A Closer Look At Potential Processing Changes For Canadian IP Rights

The Government of Canada is working to modernize the federal regulatory system through a new initiative called the Red Tape Review. The Red Tape Review seeks to eliminate outdated, duplicative, and inefficient rules that impede investment and slow economic growth in Canada.

As a part of this initiative, the Canadian Intellectual Property Office ("CIPO") has provided a roadmap of potential initiatives that can be leveraged to streamline the IP protection process in Canada. CIPO has advanced 14 initiatives, which have been self-described as having short, medium, and long-term completion timelines. Below is a brief summary of the initiatives, grouped by the impacted IP type.

Patent initiatives

• Creation of new "fast track" pathways to accelerate the pace of Canadian patent examination. CIPO is examining whether to introduce a fee based 'ultra-fast-track' examination process, as well as the expansion of eligible patent types to CIPO's no-fee accelerated examination (currently limited to green technologies and COVID-19-related inventions).
• Formalization of one-member Patent Appeal Board panel (rather than a three-member panel) when addressing issues relating to patentable subject matter or compliance with technical elements of the Patent Rules. This approach has been relied upon by CIPO as a pilot project since December 2021.
• Greater use of emerging technologies (e.g. AI tools) to improve the efficiency of processing patent applications.

Trademark initiatives

• Streamlining and modernizing proceedings under the Trademarks Opposition Board ("TMOB"), including express circumstances for discontinuance practice during section 45 (expungement) proceedings, and expressly permitting service of documents by electronic means (which currently requires mutual consent).
• Expansion of circumstances eligible for "expedited examination" of trademark applications.
• Expansion of permissible activities that non-agents can carry out for trademark applications.
• Increased reliance on telephone amendments during the examination of a trademark application. Currently, the majority of trademark amendments require the exchange of formal reports and responses.
• To better assist self-represented applicants in contested trademark matters, the TMOB intends to strengthen and expand upon its existing partnerships with legal clinics to assist with TMOB practice, as well as modernize its digital resources and guides for self-represented parties.

Industrial design initiatives

• Allowance of multiple industrial designs within a single application. Currently, Canadian industrial design practice requires each application to be limited to one design (and variants thereof), in contrast to many other jurisdictions. This often requires the filing of divisional applications in Canada, leading to increased fees and a larger IP management burden on IP holders.
• Introduction of circumstances where an applicant can seek a no-fee expedited examination of its industrial design applications. Unlike patents and trademarks, all expedited examination processes for industrial designs currently require a fee.
• Automatic appointment of the applicant's international representative as the Canadian agent in the context of international design registrations (via the Hague System) that designate Canada. Currently an applicant must file separate paperwork to designate a Canadian agent.

Generally applicable initiatives

• Internal review and implementation of stronger internal precedents and standardized correspondence. While discussed separately in the context of patents, trademarks, and industrial designs, CIPO is putting a focus on the improvement of its correspondence to enable a better understanding of examination positions and therefore a streamlining of the overall examination process.
• Internal review of CIPO's IP fee structures, with an aim to reduce complexity and minimizing the need for yearly updates by IP holders to account for minor yearly fee changes.

Full details of these initiatives, and their proposed implementation timelines, can be found within CIPO's Red Tape Review Progress Report.

While many of these changes are straightforward, and are aimed at general optimization of IP examination processes, several initiatives involve the potential for IP holders to be negatively affected, or otherwise left out of a benefit not expanded to their technological area. CIPO has identified that several priorities are expected to involve stakeholder consultation, alongside potential regulatory amendments. IP holders should consider making submissions on any proposed guidance or call for input that CIPO sends out when implementing these initiatives, to ensure Canada's IP processes align with their needs.

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