Patent Practice Committee Meeting PB/IPIC –

November 12, 2024

Tuesday,

November 12, 2024

, 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 New Deputy Minister
  • 2.2 Conferences and visits
  • 2.3 NGP Overview
  • 3. Digital Services
  • 3.1 Priority List for Future Upgrades
  • 3.2 Change request
  • 3.3 Previous owners in CPD
  • 3.4 MyCIPO Patents is unusable for follow-on international application submissions
  • 3.5 Linking applications filed by other means to MyCIPO accounts
  • 3.6 Guaranteed minimum lifetime of General Correspondence?
  • 4. Operations
  • 4.1 Exactly which types of incoming correspondence are being prioritized, and in what order?
  • 4.2 Prioritizing certain outgoing correspondence
  • 4.3 Processing fee payments submitted by paper/fax/mail
  • 4.4 Update on re-sending correspondence that was previously sent to the wrong party
  • 4.5 Oversized patent package pages
  • 4.6 Pre-grant procedure
  • 4.7 Office practice concerning laid-open date
  • 4.8 Changes to laid-open date due to corrected translation
  • 4.9 Service Fees Act remissions
  • 5. Examination
  • 5.1 Withdrawal of examiners' reports
  • 5.2 Office's response to examples of examiners neglecting interview service and CNOAs
  • 5.3 Timing of examiner-initiated telephone interviews and submission of voluntary amendments
  • 6. Administrative Policy
  • 6.1 Identity of submitters and authors of submissions
  • 6.2 Handling of mismatches between agent's legal name and nickname/English name
  • 6.3 Signature policy
  • 6.4 Agent addresses
  • 7. Roundtable, Next meeting and closing remarks
• Acronyms

Attendees

Co-chairs: Virginie Ethier and Jenna Wilson

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

Guest: Guillaume Poirier

Secretariat: Helena Forbes, Marie-Claude Gagnon

Items

1. Introduction

V. Ethier welcomed everyone to this hybrid meeting.

2. CIPO updates

2.1 New Deputy Minister

CIPO reported that Simon Kennedy, the deputy head of Innovation, Science and Economic Development (ISED), has retired. He has been replaced by Philip Jennings.

2.2 Conferences and visits

CIPO reported that the Office had, along with the Centre for International Governance Innovation (CIGI), co-hosted the 7 th annual IP Data & Research Conference.

CIPO also hosted visits of the representatives of the EPO (European Patent Office) and JPO (Japanese Patent Office). Bilateral discussions covered topics such as modernization, artificial intelligence, training processes, and quality maintenance.

Broader discussion:

CIPO noted that patents are increasingly multi-disciplinary, and this multi-disciplinary trend is also reflected in university programs. IPIC asked how patents that are multi-disciplinary are handled within the Office. CIPO indicated that examiners can trigger conversations with other divisions when necessary, but that perhaps other types of collaboration could be further explored in the future.

2.3 NGP Overview

CIPO shared the current NGP roadmap.

CIPO indicated that an important update is planned in the release of November 27. This release includes a fix for the issue impacting CIPO's ability to send automated correspondence, known as "host" correspondence, including filing certificates / acknowledgements of national phase entry, missed maintenance fee notices, recordal/registration certificates, and Notices of Allowance (NOAs). After this release, sending out of filing certificates / acknowledgements of national phase entry will be prioritized, followed by the resumption of NOAs. While NOAs will not be issued until the November 27 th release, Conditional Notices of Allowance (CNOAs) may commence next week as testing has been very positive and they are custom correspondence rather than host correspondence. Host correspondence will be published on the CPD once sending resumes, and laid open dates will automatically be listed as the date the application was literally laid open.

Over the thanksgiving weekend, there was a refresh of the CPD, which incorporated a re-indexation and regeneration of the XML, that allowed some of the improvements and fixes to be visible. Data corrections to the statuses of applications CPD are ongoing in parallel to the ongoing fixes. This relates to applications that had incorrectly been marked as abandoned. Once these applications are processed, the correct status will be indicated in CPD.

IPIC indicated that a new automated correspondence had been received pertaining to priority documents. CIPO replied that this was not automated; these Acknowledgement of Priority letters are custom correspondence. IPIC asked for the details on conditions on sending this list, and agreed to provide an example to CIPO. CIPO indicated there were also other new types of correspondence introduced with NGP. IPIC asked for a list of these types of correspondence and the conditions that trigger them.

The exact timing of updates to the roadmap will be shared on the list serve and other communication mechanisms.

CIPO estimated that the backlog in processing incoming correspondence should be resolved by the end of January. Delays are on the operation side, examination has a number of allowances ready to go. Currently, a small amount of applications are being granted: approximately 150-160 per week. However, this will gradually increase. The applications currently being granted are those that were in pre-grant status before the launch of NGP. For issues where timing of granting is becoming problematic, CIPO encourages clients to contact the CSC.

The remission letter has a 30 day deadline, and CIPO is required to send them. IPIC asked if it was possible to bundle these letters into groups.

CIPO indicated there is also a hold on issuing any due care "intent to refuse" letters until January because these letters are part of the abandonment and reinstatement workflows that will be recommencing in January. Final refusals on due care cases will resume this week. IPIC pointed out that because of the Office's technical issues, third party rights are being extended by months.

3. Digital Services

3.1 Priority List for Future Upgrades

Issue:

IPIC asked whether the Office would be able to share their prioritized list of future enhancements to MyCIPO Patents.

CIPO's response:

CIPO is not in a position to list this at the moment, but clearly as the system becomes more stabilized, medium term goals will be accomplished.

3.2 Change request

Issue:

IPIC requested, as a future enhancement, that the auto-generated petition in a new application/divisional filing be modified to contain only the minimal information required by Rules 53 and 89(1)(a), and the optional appointment of agent in paragraphs 27(3)(b) and (d): the request for grant, title, name and postal address of the applicant(s), and appointment of agent.

All other information about the application required for compliance (including inventor names and addresses, statement of entitlement, request for priority etc.) would of course be made of record as entered in the new application form, but not be included in the petition.

IPIC suggested that this modification will balance the workload for both agents and the Office in cases where agents choose to file minimal petitions to minimize the risk of a material misrepresentation under section 53 of the Patent Act. Currently, an agent filing a new application via MyCIPO Patents who wishes to file a minimal petition must omit the statement of entitlement and inventor information, and make a separate submission or attach an auxiliary document with that information. This increases the number of documents that the agent must generate and that the Office must process—and the Office must then transfer the information from the auxiliary document to the proper fields in NGP. If the system is programmed to generate only a minimal petition (including agent appointment), these agents would still be able to enter the inventor information and statement of entitlement in the form fields, thus eliminating the need for an Office analyst to manually transfer the information to the NGP record.

CIPO's response:

CIPO indicated that a JIRA ticket had been created. It would be more front-end work; however, and any changes would need to be approved by policy.

3.3 Previous owners in CPD

Issue:

IPIC questioned whether there is an ETA for the inclusion of previous owners in the Owners on Record tab.

Additionally, IPIC asked whether there will be some fix so that inventors who were never applicants do not appear as Owners in that tab.

IPIC also inquired as to the Office's plans to include the applicant at the time of filing in the bibliographic data, and to correct the bulk data products.

CIPO's response:

All three issues are currently in progress, but it is difficult to say when they will be completed. Will have to proceed with the reindexing and regeneration of the XML for any changes to be seen on the CPC side. We will leverage the communication channels when more information becomes available.

3.4 MyCIPO Patents is unusable for follow-on international application submissions

Issue:

IPIC noted that In order to file any submission on a single application, a seven-digit application number must be provided.

This is impossible in the case of a follow-on submission in an international application, requiring the use of General Correspondence.

This is also inconsistent with the MyCIPO Patents User Guide, which indicates that submission can be made in an international application (section 6.1.2 states that "Register a document" can be used to register a transfer of an international application).

CIPO's response:

CIPO responded that MyCIPO patents portal is not intended to be used for international applications. The "Register a document" can be used to register a transfer of an international application on the corresponding NER application. CIPO will review and clarify the user guide.

General correspondence will remain a goal in the long term to receive correspondence on international applications.

Broader discussions:

IPIC inquired if there are there any long term incentives to use MyCIPO rather than using faxes and general correspondence? CIPO replied that there have been preliminary discussions about multi-tiered services standards, but the hope is that efficiency will be an incentive. IPIC pointed out that some agents have reservations about using online submissions. CIPO has provided additional support for some firms that required it. IPIC asked whether there would be further webinars or plans to make the user guide more accessible/readable? IPIC continued that the webinars did not include all required details: for example, that for multiple submissions, the fees need to be added at the end. IPIC notes that since questions cannot be posed in webinars, they can only encompass day-to-day tasks, rather than more complex tasks. IPIC theorized that more glitches, less familiarity with the system are discouraging people. Some firms have been encouraging staff as they see that the use of MyCIPO does provide efficiencies.

3.5 Linking applications filed by other means to MyCIPO accounts

Issue:

IPIC noted that their understanding is that applications filed prior to the initial launch of MyCIPO Patents will never be linked to a MyCIPO account. They wondered if that understanding is correct.

They also inquired if there is a plan to link these applications in future, and to link applications filed by means other than MyCIPO Patents to a MyCIPO Patent account.

If applications filed by other means are not linked, then users may be more likely to use other submission means in future for prosecution and other non-maintenance tasks since MyCIPO Patents will not provide as great a benefit.

CIPO's response:

CIPO replied that the purpose of the link is only to enable access to non-OPI content. Service requests filed on open applications and patents that are not linked to the MyCIPO account can be filed with full benefit of the data available.

Once all applications filed before NGP are published, the only gap will remain in accessing the documents not published on CPD for these applications (e.g. transfers).

CIPO could add a long term ticket to investigate how to retroactively add that link.

Broader discussions:

IPIC inquired what happens if, before being laid open, an application is transferred to another firm? CIPO replied that a new agent can be appointed in the portal.

3.6 Guaranteed minimum lifetime of General Correspondence?

Issue:

IPIC noted that given that the Office must continue to accept new applications filed by means other than MyCIPO Patents, it is impossible to use MyCIPO patents to make submissions on confidential applications filed.

IPIC inquired how users can make submissions via MyCIPO Patents on applications that are not yet laid open?

CIPO's response:

CIPO noted that this is only difficult if the applicant does not have the application number; however, this issue will be resolved once we resume sending of filing certificates.

A user can file any submission on a non-open application if they have the application number, but depending on the submission they may need to enter more information on screen than for an open one.

4. Operations

4.1 Exactly which types of incoming correspondence are being prioritized, and in what order?

Issue:

IPIC noted that its members are still asking for a more granular list of correspondence that is being prioritized. They would appreciate as much detail as possible, as well as information about the dates of various types of correspondence being processed now, especially correspondence filed by means other than MyCIPO Patents. More agents are reporting that their clients are contacting them to ask why their applications appear to be abandoned in the CPD.

Members have also noted the importance of prioritizing revocations and appointments of agent filed by any means.

Also, CSC also recently advised one firm that the Office is currently 16-20 weeks behind on processing General Correspondence. Is this correct?

CIPO's response:

CIPO replied that they expect to be back to regular processing of incoming correspondence, submitted by any channel, in December.

They noted that they are already up to date of processing received documents for reinstatement, maintenance fee, final fee and amendments. These should appear in CPD, but may not be processed yet by PB Operations.

They added that they are working in prioritizing on new applications, requests for continued examination, and change of agent.

While a lower priority, the following are also still being worked on: filing of prior art, request for examination and registration of documents/assignments. These are expected to be back to normal processing standards in December.

CIPO noted that because of the highly increased capacity in the Incoming Correspondence Unit, requests are not always processed in chronological order, thus a more recent request may appear before an older one in the system. But PB Operations prioritizes the tasks based on the order of the reception date. CIPO is still processing a minority of low priority requests that have been waiting 16 weeks, but this situation will be resolved over the next month.

Broader discussions:

IPIC inquired if retracting letters are being sent for abandonments that were sent in error. IPIC asked if an abandonment letter was sent in error, is the process to send letter retracting the abandonment or just to change the data in CPD. IPIC requested that official letters be sent to retract the abandonment.

4.2 Prioritizing certain outgoing correspondence

Issue:

IPIC indicated that they would also appreciate an adjustment of priorities concerning new applications and national phase entries, particularly those filed by means other than MyCIPO Patents.

IPIC noted that while the Office is likely entitled to offer faster turnaround times on MyCIPO Patents submissions as opposed to other correspondence, applicants still have the legal right to submit correspondence by fax, mail, and General Correspondence, and to expect service within reasonable time limits.

IPIC further noted that if applicants do not receive acknowledgements of national phase entry or filing certificates of divisionals in a timely manner, they will likely be forced to pay the next maintenance fee by fax/mail/GenCorr without the benefit of the application number, which will increase processing time in the Office. Also, applicants have limited time to fix filing errors, such as missing parts. They cannot do this if (1) the Office cannot inform them in time of the error and/or (2) if they do not have an application number.

CIPO's response:

CIPO noted that they are still catching up on the backlog of processing new applications and national entry requests. Capacity has vastly increased in the incoming correspondance unit (ICU). They expect to be back to normal processing standards at least by January.

CIPO further noted that while they receive about 200 new applications by week outside the MyCIPO portal, the ICU processed 360 in the week of October 28th and 590 the following week.

4.3 Processing fee payments submitted by paper/fax/mail

Issue:

IPIC reported that along with the backlog in processing incoming correspondence, some agents who tender payment using the fee payment form have reported that their credit cards or deposit accounts have not been charged in months. While some of these pending payments are now being processed, they are being processed out of order due to the prioritization of the backlog.

IPIC noted that this raises concerns about account limits and managing cash flow: should they expect a glut of charges to our accounts as the backlog is reduced?

CIPO's response:

CIPO indicated that this issue has been resolved as of last week. The Office is now processing and validating paper/fax as they come in, under regular standards, such that payment should be seen in the account in the following week at the latest.

4.4 Update on re-sending correspondence that was previously sent to the wrong party

Issue:

IPIC noted that there had been earlier incidents in which correspondence was sent to the wrong party (e.g., correspondence was not sent to the agent rather but rather an associate agent, or to the applicant rather than the agent). The Office had advised that the error was corrected, and that correspondence would be withdrawn and then sent to the correct correspondents. IPIC requested an update and asked when the would correspondence be re-sent.

CIPO's response:

CIPO indicated that these would be resent, with a target date of November 27.

4.5 Oversized patent package pages

Issue:

IPIC noted that once the Office started issuing patent grants again, it was noted that some patent specifications included oversized pages (34.44" x 48.68"). This appears to correspond to pages bearing graphics (chemical formulas).

IPIC inquired whether this has been fixed.

CIPO's response:

CIPO indicated that this issue is captured in CITMNGPT-5383, and addressed on the "Known problems and workarounds" page. The workaround involves using the "Print to PDF" function on your PDF viewer/editor to scale the document to a standard letter size.

4.6 Pre-grant procedure

Issue:

IPIC requested that the Office explain whether the change to "pre-grant" status is given the date of final fee payment, or the date the final fee payment is actually applied by the Office?

CIPO's response:

CIPO indicated that Pre-grant status will be given by the Office, but there is a step in the process for an operations analyst to validate. Where dates are affected, they will not be back-dated.

4.7 Office practice concerning laid-open date

Issue:

IPIC remarked that at the June meeting, the Office's policy concerning the date that an unpublished application is laid open to public inspection was briefly discussed. IPIC outlined their understanding of the policy as:

• from the coming into force of the new Patent Act and until NGP:
  • unpublished applications entering the Canadian patent system (by direct filing or NPE) were deemed laid open exactly 18 months after the earlier of the earliest priority date or filing date
  • that exact 18 month date would appear in the bibliographic data as the open to public inspection date, even if the Office was not open for business (meaning that the public could not attend the Office and inspect files) and the application was not accessible online on that date
• while the CPD currently does not include any applications that were laid open after

July 5, 2024

, there are in fact newly laid-open applications because they are available to the public attending the Office
- however, there is no way for the public outside the Office to know this currently, since the CPOR is no longer published
- going forward, all applications laid open on or after

July 6, 2024

will reflect the date they are actually laid open to public physical or online inspection, which is not necessarily exactly at 18 months
Also, with regard to national phase entries of published international applications, our impression is that they are not uploaded to the CPD until after an acknowledgement of national phase entry is generated.

IPIC requested that the Office confirm or correct this understanding.

CIPO's response:

CIPO replied that in regards to international applications, IPIC's understanding is incorrect.

If an application were published in English or French at WIPO, the OPI date (Open to Public Inspection Date) is the PCT publication date which should be listed on the CPD as soon as the application is confirmed to be filed, which normally would align with the acknowledgement of national entry send. The date publication is still happening as described despite the fact that the Office is not currently sending this host correspondence.

If the application was published at WIPO in another language, the OPI date is the date on which it is made available on CPD after processing of the queue for publishing flow, as with regular applications. The 18 months date is the End of Confidentiality Period Date. In SP it's distinct: currently, there are many applications which are past the confidentiality period which do not yet have an OPI date because the queue for publishing is not yet processed, so they are not yet published on CPD.

4.8 Changes to laid-open date due to corrected translation

Issue:

IPIC asked if a corrected translation is submitted under subsection 155.2(2) after the application was laid open to public inspection, such that the specification is considered to have become open to public inspection on the date of submission of the translation, does the Office update the bibliographic data, or is it assumed that the public must review the file history and figure this out?

CIPO's response:

CIPO replied that as s155.2(4) makes clear, the date of open to public inspection is considered to be the date of the submission of the correction only for the purposes of s55(2) of the Patent Act. For all other reasons the date of OPI remains when it originally was laid open. Therefore, the Office will not be adjusting the bibliographic data. The file history will have to be reviewed to see if s155.2(4) applies.

4.9 Service Fees Act remissions

Issue:

IPIC noted that despite the increased service standards, they suspect that there will nevertheless be many tasks that are not completed within these extended deadlines. IPIC asked if the Office has any estimate how many remissions will need to be paid as a result of the transition to NGP? IPIC further inquired if is the Office planning to issue remissions on all these, or attempt to use the exceptional circumstances exclusion?

IPIC commented that given that the delays we have all experienced were not "unforeseen" and were within the Office's control, these should not be considered to be due to exceptional circumstances.

CIPO's response:

CIPO indicated that while this issue has been discussed, no decision has yet been made. Focus continues to remain on the processing of the service requests, both in ICU and Operations, and because of the way the remissions policy is made, determination of whether remission is warranted can only be done once the task has been processed.

5. Examination

5.1 Withdrawal of examiners' reports

Issue:

IPIC noted that they had previously raised concerns about poor quality reports that would not be withdrawn in view of the Office's policy. We continue to be concerned, since some of these poor quality reports are egregious (e.g., a report with only a prior art defect, citing a reference that is not citable under Canadian law).

IPIC continues to be concerned with the policy on withdrawal of reports because of the added cost of RCEs. It is unfair to applicants to force them to spend an additional $1100 to respond to a third report, when that third report was necessitated due to the examiner's clear error.

IPIC understands the need to reduce latency and move prosecution "forward"; however, issuing erroneous reports does not move prosecution forward, either. IPIC would like the Office to reconsider this policy in view of the additional cost of RCEs.

Even if the Office refuses to revise their policy, IPIC suggested some other mitigation measures might be possible, for example:

• enhanced quality assurance for reports that include an RCE – perhaps third reports could be subject to additional review by the section head
• mandatory examiner-initiated telephone interviews for a wider range of defects

CIPO's response:

CIPO replied that quality of prosecution is a shared responsibility. While the goal is to strive for higher quality on the part of the patent branch that is not going to be entirely possible as a result of human error by both examiners and agents.

While the Office will continue monitoring the withdrawal guidance, CIPO does not see a reason to change it at this time. However, CIPO is working towards making the interview service mandatory and are planning data gathering projects to evaluate whether additional targeted QC steps will help reduce occurrences of reports with few defects.

Broader discussion:

IPIC inquired whether deferral due to unity will be changing too? CIPO replied that this practice would not be changed yet, but would be pursued in the long term. CIPO further indicated that mandatory interviews are planned to be introduced in spring of 2025. IPIC indicated concern that examiners might look for other defects to justify a report. CIPO replied that data gathering would help the Office to understand what practices will work best in the introduction of mandatory interviews.

5.2 Office's response to examples of examiners neglecting interview service and CNOAs

Issue:

IPIC indicated that this summer, CIPO was provided with a number of examples of examiner's reports containing only minor defects that clearly could have been handled in an examiner-initiated interview or a CNOA. Those examples may have only been provided by one firm, but IPIC assures the Office that this is a common experience.

At that time, CIPO had replied that Patent Branch Exam Practice and Quality teams would be informed and that IPIC would be updated at the next PPC.

IPIC would like to hear about these deliberations, and would like to know what actions the Office will take to reduce the incidence of these types of reports.

CIPO's response:

CIPO indicated that a review of the submitted reports was done. In some of the applications, the legitimacy of the defect was validated, making any action for withdrawal against current guidance. In others, there did appear to be a mistake by the examiner but the report was otherwise acceptable and so would not have been withdrawn, according to current guidance. The Office is working towards making the interview service mandatory and are planning data gathering projects to evaluate whether additional targeted QC steps will help reduce these occurrences.

5.3 Timing of examiner-initiated telephone interviews and submission of voluntary amendments

Issue:

IPIC indicated that it appears that not all examiners are following the same timeline regarding interviews and voluntary amendments. It was reported that an examiner left a voicemail for an agent advising of the need for a VA; the message required the agent to respond within one week to confirm that a VA would be filed (not merely a confirmation that the voicemail had been received), and to file the VA by the end of a further three weeks (for a total of four weeks). This contradicts prior expectations, particularly to inform the examiner within one week that the applicant agrees to the VA. This is not a workable timeline, particularly with foreign applicants who may not be fluent in English or French.

IPIC does not know if this examiner is an outlier; however, they are concerned that this may be linked to the onboarding of the new examiner cohort, and worried this may be further promulgated through the rest of the examining corps.

CIPO's response:

CIPO replied that while the use of voicemail in this situation to deliver the message is not appropriate, the timelines given are roughly correct. When applicants are not in a position to immediately know whether an amendment will be submitted, examiners are instructed to give a deadline of a week for an indication on whether an amendment may be submitted and then a further 3 weeks for the amendment itself. While these are quick timelines, the office cannot wait a long period for an indication of whether an amendment is coming. Where agents are uncertain and the week is not long enough, then the Office could recommend saying that a voluntary amendment may be coming. This would engage the 3 week deadline, and if no amendment ends up being authorised, then an examiner's report will be issued after this period expires.

6. Administrative Policy

6.1 Identity of submitters and authors of submissions

Issue:

IPIC asked the Office to consider the case where a letter with instructions to the Office (e.g., a change of address) is written on a first agent firm's letterhead and signed by an agent member of the first firm, but submitted by General Correspondence by a second agent. The General Correspondence form reflects the second agent's contact information.

IPIC then inquired whether there is any administrative policy requiring the submitter of correspondence to be the same as the author and signer, or at least requiring the submitter and author/signer to be members of the same organization? If so, where is this policy published?

CIPO's response:

CIPO replied that the documents are used, in part, in the verification of the identity of the person making a submission. Where the identity in the documentation differs from the agent on record in our database, there is uncertainty created around who made the submission, and whether they were authorized to do so. The documentation forms part of the public record of the file, and the display of a wrong agent of record on these documents is misleading. The Policy on disregarded communication is detailed in section 5.09 of MOPOP, where it indicates that the Office will have regard to written communications from persons authorized to represent applicants or patentees, where all other communications will be disregarded (with certain exceptions). It is the Office's position that where the author of the document is not authorized to communicate with the Office, the document may be disregarded.

The Office, however, does not take the position that the submitter must be the same as the author and signer. Instead, the submitter must be authorized to make a submission, and the author and signer of the associated documents also must be permitted to perform those actions. This could be different employees at the same firm, for example, where the firm is the agent on record.

Information on who can perform certain actions before the Office are detailed in Chapter 5 of the MOPOP.

Broader discussion:

IPIC provided the example of an agent firm that had to move; thus, another agent filed on their behalf. It could also be an issue when firms merge, and when the letterhead changes. CIPO noted that in NGP, changes need to be applied in a file-specific matter. CIPO further noted that the Office needs to ensure that fraud is not being committed, and that all rules are being followed.

6.2 Handling of mismatches between agent's legal name and nickname/English name

Issue:

IPIC indicated that there has been at least one incident in which correspondence was rejected or questioned because the first name of the agent on the correspondence did not match their legal first name appearing on the CPATA register, although the last names matched. IPIC asked what is the Office's policy regarding the resolution of mismatches between an agent's name on correspondence and in the CPATA register? IPIC further questioned whether inclusion of the agent's CPATA registration number on correspondence would be of any assistance?

CIPO's response:

CIPO replied that our database currently does not permit storing of preferred names, and as such, there would be no manner for the Office to identify the preferred name as a match to the name on record. The Office cannot identify a match based on surname alone. For this reason, it is recommended to use a consistent name with what is on file with the Office.

Broader discussion:

IPIC asked whether the inclusion of the CPATA number might also assist in cases where two agents had the same name. CIPO noted that the CPATA number is captured by MyCIPO, so this issue should not arise when using the portal; however, when submitting by General Correspondence, the CPATA number is checked manually. However, at present, the portal is not yet completely automated. To mitigate this issue at the moment, the Office recommends agents should include their legal name.

6.3 Signature policy

Issue:

IPIC indicated that it appears that there are Office employees who do not recognize an /s-signature/ as a signature. Our understanding is that the COVID-era measures regarding appropriate electronic signatures was never rescinded.

IPIC noted that it would be helpful if the Office published a practice notice confirming what types of signatures are acceptable, and ensured that all employees were aware of the policy.

CIPO's response:

CIPO confirmed that it is true that the COVID-era measures regarding electronic signatures were never rescinded, and /s-signature/'s should be found acceptable by the Office. We will ensure all employees are aware of that these signatures are acceptable.

The Office will consider your feedback about external signature guidance in a future update of the MOPOP.

Broader discussion:

The next publication for MOPOP will be planned in early 2025.

6.4 Agent addresses

Issue:

IPIC noted that they understood from the MyCIPO User Guide that when an individual agent files an application via MyCIPO Patents and is appointed as the agent, their correspondence address is deemed to be the address on file with CPATA. IPIC then asked why this is the case, and why is the same not true for a firm? Is this related to the existence of an "office" associated with the user account in MyCIPO Patents?

IPIC further noted that it also appears that employees in Operations may hold the belief that individual agents and firms must use the same correspondence address as that in the CPATA database. Is there an internal policy on this point, or is this a mistaken belief?

CIPO's response:

CIPO replied that the office of MyCIPO patents is where the information of office address and which agents are associated to that office is maintained.

CIPO confirmed that there is no requirement as to which correspondence address needs to be used. CIPO noted that in NGP, correspondence information is file-specific, i.e. it could differ between files of a same office if that is what is desired.

Broader discussion:

IPIC questioned why certain delays were happening e.g. for a confirmation of submission, the receipt might come the next day. CIPO noted that this is a known and tracked defect, but asked that IPIC please report these errors when they arise. CIPO elaborated that there are two variations: (1) if it is received but awaiting entry into the portal (has not made it to the back end), (2) where confirmation of submission is missing: there is a workaround on the webpage at the moment. The Office recommended printing the page the portal generates as a proof of submission.

IPIC noted that there used to be International analysts listed in the government directory, but these are no longer listed. CIPO replied that job descriptions have changed, but the directory would be updated.

IPIC questioned whether the backlogs in ICU and processing will impact examination downstream. CIPO replied that first actions should not be affected as they have been prioritized subsequent to the

pre-October 3, 2022

wave of REs; however, the choice and selection of cases will be affected in terms of subsequent actions. While the Office does not think IPIC will see an impact in pendency or service standards, it will be a while before CIPO hits a steady state balance between first and subsequent actions. Currently, subsequent actions are at a performance target that is higher than usual due to the delay in processing responses and amendments and also because of the prioritization of first actions from the wave.

7. Roundtable, Next meeting and closing remarks

The date for the next Patent Practice Committee meeting is set for February 11; the format will again be hybrid.

The meeting adjourned at 3:50 pm (ET).

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 |
| CSC | Client Services Centre |
| EPO | European Patent Office |
| FCA | Federal Court of Appeal |
| IGC | Intergovernmental Committee |
| ICU | Incoming Correspondence Unit |
| IPIC | Intellectual Property Institute of Canada |
| ITM | Information Technology Modernization |
| JPO | Japan Patent Office |
| 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 |
| USPTO | United States Patent and Trademark Office |
| VA | Voluntary Amendment |
| WIPO | World Intellectual Property Organization |

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Date modified:

2025-07-22