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

 

 

 

 

Trademark and Patent Agent Exams in Canada -Rates

I wanted to share some research on pass rates for the TM and Patent Bar exams in Canada.

 

It should be noted that one has to qualify to write both the Patent Agent and Trademark Agent qualifying exams, and even accredited lawyers need to go through these exams.  I used to whine 😯 about how hard they were, but we’re on the front line and it takes a lot of training to fight for the rights of noble innovators and trademark holders!

(Fair Use, don’t you agree? – apologies to the talented Bill Murray in STRIPES)

and we can feel pretty proud of our skills, and in most cases, persistence, when we pass these exams.

 

Table 1. Canadian Patent Agent  Qualifying Exam passed/wrote in Numbers (sourced from Patent Agent Qualifying Examination Report)

Year Wrote Paper A

(patent application)

Wrote Paper B

(Validity)

Wrote Paper C

(Respond to Requisition)

Wrote Paper D

(Infringement)

Pass/Wrote overall
2012 174 186 97 142 17/231
2013 170 174 186 149 28/218
2014 156 141 62 119 40/196
2015

 

Table 2. Canadian Trademark Agent Qualifying Exams Passed/Wrote*

Year Pass Rate
2014
2013 18/67
2012 4/45

 *data kindly provided by CIPOexams as these are not published

CETA Trade Agreement: Europe and Canada

The Comprehensive Economic and Trade Agreement between Canada and Europe, or CETA, was published September 26, 2014.

The text may be found here:

http://www.international.gc.ca/trade-agreements-accords-commerciaux/agr-acc/ceta-aecg/text-texte/toc-tdm.aspx?lang=eng

There is a lot of information about tariffs on certain levels of imports and exports, fairness, business travel… The people who prepared this document have won a place in the heaven of trade administrators, for it is indeed exhaustive.

By section 21, I could not make myself read anymore.

I went up the urls until I found a summary about the IP, which I translated into English For People Who Don’t Like Long Careful Paragraphs Designed Not to Piss Anyone Off:

  • Copyright: CETA echoes the recent Copyright Modernization Act, supporting  copyright owners while allowing Internet service providers, educators, students and businesses the tools they need to use new technologies in innovative ways.
  • Geographical indications: Canada already recognizes geographical indications for wines and spirits. CETA adds recognition of EU geographical indications for foodstuffs, such as certain meats and cheeses.
  • Patents: Pharmaceutical patent extension, balanced by needs of Canadians for affordable drugs. The policy background is that we want to keep and bring science jobs and investments to Canada.  I know there are a lot of whiners who don’t like patent extension, but if you want good pharmaceuticals, good jobs, and good tax income for Canada, suck it up.
  • Counterfeit goods: Counterfeit goods are often crappy, can be dangerous, and are definitely unfair to innovators and designers.  Enforcement that is efficient is the goal.

No doubt there will be a few bumps along to road to getting all this implemented, but organized trade which promotes fairness and trust among nations is a good thing. (Sorry, Martha!)

Designing the Perfect Patent

Recently I have helped clients whose innovations spanned the awkward region between decorative and functional.  Finding a way to help those clients protect their intellectual property has been a recent obsession.

Utility Patents (US), or Patents (Canada and elsewhere) are concerned with functional innovation.  Looks aren’t important.  The term for these types of patents is generally 20 years from filing date.

Designs, or industrial designs (Canada), registered community designs (EU) share the requirement for novelty in appearance.  The duration of these three jurisdictions vary widely, however.  Canada offers only ten years of protection subject to maintenance fee, the US offers 14 years, and the EU offers 25 years.

It is true that the scope of protection offered by design patents is narrower than a regular patent, but in some cases it is enough.   Also, if you have a small budget, design patents are much less expensive to prepare.

Another option for innovators who have designed a label or packaging falls in the TRADEMARK category of intellectual protection.  Functionality is strictly prohibited for trademarks in Canada, but the term of protection extends as long as your trademark is in use (helped by keeping your registration maintained).

 

The TMs, they are a changing’….

I sat in on the Canadian Intellectual Property Office (CIPO) webinar yesterday to hear about what would be different when our trade-mark laws and regulations were updated in compliance with all of our Treaties.

The most heart-warming change is that we can now write “trademarks” as one word, and still call ourselves Canadian.   I feel emotional just thinking about this.  I AM NOT KIDDING! 😀

Less simple, we will (when the changes are brought into law), have an easier time obtaining a filing date for our trademarks. Additionally, for a proposed use mark, there appears to no longer be a requirement for filing evidence of use when the mark is approved! 🙄

One of the attendees asked a good question:  will CIPO add more staff to the Oppositions section to accommodate the eventual increase in oppositions (in light of the fact that some of the requirements for establishing a registered trademark are being waived).

They didn’t have an answer ready, but I’m pretty sure I heard a pencil scratching out a note at the CIPO end of the phone line. 😳