Looking high and searching low – where did my Canadian filing go?

The time to first examination of new trademark filings at the Canadian Intellectual Property Office (CIPO) has ballooned over the last few years, owing to both a growth in the number of applications filed and a shortage of qualified examiners. This problem has been exacerbated by Canada’s recent accession to the Madrid Protocol – the volume of protocol applications designating the country has significantly exceeded all advance projections and has added to the existing examination backlog.

As a result, those halcyon days when first Canadian examination could be expected within seven to nine months of filing are long, long gone. Now, despite examiners’ best efforts, first examination frequently occurs 18 to 20 months after filing – and often much later than that.

Yet many foreign applicants and agents remain unaware of this shift, despite education efforts. Spurred by default reminders in their docketing programmes and hazy memories of more rapid review, many write to their Canadian counsel seeking application status updates, wondering when examination will occur.

That said, the proverb “all good things come to those who wait” applies here. While slower than in the past, Canadian examination continues diligently – and the quality of the process has recently improved, thanks in part to recent intensive internal examiner training efforts. More, help is on the way: to its credit, CIPO has nearly doubled its number of examiners over the last year, so the time to first examination is expected to drop significantly as these professionals ramp up activity over the next one to two years.

Comment

Still, given the lengthy periods currently at play between application filing and first examination in Canada, applicants and agents should consider adjusting their docketing software defaults to delay automated reminders in order to avoid needless churn and potential cost.

Further, most Canadian counsel are attuned to these delays, but once the time since filing grows particularly long, it remains a best practice to request a status update from CIPO on the file to ensure that the file has not been lost in an office—whether figuratively or literally, as does happen from time to time.

And remember, patience is a virtue!