November 14, 2024

Members of the IPIC Patent Practice Subgroup (PPSC) held their regular meeting with representatives from CIPO Patent Branch on November 12, 2024.

The following is a summary of updates related to Next Generation Patents (NGP) / MyCIPO Patents, as discussed. CIPO will provide detailed notes of the meeting in a few months which will be published here.

The latest roadmap is available here.

Issuing of correspondence by CIPO: A technical bug is still impacting CIPO’s ability to send “host” (i.e. automated) correspondence. This encompasses all letters that are not custom written, e.g. filing certificates / acknowledgements of national phase entry, missed maintenance fee notices, recordal/registration certificates, and Notices of Allowance. A fix for this technical bug is happening on November 27^th, after which priority will be sending out filing certificates / acknowledgements of national phase entry, followed promptly by Notices of Allowance. Although Notices of Allowance will not issue until after the update on November 27^th, some Conditional Notices of Allowance may issue prior to November 27^th because they are custom correspondence, i.e. they are not automated “host” correspondence. Finally, going forward, any host/automated correspondence will now be available on the Canadian Patents Database (CPD).

Backlog in processing incoming correspondence: Anything submitted through MyCIPO Patents goes directly into CIPO’s backend system and is (or should be) timely processed. About 60% of submissions now go through MyCIPO Patents. For everything submitted the legacy way (e.g. via online “General Correspondence”), it is backlogged as it needs to be manually processed. CIPO indicated that good progress has been made on the backlog. They believe that processing of incoming correspondence should return to normal before the end of the year. CIPO is not processing incoming correspondence strictly in date order, but rather is applying a priority scheme. CIPO did not provide a detailed explanation, but orally indicated that: (1) the following are processed with higher priority (faster): new application filings, requests for continued examination (RCEs), and agent revocations/appointments; (2) the following are processed with lower priority (slower): requests for examination, voluntary submissions of prior art, and requests to register documents and record transfers / name changes.

CPD data corrections and abandonment/reinstatement: Corrections to the Canadian Patents Database (CPD) are ongoing, e.g. to correct the status of any patent application incorrectly marked as abandoned due to a delay in processing incoming correspondence. The target completion date is December/January. In January, once CPD corrections are complete and the backlog has been processed, CIPO will resume issuing courtesy notices of abandonment. CIPO does not want to issue any notices of abandonment until the status is corrected on all patent applications, so that notices of abandonment are only sent on cases that are actually abandoned. If a notice of abandonment was previously erroneously sent, a letter retracting the notice of abandonment will be issued in due course. There is also a hold on issuing any due care “intent to refuse” letters until January because these letters are part of the abandonment workflows that will be recommencing in January. Final refusals on due care cases will resume this week.

Decommissioning of General Correspondence: There is no immediate plan to remove the ability to file patent correspondence online the legacy way through General Correspondence. Once MyCIPO Patents has fully stabilized, CIPO will look at removing the ability to file patent correspondence through General Correspondence, consulting first with the IPIC Patent Committee. However, General Correspondence will remain for filing submissions in PCT international patent applications.

Issuing of Patents: CIPO is issuing about 150-160 patents every Tuesday. Volume will be increasing. Our understanding is that the patents they are issuing are primarily still on applications where the final fee was paid prior to launch of NGP/MyCIPO Patents in early July.

New types of Correspondence: Members may have recently received correspondence such as Acknowledgment of Priority letters, which were never seen prior to NGP. CIPO confirmed that new types of correspondence have been introduced with NGP, although a complete list was not provided at this time, but CIPO will work on providing further details of these new letters such as when to expect them / when to follow up when they are not received. The Acknowledgment of Priority letters are custom correspondence and not “host” generated, explaining why they are being properly issued at this time.

Future enhancements: CIPO’s focus is on stabilization, data correction, resuming all outgoing correspondence, and returning to normal service standards for the processing of incoming correspondence. Therefore, they were not yet ready to discuss possible timelines for future enhancements (such as the adding of a “projected grant date” field to the Canadian Patents Database (CPD)).

Connecting with Members: CIPO indicated that they will personally reach out to some individuals/firms that present a low adoption rate of MyCIPO Patents and/or have reported a large number of issues.

Training: Members of the IPIC Patent Committee suggested that CIPO create training videos that cover common scenarios encountered by users of MyCIPO Patents that are not self-evident, such as how to make multiple submissions on an application using MyCIPO Patents.

Further meetings with IPIC: CIPO committed to meeting with members of the Patent Committee in early December to provide a further update on NGP / MyCIPO Patents.

November 01, 2024

In July, CIPO decommissioned Techsource and launched their new patent IT system “Next Generation Patents (NGP)”. The front end of that system is called “MyCIPO Patents”. MyCIPO Patents is available for filing submissions with CIPO, along with the legacy “General Correspondence” online submission and fax and physical mail.

The launch of NGP and MyCIPO Patents continues to significantly impact patent practitioners. Notably, many types of routine correspondence are still not being sent out by CIPO, and a large backlog persists in processing submissions filed by agents.

Members of the IPIC Patent Committee have regularly met with leadership of the Patent Branch, and the next meeting is scheduled on November 12^th. Besides expressing frustration with the roll-out and advocating on specific issues (more below), the Patent Committee has highlighted the need for regular and transparent communication from CIPO. CIPO is now providing information via the following means:

• Listserv: Sign up here (under “Canadian Patent News”) for a weekly email from CIPO on progress.
• Website: A roadmap for keeping up-to-date is here.
• Problems and Workarounds: To report a technical problem/bug with their system go here. To see a list of known issues and workarounds, go here.
• Assistance: Some practitioners have reported that contacting the Client Service Center (contact information here) is a good resource to deal with certain issues on individual patent applications. CIPO confirmed that this is where they are focussing their support resources.

The following are updates on a few specific issues of importance:

Issuing of correspondence by CIPO:  Only a small amount of “host” (i.e. automated) correspondence has issued since the new system came online in July. This encompasses all letters that are not custom written, e.g. filing certificates / acknowledgements of national phase entry, missed maintenance fee notices, recordal/registration certificates, and Notices of Allowance. Resumption of this correspondence has been a moving target for CIPO, with no commitment to a specific date. Our understanding is that there is a technical bug that is impacting their ability to issue this correspondence with confidence. Once it does begin issuing, CIPO has assured the Patent Committee that the correspondence will be ramped up and issued over a reasonable window of time, rather than all at once, with the understanding that it would be burdensome and unreasonable for agents to receive several months’ worth of correspondence at once.

Backlog in processing incoming correspondence: Anything submitted through MyCIPO Patents goes directly into CIPO’s backend system and is (or should be) timely processed. However, with the exception of requests for national phase entry, practitioners have only been able to submit through MyCIPO Patents since October 1^st. Also, MyCIPO Patents is still being stabilized and so is sometimes glitchy. For everything submitted the legacy way (e.g. via online “General Correspondence”) it is sitting in a large backlog. Essentially the staff at CIPO need to go through those submissions one-by-one and “replicate” them in MyCIPO Patents. CIPO is triaging and prioritizing certain types of correspondence. The Patent Committee asked to see their prioritization, but it has not yet been provided. In any case, there are still submissions from early summer that are not yet processed. Practitioners are encouraged to use MyCIPO Patents where possible. It is currently being used for about 50% of all submissions. MyCIPO Patents will issue a confirmation receipt (proof of submission), it will directly register the correspondence in the backend, and it will avoid manual entry/error by staff at CIPO.

Incorrect abandonment status on the Canadian Patent Database (CPD): Because of the processing backlog referenced above, there are some patent applications marked as “abandoned” on the Canadian Patent Database (CPD), even though the required action or response was timely filed. CIPO’s system triggers an abandonment status on the assumption that the submission was not timely received, whereas it was timely received but is still in the backlogged queue waiting to be processed. The Patent Committee has escalated this issue with CIPO, noting that clients are writing to agents asking why their applications are abandoned. To help mitigate this issue, CIPO has increased the “grace period” for processing incoming correspondence to allow more time for CIPO to process the correspondence before the system triggers abandonment. CIPO has also indicated to the Patent Committee that each record will be corrected once the correspondence is processed.

Payment of first maintenance fee after national phase entry: For a Canadian application that is a PCT national phase entry, the first maintenance fee falls due two years after the PCT filing date. In some cases this deadline arrives shortly after entering national phase in Canada. A patent application serial number is required to pay this maintenance fee using MyCIPO Patents. However, if the request for national phase entry was not submitted through MyCIPO Patents, then a serial number is not available until CIPO issues an Acknowledgement of National Phase Entry. CIPO has so far only issued a small number of Acknowledgements of National Phase Entry. The Patent Committee has stressed to CIPO the importance of promptly issuing Acknowledgements of National Phase Entry. Although not ideal, in the absence of a serial number the maintenance fee can still be paid through General Correspondence by referencing the PCT serial number. Also, some agents have anecdotally reported success in discovering the serial number by searching the CPD (here) using the PCT information, such as the PCT serial number.

Projected Grant Date: There is no longer a “projected grant date” field on the CPD. Therefore, practitioners do not have certainty as to when a patent will grant once the final fee has been paid. The Patent Committee has stressed the importance of timely granting of patents and the ability for patentees and their agents to know the projected grant date in advance, e.g. for the purposes of listing the patent on the Health Canada Patent Register and/or for the purposes of filing a divisional application. It is on CIPO’s roadmap to reintroduce the “projected grant date” field on the CIPO website. For now, the following information is published here: “The forecasted issue date is not available in the new system. Granting and issuance is expected to occur approximately four to six weeks following the processing of the final fee and the change of the status of the application to “Pre-grant” in the Canadian Patents Database (CPD).” Note that in view of the recent decommissioning of the Canadian Patent Office Record (CPOR), CIPO now publishes lists of recently issued patents here.

The Patent Committee will continue their regular meetings with CIPO until the new system is stabilized and the pressing issues are resolved.