Correspondence Procedures

May 15, 2012

This notice will replace all previous notices regarding Correspondence Procedures.

This practice notice is intended to provide guidance on current Canadian Intellectual Property Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.

For the purposes of sections 5 and 54 of the Patent Rules, section 3 of the Trade-marks Regulations, section 2 of the Copyright Regulations, section 3 of the Industrial Design Regulations and section 3 of the Integrated Circuit Topography Regulations, the address of the Patent Office, the Office of the Registrar of Trademarks, the Copyright Office, the Industrial Design section of the Office of the Commissioner of Patents, and the Office of the Registrar of Topographies (hereinafter sometimes collectively referred to as "CIPO") is:

Canadian Intellectual Property Office
Place du Portage I
50 Victoria Street, Room C-114
Gatineau QC K1A 0C9

Correspondence delivered to the above address during ordinary business hours will be considered to be received on the date of delivery.

The Fee Payment Form should always be submitted as a covering document and should be the only document submitted to CIPO that contains financial information, such as credit card numbers.

Download the Fee Payment Form.

1. Designated Establishments

For the purposes of subsections 5(4) and 54(3) of the Patent Rules, subsection 3(4) of the Trade-marks Regulations, subsection 2(4) of the Copyright Regulations, subsection 3(4) of the Industrial Design Regulations and subsection 3(4) of the Integrated Circuit Topography Regulations, the following are the designated establishments or designated offices to which correspondence addressed to the Commissioner of Patents, the Registrar of Trademarks, the Copyright Office or the Registrar of Topographies may be delivered in person:

  1. Industry Canada
    C.D. Howe Building
    235 Queen Street, Room S-143
    Ottawa ON K1A 0H5
    Tel.: 613-952-2268

  2. Industry Canada
    Sun Life Building
    1155 Metcalfe Street, Room 950
    Montreal QC H3B 2V6
    Tel.: 514-496-1797
    Toll-free: 1-888-237-3037

  3. Industry Canada
    151 Yonge Street, 4th Floor
    Toronto ON M5C 2W7
    Tel.: 416-973-5000

  4. Industry Canada
    Canada Place
    9700 Jasper Avenue, Suite 725
    Edmonton AB T5J 4C3
    Tel.: 780-495-4782
    Toll-free: 1-800-461-2646

  5. Industry Canada
    Library Square
    300 West Georgia Street, Suite 2000
    Vancouver BC V6B 6E1
    Tel.: 604-666-5000

Correspondence delivered, during ordinary business hours, to one of the designated establishments listed above, will be considered to be received on the date of delivery to that designated establishment, only if it is also a day on which CIPO is open for business. Correspondence delivered to a designated establishment on a day when CIPO is closed for business will be considered to be received on the next day on which CIPO is open for business. If, for example, correspondence intended for the Patent Office is delivered to the designated establishment in Toronto on June 24, it will not be considered to be received on June 24 as this is a day on which CIPO is closed for business.

Please note that documents delivered to the addresses listed above must be enclosed in a sealed envelope.

2. Registered Mail Service of Canada Post

For the purposes of subsections 5(4) and 54(3) of the Patent Rules, subsection 3(4) of the Trade-mark Regulations, subsection 2(4) of the Copyright Regulations, subsection 3(4) of the Industrial Design Regulations and subsection 3(4) of the Integrated Circuit Topography Regulations, the Registered Mail Service of Canada Post is a designated establishment or designated office to which correspondence addressed to the Commissioner of Patents, the Registrar of Trademarks, the Copyright Office or the Registrar of Topographies may be delivered.

Correspondence delivered through the Registered Mail Service of Canada Post will be considered to be received on the date stamped on the envelope by Canada Post, only if it is also a day on which CIPO is open for business. If the date stamp on the Registered Mail is a day when CIPO is closed for business, the Registered Mail will be considered to be received on the next day on which CIPO is open for business.

3. Electronic Correspondence

In accordance with section 8.1 of the Patent Act, and for the purposes of subsections 5(6), 54(5), and 68(3) of the Patent Rules, subsection 3(6) of the Trade-marks Regulations, subsection 2(6) of the Copyright Regulations, subsection 3(6) of the Industrial Design Regulations, and subsection 3(6) of the Integrated Circuit Topography Regulations, correspondence addressed to the Commissioner of Patents, the Registrar of Trademarks, the Copyright Office or the Registrar of Topographies may be sent by facsimile, online via CIPO's web site or on an electronic medium only as provided in the current notice.

In accordance with subsection 54(5) of the Patent Rules, the request for national entry is the only correspondence addressed to the Commissioner in respect of an international application that can be submitted online or on an electronic medium with the exception of sequence listings and applications prepared using the PCT-EASY or PCT-SAFE as specified in the current notice. Other correspondence submitted online or on an electronic medium in respect of international applications that have not entered the national phase will not be accepted.

Subsection 3(9) of the Trade-marks Regulations specifies certain categories of correspondence to which the provisions of subsection 3(6) do not apply and which thus may not be sent by facsimile or online.

Correspondence sent by facsimile or online to the Commissioner of Patents, the Registrar of Trademarks, the Copyright Office or the Registrar of Topographies constitutes the original, therefore a duplicate paper copy should not be forwarded.

Correspondence delivered by electronic means of transmission, including facsimile, will be considered to be received on the day that it is transmitted if delivered and received before midnight, local time at CIPO on a day when CIPO is open for business. When CIPO is closed for business, correspondence delivered on that day will be considered to be received on the next day on which CIPO is open for business.

3.1 Facsimile

Facsimile correspondence addressed to the Commissioner of Patents, the Registrar of Trademarks, the Copyright Office or the Registrar of Topographies may be sent to the following facsimile numbers:

  • (819) 953-CIPO (2476) or
  • (819) 953-OPIC (6742)

Facsimile correspondence that is sent to any facsimile number other than those indicated above, including those of a designated establishment or designated office, will be considered not to have been received.

The electronic transmittal report returned to you following your facsimile transmission will constitute your acknowledgment receipt. Confidentiality of the facsimile transmission process cannot be guaranteed.

When submitting a document by facsimile that also has a fee requirement, notification of the preferred mode of payment to be applied must be prominently displayed on the Fee Payment Form to ensure expedient processing.

Patents

The document presentation requirements set out in sections 69 and 70 of the Patent Rules apply to facsimile correspondence.

3.2 Online

Correspondence addressed to the Commissioner of Patents, the Registrar of Trademarks, the Copyright Office or the Registrar of Topographies may be sent electronically via CIPO's web site.

Patents

For the purpose of subsection 5(6) of the Patent Rules, the following correspondence with the Patent Office may be sent electronically via CIPO's web site by accessing the following web pages:

Canada as Receiving Office Under the PCT: PCT-SAFE

Pursuant to PCT Rule 89bis, CIPO, in its role as a receiving Office, accepts the electronic filing of an international application prepared using the latest version of the WIPO's PCT-Safe software. The filing must be done using CIPO's International Filing e-service, called PCT E-Filing.

Note: Correspondence related to PCT international applications can not be sent electronically to CIPO. Correspondence may be sent by mail, by facsimile or delivered by hand to CIPO or to a designated establishment.

Trademarks

For the purpose of subsection 3(6) of the Trade-marks Regulations, the following correspondence addressed to the Registrar of Trademarks may be sent electronically via CIPO's web site by accessing the following web pages:

Copyright

For the purpose of subsection 2(6) of the Copyright Regulations, the following correspondence addressed to the Copyright Office may be sent electronically via CIPO's web site, by accessing the following web pages:

Industrial Designs

For the purpose of subsection 3(6) of the Industrial Design Regulations, the following correspondence addressed to the Commissioner of Patents may be sent electronically via CIPO's web site, by accessing the following web pages:

Integrated Circuit Topographies

For the purpose of subsection 3(6) of the Integrated Circuit Topography Regulations, the following correspondence addressed to the Registrar of Topographies may be sent electronically via CIPO's web site, by accessing the following web page:

3.3 Electronic medium

Patents

The Patent Office will accept correspondence on various types of electronic medium as specified below. The electronic medium should contain a table of contents and be provided with a cover letter, which will be date stamped by CIPO and placed in the application file. Filing date requirements prescribed in the Patent Rules still remain.

When submitted on an electronic medium, the parts of the application must be logically broken down in files, which are no larger than 25 megabytes.

With regards to sequence listings under Rule 111 of the Patent Rules, the electronic medium must be separate from any electronic medium which may be filed containing parts of the application itself or amendment(s) thereof.

Canada as Receiving Office Under the PCT: PCT-EASY

Pursuant to PCT Rule 89ter, CIPO, in its role as a receiving Office, accepts the filing of an international application containing the request presented as a print-out prepared using the PCT-EASY features of the PCT-SAFE software made available by the International Bureau together with an electronic medium containing a copy in electronic form of the data contained in the request and of the abstract. For this purpose the Canadian receiving Office will accept any electronic media specified in Annex F of the PCT Administrative Instructions.

Canada as Receiving Office Under the PCT: Electronic Filing of Sequence Listings

Pursuant to PCT Rules 89bis and 89ter, and in accordance with Part 7 of the PCT Administrative Instructions, where an international application contains disclosure of one or more nucleotide and/or amino acid sequence listings, CIPO, in its role as a receiving Office, accepts that the sequence listing part of the description and/or any table related to the sequence listing(s) be filed, at the option of the applicant:

  • only on an electronic medium in electronic form in accordance with section 702 of Part 7 of the PCT Administrative Instructions; or
  • both on an electronic medium in electronic form and on paper in accordance with section 702 of Part 7 of the PCT Administrative Instructions;

provided that the other elements of the international application are filed as otherwise provided for under the PCT.

The sequence listing part of an international application filed in electronic form and related tables filed in electronic form shall comply with the relevant provisions of Annex C and C-bis of the PCT Administrative Instructions respectively.

For this purpose the Canadian receiving Office will accept any electronic media specified in Annex F of the PCT Administrative Instructions. Where both the sequence listing and the tables are filed in electronic form, the listing and the tables shall be contained on separate electronic media, which shall contain no other programs or files.

For the purpose of processing the international application, the Canadian receiving Office requires two (2) additional copies of the electronic media containing the sequence listing and/or tables in electronic form, accompanied by a statement that the sequence listings and/or tables contained in the copies are identical to those in electronic form as filed.

For further details concerning the filing of sequence listings and/or tables in electronic form, including the labeling of the electronic media and the calculation of the international filing fee, refer to Section 7 of the PCT Administrative Instructions.

Electronic Media accepted by the Patent Office

The Patent Office will accept 3.5 inch diskette, CD-ROM, CD-R, DVD, DVD-R and any format as specified in Annex F of the PCT Administration Instructions.

The electronic medium must also be free of worms, viruses or other malicious content. Files with malicious content will be deleted.

4. Details concerning the electronic formats accepted

Patents

In accordance with section 8.1 of the Patent Act, and for the purposes of subsections 5(6), 54(5), and 68(3) of the Patent Rules, the acceptable file formats for documents submitted electronically via the web site or on electronic media are TIFF and PDF. In order to get a correspondence date, the office will accept documents initially filed in other formats provided they are viewable with the software "Stellent Quick View Plus 8.0.0". In these cases, the office will request the documents to be replaced by documents in PDF or TIFF and the submission of a statement to the effect that the replacement documents are the same as the documents initially filed.

Sequence listings can be initially provided in TIFF, PDF or in ASCII file formats. However, as a completion requirement according to section 94 of the Patent Rules, a sequence listing in the ASCII format compliant with the "PCT sequence listing standard" has to be submitted. Therefore, CIPO encourages applicants to submit the sequence listings in the ASCII format in the first place

When applicable, the Patent Office will accept files in the TIFF, PDF and ASCII format when they comply with the following specifications:

TIFF Format:

  • TIFF CCITT Group 4, single or multi-page, black and white
  • Resolution of either 300 or 400 dpi
  • The dimensions of the scanned/stored images should match that of the paper requirements, namely 8 ½" by 11" or A4.

PDF Format:

  • Adobe Portable Document Format Version 1.4 compatible
  • Non-compressed text to facilitate searching;
  • Unencrypted text;
  • No embedded OLE objects;
  • All fonts must be embedded and licensed for distribution.

ASCII

  • Shall be encoded using IBM Code Page 437, IBM Code Page 932 or a compatible code page.

Industrial Design

For the purposes of subsections 3(6) and 12(3) of the Industrial Design Regulations, the acceptable file formats for documents submitted electronically via the web site are: TIFF, JPEG, WPD and Doc. In order to get a correspondence date, the Office will accept documents initially filed in other formats provided they are viewable with the software "Stellent Quick View Plus 8.0.0". In these cases, the Office will request the documents to be replaced by documents in one of the acceptable formats and the submission of a statement to the effect that the replacement documents are the same as the documents initially filed.

When submitting images electronically, we strongly encourage clients to comply with the following specifications

TIFF Format:

  • TIFF CCITT Group 4, single or multi-page, black and white
  • The dimensions of the scanned/stored images should match that of the paper requirements, namely 8 ½" by 11"
  • Resolution of 300 dpi

Photographs in JPEG Format:

  • JPEG compression, Gray Scale 8 bit (256 Shades of Gray)
  • The dimensions of the scanned/stored images should match that of the paper requirements, namely 8 ½" by 11"
  • Resolution of 300 dpi

For all images submitted in different formats, the office may print and scan the images or convert them to recommended formats prior to loading them in the database.

5. General Information

General information may be obtained by communicating with CIPO's Client Service Centre.