Joint Liaison Committee - July 9, 2015

From: Canadian Intellectual Property Office

Chair

Attendees for IPIC

Attendees for CIPO

Introduction

CIPO invited IPIC to co-chair these meetings. The minutes will be posted on the CIPO website once they are approved by both parties.

Purpose of the committee

The purpose of this committee is to ensure a continuous dialogue between CIPO and IPIC, to provide a forum for consultation to continuously improve services and to disseminate information to the agent community.

1. CIPO's office statistics (as of June 2015)

First Action

The Trademarks Branch (TMB) currently has 28,000 files awaiting first action.

The turnaround time (TAT) from filing to first action is currently 6.4 months (which is a great improvement from the TAT of 8.4 months set in April 2014).

Correspondence

The TAT for processing mail is currently at 1.6 months (which is also a great improvement from the previous TAT of 4 months).

Filing to registration

The end-to-end process from filing an application to its registration is currently at 27.1 months (on average).

2. Operational excellence

LEAN

This is an initiative involving approximately 10 firms across Canada in an attempt to improve the efficiency of the examination file process, which could be rolled out (at least in part) if successful.

CIPO discussed the current LEAN process initiatives in place to help improve the end-to-end registration process. Such changes include an increase in phone calls to resolve minor issues, as well as an attempt to specify the goods/services for confusion objections which only relate to a subset of goods and services in an application.

Phase 1 of the project is now complete and the team has processed approximately 1,100 files using the new proposed examination process. No new files are being accepted into the pilot. The data and feedback will now be collected and analyzed to see if these changes have generated expected results. It is hoped that some of the initiatives tried with this project can be implemented in the future. The preliminary results are encouraging.

Elimination of mail inventory project

TMB discussed the reduction in mail inventory of correspondence files. This initiative resulted in a reduction of the waiting time to receive a response from the Office from 4 months to 1.6 months currently.

Expedited examination

The practice of "expedited examination" was developed when the waiting time to receive a first action was a little less than two years. As this time period is currently under 7 months, the practice will not be reinstated.

Quality program

TM is currently reviewing the quality review program in examination and is considering various options and scenarios. The form of the quality review program has yet to be determined. This project is intended to improve quality, consistency and respond to issues raised by agents.

Time extensions

Multiple requests for time extensions are the primary reason for the lengthy delay observed from filing to registration. The TMB is considering options for reducing the time required in the treatment of an application. Both parties discussed possible changes in this practice in order to reduce the examination time for a given file. For example, the TMB is considering reducing the initial deadline to respond to an examiner's report from 6 to 4 months and then to allow time extensions in 4 month intervals (as opposed to the current 6 months granted). The TMB would appreciate the committee's view on whether or not they are in favour or opposed to such a change. (Except for the timeframes, the process would be the same as it is currently. In other words, a first time extension would be granted essentially upon request. Subsequent time extensions are available upon a showing of "exceptional circumstances".) Time extensions at the allowance stage would remain at 6 months.

ACTION: IPIC will discuss this request internally and come back to CIPO in the fall.

3. Reminders to examiners

Electronic correspondence

There have been issues when sending correspondence by fax to CIPO (processing delays). Agents and applicants are encouraged to use the online e-filing/e-revised services.

Phone calls

A gentle reminder has been sent to examiners to return telephone calls within 24 hours.

If an agent is not satisfied with the level of service provided by a particular examiner, they are encouraged to escalate the matter up to their immediate supervisor. This information is available online through "GEDS". Once you enter the employee's name, the TMO hierarchy can be seen. For example, if the individual is an examiner in "examination 1", by clicking on that link, it will be possible to see the people in "examination 1" along with the team leader.

Due to a recent government initiative to reduce the number of landlines, it is possible that older correspondence may have out-of-date telephone numbers. Clients are encouraged to consult the GEDS online service to find government employee contact information.

In person interviews

IPIC mentioned that a number of examiners, as well as their supervisors, have been refusing in person interviews. A reminder was provided to the examination section. However, examiners may also request the attendance of their supervisor.

4. Information technology (IT)

Section 9 terminology

A) It was noted that when some users view an official mark on the CIPO database, they often mistakenly believe it is a regular trademark application.

Section 9 marks are always referenced as prohibited/official marks on the database and once public notice is given, the status appears as "advertised". The IPIC wondered if it would be possible to change the online particulars so that all users would readily recognize that an official mark is something different from a trademark application .

Because this would involve an IT change, the TMB is not sure if they can enter such an amendment at this time. However, they will consider the issue.

B) Publication of Section 9 marks

An application to obtain an official mark appears on the CIPO database prior to publication. Since official mark rights only exist as of publication, the committee asked if it would be possible to avoid displaying Section 9 mark applications on the CIPO website until after the advertisement.

The TMB indicated that official marks are open for public inspection before they are advertised as a result of a request made by the agent community a few years back. CIPO does not have the authority to restrict access to these files prior to publication. They are to be made public, as any other application filed.

IT issues related to 90 applications filed from January to the present day

Several months ago, searches conducted on the CD NAME SEARCH system indicated that a number of applications were not available to be searched. However, the system did not indicate which applications were not searched.

The TMO explained that a series of application numbers were apparently not allocated in chronological order, and, as a result, did not seem to appear in the search results. Due to a glitch in the system, these file numbers had been skipped, however they have since been assigned. TMB assured IPIC that no files were in fact missing from the searches.

5. Bill C-31

A coming-into-force date has not yet been announced.

Coming soon

Nice

Starting this fall, CIPO will be accepting on a voluntary basis, applications/registrations where goods or services have been classed according to the Nice classification. This is not yet a requirement. The intent is to avoid a backlog of files that must be classified at the coming-into-force of Bill C-31. To assist the agent community as well as direct owners in preparing for NICE, a number of tools such as updating the e-filing and e-registration tools, as well as a pre-approved list from the Goods and Services Manual will be launched. A webpage will also be developed to keep clients informed.

E-renewal and registration

CIPO indicated that the e-renewal and e-registration applications are now merged into one platform, and agents will be able to use their deposit accounts to renew trademarks in batches.

Database

The database will be updated to permit searching by Nice class and third-party classification information will be available for searching purposes.

6. Roundtable

We did not discuss all of the agenda items submitted by the committee. The TMO is reviewing the items and will consider developing some general Q's and A's that could be made available online.

Next meeting: November

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