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Canadian Patent and Assignee & Status: Terra Incognita

While the Canadian Intellectual Property Office has made improvements in patent documentation in the last few years, there remain a few potholes on the road to finding patent assignee and status information.

The CIPO patent database now contains basic administrative status for Canadian patent documents. This information is available by clicking on the "View Administrative Status" button on the CIPO site for a given patent record; the database then displays a screen with status and maintenance fee payment information. (Note that an application abandoned due to failure to pay fees may be rescued within one year.)

The first extremely important fact is that the CIPO basic status information provided for patents on the public website may not include re assignment information or changes in corporate names, just data indicated at time of filing and prosecution. The CIPO patent website makes a distinction between "Applicant" (entity applying for a patent) and "Owner" (entity named as assignee in registered title document) which is a good thing.

However to go beyond this basic information a person must use the TECHSOURCE program through workstations at the Patent Search Room (now called the Client Services Centre) of the CIPO headquarters in Hull, Quebec. There is no web based file history information comparable to the very useful USPTO PAIR web site (Patent Application Information Retrieval) which includes file histories of US patent prosecution.

To do a thorough search, one should check TECHSOURCE for reassignments as well as the manual, handwritten "Key Index" maintained in the CIPO search facility. This practice should be performed for Industrial Designs as well.

Joanne Grison, who operates Grison Intellectual Property Services which provides hands-on searches of CIPO records, says "We still do a lot of manual checking for information that is not on the TECHSOURCE system. We had a case recently where I located evidence of an assignment handwritten in the manual Key Index." Concerning reliability of CIPO data, she says, "I have seen times when the current patent owner information posted on the public website was not correct." Such records are extremely important, since i f no assignment is recorded, a patent assignment may be void, as per section 51 of the Patent Act.

According to Kazimierz Kaminski, Ottawa Patent Agent, there is at least one hole in the basic status information provided on the public CIPO website. "The status information missing from the Internet database is that about applications provisionally abandoned (abandoned but remaining in the 12 months grace period for reinstatement) for reasons other than failure to pay maintenance fees, such as failure to respond to an Office Action. The provisional abandonment due to non-payment of maintenance fees can normally be inferred from the "Administrative status" provided in the Internet database, but no such information is provided for other reasons of abandonment. This can only be checked through Patent Search Room (PSR) workstations."

Concerning cases of foreign Patent Cooperation Treaty applications filed as Canadian applications in the CIPO office, the basic status information again may be misleading. Such applications are sometimes troublesome, since document and status changes are not fully available from the CIPO website.

Regarding this situation, Mr. Kaminski remarks: "Upon entry of a PCT application into the Canadian national phase, a default option for the Patent Office is to put into the database images of a PCT application AS FILED, meaning that even amendments made during the international examination under Chapter 2 are not shown in images posted to the database. When you ask the Patent Office for a copy of the patent application, the Reproduction Unit will forward exactly the same copy you could prepare yourself from images posted to the Internet database.

Even more importantly, these images will not change as long as the application is pending. Only after it issues to a patent, will all the changes and amendments made during prosecution (whether international or Canadian) be incorporated into the application as filed and images of the patent as issued be posted to the Internet database. Of course, during prosecution all amendments requested and/or entered remain public, but you can seen them only by reviewing the electronic folder of the application containing, among other things, scanned images of (almost) all incoming and outgoing correspondence. However, there is no Internet access to the folder, so if you want to see its content, you have to order a copy of the file history which these days may be an electronic one (on CD).

But again, you will only get complete information on what happened in the file, not an actual image including all changes and amendments entered up to a given point in time, even though you can reconstruct such an image from the

material you receive. (In fact, this is a bit more complicated, in that parts of the application which have been amended are rescanned each time an amendment is made and the images entered into the application folder. These rescannings are normally not included in the file history, which provides again a copy of the application as filed plus copies of all amendments.) "  

Given this situation, the best alternative in researching PCT documents may be to manually retrieve and review the PCT "Blue File" or file history deposited with CIPO to verify critical information. Occasionally reassignments have not been recorded in the key index or TECHSOUCE, and corporate name files have had to be checked to discover name change or assignment correspondence in CIPO internal files.

In comparing the US and Canadian systems, one annoying aspect is the scarce data on inventors provided by CIPO (a frustration to anyone attempting to statistically analyze Canadian patent filings). On the other hand, the lack of Assignee information for pending and issued patents as published by the USPTO is an enormous problem for patent searchers. Some of the pay-per-view database services, such as Lexis Nexis and Dialog, include databases that manage to ferret out who owns which patent applications. Lexis Nexis Utility Patent Database and the IFI CLAIMS Current Patent Legal Status database are a reliable source for notice of assignments, reassignments, litigation and other status data for US patents.

Regarding preliminary status checking of patent documents in other countries, the Patent Information Users Group at www.piug.org has compiled a document of all the web- based free patent status resources in the world, such as the excellent EPOLINE site for EP patents.

When researching international patent status and assignee data, it is a fact that only a few industrialized countries are well covered by databases such as INPADOC and Derwent. The simplest inquiry "Does XYZ Co. own a patent on this product, and if so in what countries is it valid?" may be difficult to resolve. Answers to questions of assignment and ownership are often elusive; many large corporations use a wide variety of corporate names. Is the patent owned in Canada by Shell Canada, or Royal Dutch Shell, or Shell Inc.? Is a consortium the assignee of which Shell is a partner? Has the consortium allocated the same patent rights to specific corporations in different countries?

Patents missing from a corporate portfolio may be held personally by the CEO or founders of XYZ Co. - if the original inventor started the company he or she could still be listed as patent owner. XYZ Co.'s patents could also be owned by a subsidiary or parent company, or even a numbered company. It is therefore important to check with such corporate directories as the Thomas Register of American Manufacturers, Dunn's Million Dollar Directory, or the Directory of Corporate Affiliations for information on subsidiaries and branch companies.

If a company's patents cannot be found, competitive intelligence sleuthing through newsbases, SEC filings and annual reports may turn up evidence of license agreements indicating that XYZ Co. is using valid patents from other sources such as joint venture partners, universities or patent trolls. Unfortunately, registration of patent licenses is not required in most countries.

Often patent data is missing because it is alleged to be pending. However, even the United States now publishes most patent applications after 18 months, so the "patent pending" excuse wears thin after a couple of years. Provisional applications, of course, are held in secret for one year.

In order to verify whether a patent is issued, pending, or designated for a given country, reliable patent family databases must be checked to discover all the patent documents for a given invention based on a common priority filing date. Such information is included in INPADOC, Derwent's World Patent Index or STN's Chemical Abstracts. Note that INPADOC and Derwent have a different philosophy regarding patent families - Derwent is more inclusive on borderline patents, while INPADOC rigidly follows the common priority date rule. For many years some Canadian patent data was not transmitted to these data sources.

CIPO deserves some encouragement for improvements in patent documentation since it has become an official PCT search house, but there is a way to go before Canada has a first class Intellectual Property information resource.



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Last Updated: January 6, 2008