Creativity Life Cycles : Canadian Trademark Agent and Lawyer : Joshua MacFadden : MacPherson Leslie & Tyerman Law Firm : Patents, Intellectual Property

 The Canadian Patent Office has announced an initiative to enable expedited prosecution of patent applications related to green technology. Under this proposed initiative, the current Patent Rules would be amended to grant advanced examination for such applications, with no additional fee.

To be granted access to the expedited examination service, a patent applicant would be required to submit a declaration stating that their application relates to technology that could help resolve or mitigate environmental impacts or conserve the natural environment and resources, if commercialized. Within two months of receiving a request for expedited prosecution under the new Rules along with the declaration, the Patent Office is expected to produce a substantive office action within two months. The applicant's time to respond to this office action will subsequently be shortened from the standard 6-month period, to a 3-month period.

It is hoped that these amendments to the Rules will foster investment and expedite commercialization of technology that will support the development of a clean energy economy.

This proposal will be recommended for publication for a 30-day consultation period in the Canada Gazette, Part I in fall of '10. At this time, it will be open for submissions relating to the proposal.

More information on this new initiative can be found on the CIPO website.

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The Canadian Intellectual Property Office (the "CIPO") is seeking public comment on the availability of additional information concerning the Industrial Designs Register. 

At present, information concerning industrial design cases available via the CIPO website is restricted to basic information relating to registered cases (i.e. registration no., title, owner, etc.).  Accordingly, as an initiative to modernize service delivery the Industrial Design Office is considering offering additional information via the website.  Specifically, the CIPO has requested that interested parties advise as to:

• what information about industrial designs do you consider useful and/or necessary to have access to in order to conduct business? Why?; and
• whether the information that is made open to public inspection should relate only to registered industrial designs, or also to industrial designs prior to registration?  Why?

The deadline to respond to this request for input is April 19, 2010 by email to the attention of Rita Carreau at: Dessins-Industriels-Industrial-Designs@ic.gc.ca, by fax at 819-953-CIPO (819-953-2476), or by regular mail.

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The Copyright and Industrial Design Branch announced a consultation period (expiring January 8, 2010) to consider the repeal of the Timber Marking Act  (R.S., 1985, c. T-11) and Rules.  Never heard of the Timber Marking Act? You're not alone, however, CIPO has provided some helpful background information concerning the former utility of this legislation along with comment on current industry practice.

Essentially, the legislation was designed to protect a logging company's interest in timber floated to mills on inland waters in Quebec, Ontario and New Brunswick (see The National Film Board classic "Log Driver's Waltz").  The logs were marked upstream and sent down for processing in exchange for payment to the owner of the mark.  However, the practice of log drives has been replaced over time with truck and rail transport for a variety of reasons.  Consequently, industry practice has evolved to avoid marking individual logs and thus the current legislation is simply outdated.  

CIPO is soliciting comment from both stakeholders and owners of timber mark rights during the consultation period to consider the impact upon the parties and industry.  Nevertheless, the repeal of the Act and Rules would thus cease any further registration of timber marks and perhaps any existing rights previously granted under the Act.

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The Copyright and Industrial Design Branch announced a consultation period (expiring January 8, 2010) to consider the repeal of the Timber Marking Act  (R.S., 1985, c. T-11) and Rules.  Never heard of the Timber Marking Act? You're not alone, however, CIPO has provided some helpful background information concerning the former utility of this legislation along with comment on current industry practice.

Essentially, the legislation was designed to protect a logging company's interest in timber floated to mills on inland waters in Quebec, Ontario and New Brunswick (see The National Film Board classic "Log Driver's Waltz").  The logs were marked upstream and sent down for processing in exchange for payment to the owner of the mark.  However, the practice of log drives has been replaced over time with truck and rail transport for a variety of reasons.  Consequently, industry practice has evolved to avoid marking individual logs and thus the current legislation is simply outdated.  

CIPO is soliciting comment from both stakeholders and owners of timber mark rights during the consultation period to consider the impact upon the parties and industry.  Nevertheless, the repeal of the Act and Rules would thus cease any further registration of timber marks and perhaps any existing rights previously granted under the Act.

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The Copyright and Industrial Design Branch announced a consultation period (expiring January 8, 2010) to consider the repeal of the Timber Marking Act  (R.S., 1985, c. T-11) and Rules.  Never heard of the Timber Marking Act? You're not alone, however, CIPO has provided some helpful background information concerning the former utility of this legislation along with comment on current industry practice.

Essentially, the legislation was designed to protect a logging company's interest in timber floated to mills on inland waters in Quebec, Ontario and New Brunswick (see The National Film Board classic "Log Driver's Waltz").  The logs were marked upstream and sent down for processing in exchange for payment to the owner of the mark.  However, the practice of log drives has been replaced over time with truck and rail transport for a variety of reasons.  Consequently, industry practice has evolved to avoid marking individual logs and thus the current legislation is simply outdated.  

CIPO is soliciting comment from both stakeholders and owners of timber mark rights during the consultation period to consider the impact upon the parties and industry.  Nevertheless, the repeal of the Act and Rules would thus cease any further registration of timber marks and perhaps any existing rights previously granted under the Act.

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The Canadian Intellectual Property Office ("CIPO") has announced that it has entered into further Patent Prosecution Highway ("PPH") pilot initiatives with their counterparts in Japan, Denmark and Korea. 

Similar to the approach initiated between Canada and the United States in January, 2008, the PPH concept is intended to result in faster, more efficient patent examination by allowing patent offices to share work previously done by another country's patent office.  During the trial period Applicants may request expedited examination under the PPH program free of charge (i.e. the Patent Rules, Schedule II fees will continue to apply).

The PPH trial period with the Japan Patent Office, Danish Patent and Trademark Office and Korean Intellectual Property Office (which commenced October 1, 2009) extends to September 30, 2011 with possible extensions available.  (Incidentally, the PPH trial period with the United States has been extended to January 28, 2011)

Additional information regarding the PPH programs and the process to make a PPH request is available on the CIPO website.

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The Canadian Intellectual Property Office ("CIPO") has announced a consultation period of October 1 to October 31, 2009 regarding a proposed Practice Notice which concerns the practice of granting extensions of time.

For applications undergoing examination the current practice permits Applicants to seek an extension of time by submitting a written request; however, the rules are unclear as to whether further requests (for an extension of time) will be granted.  In a proposal in line with proposed changes in other branches of CIPO, the proposed Practice Notice suggests that Examiners will grant one (1) extension of time of six (6) months and a failure to respond within the extension period will result in the abandonment of the case.

It remains unclear, however, whether an Examiner will have discretion to grant additional (i.e. successive) extensions of time in exceptional circumstances. 

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Following up on an earlier post, the Canadian Trade-marks Office has announced changes to the examination of trademark applications. 

Effective June 17, 2009 the time allowed to respond to Examiner's Report is now six (6) months (from the previous four months).  Notably, however, this change will not impact deadlines imposed prior to June 17, 2009 (i.e. for Examiner's Reports issued prior to that date) and thus it will be important to carefully diarize any outstanding deadlines to reflect this change.

Additionally, the Trade-marks Office has announced that it will no longer issue "courtesy letters" to applicants to advise regarding co-pending and potentially confusing applications with a later filing date.

You may also recall that the Trade-marks Office was soliciting input regarding a third policy, namely a proposal to no longer impose a deadline for a Requesting Party to respond to correspondence relating to Changes in Title.  At this time there has been no formal announcement concerning the introduction of this policy.

In addition to changes noted above, the Canadian Intellectual Property Office has commenced a consultation period expiring September 14, 2009 to consider enabling clients (for patents, trademarks, industrial design, copyright and integrated circuit topography applications) to file correspondence and obtain filing dates on Saturdays, Sunday and holidays - while still maintaining the current time extensions for deadlines.  To applicants filing submissions or applications on those days formerly known as a day off this may represent a positive development to provide an earlier filing date than that which is currently available.  Nevertheless, to others this may simply represent a further worrisome encroachment on an employee's family or free time in a manner continuing along the trend of 24/7 accessibility in the age of handheld email devices.

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Following up on an earlier post, the Canadian Trade-marks Office has announced changes to the examination of trademark applications. 

Effective June 17, 2009 the time allowed to respond to Examiner's Report is now six (6) months (from the previous four months).  Notably, however, this change will not impact deadlines imposed prior to June 17, 2009 (i.e. for Examiner's Reports issued prior to that date) and thus it will be important to carefully diarize any outstanding deadlines to reflect this change.

Additionally, the Trade-marks Office has announced that it will no longer issue "courtesy letters" to applicants to advise regarding co-pending and potentially confusing applications with a later filing date.

You may also recall that the Trade-marks Office was soliciting input regarding a third policy, namely a proposal to no longer impose a deadline for a Requesting Party to respond to correspondence relating to Changes in Title.  At this time there has been no formal announcement concerning the introduction of this policy.

In addition to changes noted above, the Canadian Intellectual Property Office has commenced a consultation period expiring September 14, 2009 to consider enabling clients (for patents, trademarks, industrial design, copyright and integrated circuit topography applications) to file correspondence and obtain filing dates on Saturdays, Sunday and holidays - while still maintaining the current time extensions for deadlines.  To applicants filing submissions or applications on those days formerly known as a day off this may represent a positive development to provide an earlier filing date than that which is currently available.  Nevertheless, to others this may simply represent a further worrisome encroachment on an employee's family or free time in a manner continuing along the trend of 24/7 accessibility in the age of handheld email devices.

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In a further development of an earlier story relating to the Canadian Intellectual Property Office ("CIPO"), the United States Patent and Trademark Office ("USPTO") has now issued a warning to customers regarding unsolicited communication from third parties requesting fees for certain services.The USPTO invites recipients of unsolicited correspondence concerning your trademarks to contact the Federal Trade Commission ("FTC") where you receive correspondence from a party other than the USPTO or your agent requesting fees relating to your trademark applications and registrations.The USPTO warning is similar to the warning recently issued by the Canadian Intellectual Property Office ("CIPO") concerning such unsolicited correspondence.  If you receive such materials it is advisable to contact your agent and/or the Client Service Centre at 1-866-997-1936 (or at 819-934-0554 for international calls).

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A Practice Notice , entitled, "Practice in Trade-mark Opposition Proceedings" has recently been issued by the Canadian Trade-marks Opposition Board to introduce procedural changes and guidance concerning the granting of extensions of time.

Effective March 31, 2009, the Practice Notice* will replace the October 1, 2007 Practice Notice entitled "Procedure before the Trade-marks Opposition board as of October 1, 2007" and is intended to:

• Simplify and clarify the Registrar's benchmarks for granting extensions of time including guidance with respect to qualifying "exceptional circumstances" for the purposes of obtaining an extension of time;
• Encourage the parties to pursue settlement and mediation early in the opposition proceeding including the introduction of "Cooling Off Periods" whereby either party may request an extension of time of no more than nine (9) months on consent for the purpose(s) of negotiating settlement , mediation, and/or co-existence between the parties; and
• Introduce a new practice with respect to the scheduling of hearings.

The introduction of these changes has resulted from consultation among the Trademarks Office, applicants and practitioners and, as a result, is expected to  better accommodate time line and other requirements for the parties involved in opposition while providing greater certainty for those seeking to extend opposition deadlines.

*Notably, trademark applications advertised prior to October 1, 2007 will remain subject to the Trade-marks Regulations as they read as of September 30, 2007.

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Recently, the Canadian Intellectual Property Office ("CIPO") issued a warning on the Trademarks mainpage to advise regarding the receipt of non-solicited invoices. 

Typically, such "invoices" are correspondence disseminated to trademark applicants and/or registrants once their contact information has been published (i.e. on the CIPO online database or in the Trade-marks Journal) to request participation in or contribution to an upcoming online or print publication of trademarks.  Nevertheless, such correspondence is often confusingly similar to billing invoices and loaded with small print.  Consequently, many unwitting recipients may inadvertently submit payment for the service without necessarily appreciating the nature of the request or its potential utility for their business. 

The most prudent course of action to take when an unsolicited piece of correspondence is received (particularly when it appears as an 'invoice'), is to contact your agent and provide a copy of the material for review.  Alternatively, CIPO has advised that recipients may also contact the Client Service Centre at 1-866-997-1936 (or at 819-934-0554 for international calls) prior to responding to such correspondence.

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The Canadian Intellectual Property Office ("CIPO") is presently seeking input regarding proposed changes to Section 45 Proceedings (i.e. Canada's "use it or lose it" provision of the Trade-marks Act (the "Act")). 

Currently, Section 45 of the Act provides a summary procedure whereby a party may request that the Registrar of Trademarks issue a Section 45 Notice requiring that the registered owner of a trademark submit, within three months, evidence of use of the mark for the three year period preceding the notice or evidence of special circumstances to excuse non-use.  If no special circumstances or evidence are filed or where such evidence is deficient, the registration may be amended or cancelled in its entirety.

Included within the suggested changes are:

1. proposals to permit the requesting party to seek a Section 45 Notice in respect of specific products and/or services rather than the entirety of those products and services listed in the registration;
2. proposed circumstances whereby the Registrar may elect not issue a Section 45 Notice which include:  (a) where the registration is currently the subject of a pending Section 45 proceeding; (b) where the Registrar determines that the request is merely frivolous or vexatious; and (c) where the request is made within three years from the date of a previous Section 45 decision;
3. restrictions to the number of extensions of time available to a registrant for the submission of evidence (i.e. limited to one extension of four months) while clarifying the circumstances which may justify an extension of time;
4. a proposal whereby the Registrar could simply elect to render a decision to cancel, amend or maintain a registration where the evidence "clearly" establishes or fails to establish use of the mark; and lastly,
5. it appears that requesting parties will no longer have the ability to withdraw the Section 45 request and thereby terminate the proceedings in circumstances where the parties are in negotiation.

The consultation period regarding the proposals ends on March 13, 2009 and thus any interested parties are encouraged to submit comment.  We will provide a subsequent post once feedback is published by the Trademarks Office.

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