ease;
• Confirmation of actions:
• Receiving immediate confirmation of your submissions;
• Bypassing our incoming correspondence queue: Benefit from faster processing times;
• More control over the process: Manage your patent correspondence by sending your information directly to our back-end system; It should be noted that at this time, submission through Fax remains an option in cases where there are barriers to submitting correspondence online or through the mail.

7.2 More time to provide observations in a due care request

Issue:

IPIC requests that the Commissioner provide at least two months to provide further observations in response to the intent to refuse letter, or permit applicants/patentees to request an extension of time to respond.

IPIC remarked that one month is too short a timeline, especially when the intent to refuse letter is sent over the holidays.

CIPO's response:

CIPO took note of the suggestions regarding providing at least two months to provide observations or to request an extension of time to respond.

Presently, the Office may consider a request for an extension of time provided there are exceptional circumstances justifying the extension.

Broader discussion:

IPIC noted that one month is not a common deadline. CIPO will consider the suggestion further. The question was prompted by a case where it was difficult to contact the Office to clarify something in the letter.

8. Client Services

Issue:

IPIC indicated that no issues were identified; only appreciation for how helpful they have been.

Broader discussion:

IPIC also noted that OFM answers are not always addressing the question. CIPO asked IPIC to provide examples, and observed that while templates are helpful, they should be used mindfully.

9. Roundtable, Next meeting and closing remarks

The date for the next Patent Practice Committee meeting is set for June 10; the format will again be hybrid.

The meeting adjourned at 3:15 pm.

Acronyms

| Acronyms | Definitions |
| --- | --- |
| CDAS | CIPO documents access system |
| 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 |
| 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:

2025-07-22