The burdens of popularity – Canadian examination times and new office practices

As we approach the second anniversary of Canada’s accession to the Madrid Protocol, it is clear that applicants from around the world have been keen to designate Canada in their applications for international registration. In fact, Canada enjoyed a top five placement in WIPO’s list of most popular country designations shortly after accession – and total filing numbers have, by all accounts, outstripped even the rosiest of advance projections. Great news, right?  Sort of.

A wave of new filings like that which Canada has seen since 2019 would burden any trademark system, but when these are followed by a significant downturn in examination efficiency due to the covid-19 pandemic, the overall impact on examination times has been significant. It is now common for domestic applications not to receive first examination until more than 30 months after filing; some applications wait even longer.

This timeline has grown steadily over the past year – and absent a significant course correction, there was little reason to expect anything but more delays for the foreseeable future. Fortunately, the Canadian Intellectual Property Office (CIPO) has recognised the problems caused by the backlog and has developed a plan to address them. Recently published practice notices reveal several aspects of the plan.

The provision of fewer goods and services suggestions at first examination

Historically, when raising objections to goods and services identifications (IDs), CIPO examiners have typically provided suggestions for amendments to bring the impugned language into proper form. However, long and complex claims could make this a laborious exercise; more, in highly technical industries, the suggestions often failed to reflect an applicant’s actual interests. Considering this – and noting further that a significant number of applicants do not respond to an examiner’s first report even when amendments are suggested – CIPO realised that spending examiner time preparing proposed amendments to initial ID objections was not time well spent. Accordingly, examiners will now no longer provide amendment recommendations to substantive ID objections at first examination. They will, however, offer such suggestions in subsequent examiner reports.

Encouraging the use of pre-approved lists of goods and services

Where applicants have relied on pre-approved lists of goods and services descriptions in preparing IDs for filing, examiners can work even more quickly, effectively skipping this aspect of examination altogether. Accordingly, applications in which the IDs are wholly made up of pre-approved goods and services descriptions will now be examined out of order, in many cases before those containing novel goods and services descriptions. CIPO is hopeful that this incentive will lead to an increased number of applicants using the pre-approved lists – and by extension, reducing the time it takes an examiner to consider an application.

Decreasing the number of examiner’s initial reports prior to refusal

Another way to enable examiners to tackle the backlog is to reduce the number of times that they handle any one application. As such, CIPO is strongly encouraging examiners to eliminate piecemeal examination practice and instead to raise all discernible objections at the earliest possible moment. This development should please applicants. Contemporaneously, however, CIPO is also taking steps to discourage applicant ‘sandbagging’ – that is, where applicants file perfunctory responses to CIPO objections often for the purpose of delaying prosecution, reserving fulsome arguments to a future response. Instead, CIPO has indicated that examiners will not be required to reconsider any heads of argument reiterated by the applicant that were rejected in a prior response to an examiner objection. Simply put, applicants must now put their best foot forward from the beginning in their replies to CIPO.

Taken together, these changes are expected to reduce the amount of time that it takes examiners to consider applications, and therefore allow examiners to move through applications more quickly and hopefully reduce the growing backlog. To be clear, that will not happen overnight – CIPO’s current goal is to reduce the time frame to first examination to 18 months by 2025.

But this would put domestic applications on an equal footing with those filed via the Madrid system, where – pursuant to its international commitments – CIPO is currently examining applications within an 18-month window. While even 18 months is not all that fast, it is a time frame that domestic applicants can currently only dream of.

Comment

Until the pace of domestic application examination catches up to that provided under the Madrid system, applicants using the domestic system should, where possible and practicable, direct their Canadian counsel to:

• build new application IDs using CIPO’s pre-approved list of goods and services;
• amend pending applications to adopt IDs from CIPO’s pre-approved list of goods and services; and
• make their very best arguments in response to each examiner’s objection, unless a particular strategy demands an alternate approach.

That said, not all applicants or applications will be well suited to pursue these steps – and others who rely on them may still find them insufficient to meet specific needs. To address those scenarios, CIPO has also introduced a new expedited examination mechanism, which will be discussed in part two of this article.