Practice Notices at the Canadian Intellectual Property Office – the Simpleton’s Guide

In Canadian patent and trademark practice, there is the law, the regulations containing more detail about how to comply with it, the Examiner’s Manual for each Practice (patents, trademarks), and then these cute little Notices from the Office on “practice”.

 

Trademark Practice Notices

Patent Practice Notices

Student: Oh wise old woman, which do we need to read, the Law, the Regulations, the Manual or the Notices?  

Wise old woman (looking pretty good for her years): Well, all of them, of course!  [Aside] That’s the rest of your life for you, young whippersnapper, because there are frequent updates.

 

There is always a statement with the Notices:

“In the event of any inconsistency between the notices and the applicable legislation, the legislation must be followed.”

 

Student: What prompts the issuance of these tiny authorities?

Wise old Woman: Often there is a recent Court Decision that leads to these notices, and the Practice Notice is intended to update Examiners in an official and public way on changes to practice, even subtle ones.  For example:

Patent Notice: Examination Practice Respecting Medical Diagnostic Methods – PN 2015-02

June 29, 2015

Student: What was the text of this Notice?

Wise old Woman: Too dull for me to reiterate, youngster.  Anyway, go to the website so I don’t get hit with a copyright suit.

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Some notices are statements about what has already been happening, almost an afterthought.

Colour Claims: PANTONE

Publication Date: 2010-12-22

Where an applicant claims colour(s) as a feature of the trademark, pursuant to Rule 28(1) of the Trade-marks Regulations the said colour(s) shall be described.  

Student: What about greyish-blue, or brownish purple?  Is that accurate enough?

Wise old Woman:  No.  But I’d be interested to hear what happened if you said “taupe” in your application.  Get back to me on that.

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Some notices appear to address annoying things that some patent or trademark agent has done recently,  so that no one ever tries it again:

Notice on returning a granted patent certificate

Date modified:

The Canadian Intellectual Property Office (CIPO) recommends that patent owners and agents do not return their original patent grant certificate for processing, unless CIPO specifically requests that it be returned. If during the process of returning a patent to CIPO, the original grant certificate is misplaced or lost in transit or process, a replacement grant copy (certificate) cannot be provided as the Patent Act and Patent Rules do not support such a re-issuance of original documents. …

Student:  Does this mean the applicant has to pay for a new certificate if the Office lost it?

Wise old: You are getting this very quickly, aren’t you?

 

Procedures at Time of Filing (aka, “no refunds”)

Publication Date: 1999-03-10

The Trademarks Office will not refund the application filing fee once an application is received by the Registrar of Trademarks. The fee set out in Item 1 of the Tariff of Fees, that is payable on the filing of an application for the registration of a trademark, is considered to cover the work associated with the filing of the application and is not considered to be dependent on whether or not the application obtains a filing date in accordance with section 25 of theTrade-marks Regulations

Student: That seems pretty clear…
Wise Old:  Yup.

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Student:  Why are there almost three times as many Trademarks Notices as Patent Notices?

Wise Old: Thanks for bringing that up, kid.  The Trademarks Examining Corp is more prolific with its Practice Notices.(as of November 30, 2015).   No answer to your question is available at this time.   It might just be a coincidence.

The scores so far:

Office of the Registrar of Trade-marks:  65 Notices

Patent Office:  24 Notices

 

 

 

 

Canadian Intellectual Property Office to update online filing

Awesome smileCIPO has announced that at the end of July or beginning of August, the online mechanisms for filing patents on line will be updated.

Here’s the CIPO Website Link

Apparently you will be able to request yourself to be added to the trademark agent registry online. This would be more earth shattering if more than 14 people a year passed the examination, but it’s a step.

Also, you will be able to file a patent application from your mobile device!

Wait, what?

I don’t think that one is going to get a lot of usage. However, good on CIPO for trying to stay current!

Personally, I find filing patent applications online to be frightening enough using a big screen computer with a real keyboard, but if there is someone out there who can stomach filing a patent application on his phone, I want to shake his hand for having nerves of steel.  And the sense of a rabbit.

: )

Canadian Patent Practice – Medical Diagnostic Claiming

The Canadian Patent Office has issued another practice notice for practitioners in the pharmaceutical patent field!

Click Here for the Link to the Notice

It is actually quite a good read, patiently walking the reader through the logic of “Data Acquisition” and “Data Analysis” type claims. Examples are provided, which help me feel the concepts in my pilates-hardened inner core.

Where a physical step is an essential element, the claimed subject-matter should satisfy the fickle Section 2 of the Canadian Patent Act. There is more of a challenge with data analysis, as one needs to ensure that the claims incorporate physical steps and not mere mental processes.

Arg!  Why do my experiments NEVER WORK????

Arg! Why do my experiments NEVER WORK????

Patenting Medical Treatment in Canada

Although a little hard to find on the internet (Field Notes: search for practice notices only for trademark practice notices; search for patent notices for patent related practice notices), the Canadian Intellectual Property Office’s periodic official guidance on accepted case law interpretation are mighty useful, if a little confusing.

http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03916.html

Maybe I’m just not suited to patent law; I find some of the discussions about why one thing is patentable and another not patentable to be dizzying, making me want to throw down my pencil and declare defeat.  However, as someone who writes patent and trademark exams for a living (it seems), giving up is not really in my vocabulary.

And, I can feel the principals of essentiality and purposive construction in my gut.  They make sense.

So many words, ‘though.

For example, take this quote from PN 2015-01:

In order to determine whether the subject-matter of a claim is statutory, examiners must take into account the guidance outlined in PN 2013-02, which provides that an assessment for section 2 compliance should be based on the essential elements of the claim as determined by a purposive construction as outlined in Part A of this document.

🙄

Medical use claims: are they patentable in Canada?  Well, it depends.  Not patentable:

Essential elements that point to a limitation of a physician’s professional skill or judgment include those that provide details of a dosing schedule encompassing a range and those that represent a range of potential dosages that a patient may receive (as distinct from a range of dosage forms).

Patentable:

…essential elements that narrow treatment to a fixed dosage, a fixed dosage regimen, a patient sub-population or to a particular administration site…

And that does give us something to go on.   Thank you, CIPO!