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