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Registration of assignments and correction of assignment-related information.

From: Canadian Intellectual Property Office

This practice notice is intended to provide guidance on current Canadian Intellectual Property Office (CIPO) practice and interpretation of relevant legislation and should not be quoted as, or considered to be, a legal authority. In the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. It is the responsibility of the applicant/right holder to decide how to proceed with respect to a particular application or other matter.

Registration

Assignments are often complex and diverse, frequently addressing matters reaching beyond IP rights. The complexity of these documents may necessitate a significant effort from the Patent Office in order to ensure that the documented changes in title are accurately reflected in Office records.

Therefore, in order to assist the Office in its effort to simplify and expedite the processing of assignments while maintaining a high quality standard, the Office has developed new forms for requesting the registration of assignments and strongly recommends their use.

The forms will be part of the record and will help ensure that all the required information has been submitted to the Office. The Office will use the content of the forms to assist with the registration of the assignment.

Please note that the assignments submitted will continue to be made available to the public. Parts of these documents may display personal information that is not relevant to the assignment being registered and the Office will accept that requesters omit or obscure any such information.

In the case where the forms are not used, the Office urges any requester to submit clear instructions. More specifically, in addition to the prescribed fee a request should include the following information, ideally on a cover sheet:

• the name of the assignor(s);
• the name and complete address of the assignee(s);
• the application or patent number against which the assignment is to be registered;
• specific information identifying which rights are being assigned and whether the interest in a right is being transferred in whole or in part.

A copy of the document effecting the transfer and either an affidavit or another proof satisfactory to the Commissioner that the assignment has been signed and executed must be submitted as per sections 49 and 50 of the Patent Act . The following proofs are all considered to be satisfactory:

• with respect to a patent, a statement from the requester stating that, to their knowledge, the document effecting the transfer has been signed and executed by all parties;
• with respect to a patent application, a statement from the requester stating that, to their knowledge, the document effecting the transfer has been signed and executed by the assignor;
• a similar statement of a witness;
• the signature of a witness or the presence of a corporate seal on the assignment document;
• a document showing that the assignment was registered in a patent office of another country.

Occasionally, an error is present in an assignment (in the document effecting the change in ownership) and/or an error is made in the entry of information in the Patent Office's records.

It is important to note that despite the fact that, as discussed below, many errors can be corrected; all documents that are registered by the Office will remain on record subject to a court order to the contrary.

Error introduced by the Office

Where the registered document provides the correct information but an error is introduced in the process of extracting the information from the document and reflecting it in Office records, the Office will correct the error upon receipt of a request from any person providing details about the error and referring to the registered document containing the accurate information. No fee will be required for the correction.

Error in an assignment document

In accordance with sections 49 and 50 of the Patent Act , the Office will proceed with the registration of an assignment provided that the request for registration complies with all procedural requirements. The Office takes the position, however, that an assignment may be registered without necessarily being recognized or, in other words, without being given effect. The Office will consequently not give effect to an assignment where it is satisfied that the assignment is invalid or where the assignor identified in the assignment does not correspond to the owner currently recognized by the Office.

Therefore, where a wrong document has been registered or where a registered document contains a mistake, Office records may be updated to reflect the correct situation following the receipt of:

• a request for the registration of a newly submitted correct assignment, which complies with all formal requirements for the registration of an assignment; and

To be considered acceptable, a request under b) must meet the following requirements:

• originate from one of the parties identified in the correct assignment; and
• contain a statement signed by the requester to the effect that the previously registered assignment contains a mistake and containing information describing the mistake.
• originate from one of the parties identified in the correct assignment;
• the assignee was incorrectly identified in the previously registered assignment;
• the error in the incorrect assignment was due to inadvertence or mistake without any intention to mislead; and
• the incorrectly identified assignee does not exist; or
• the incorrectly identified assignee is the same entity as the assignee identified in the correct assignment
• contain a statement signed by the mistakenly identified assignee to the effect that their name appeared in error on the incorrect assignment; and
• contain a statement signed by the assignee identified in the correct assignment to the effect that the error in the incorrect assignment was due to inadvertence or mistake without any intention to mislead

This mechanism cannot be used after the grant of a patent to correct errors that were introduced during the application stage.

Clerical errors

Certain errors in assignment documents may qualify as clerical errors that arose in the mechanical process of typewriting or transcribing.

These errors may be corrected under section 8 of the Patent Act rather than via the mechanism set out above. A request for a correction under section 8 of the Patent Act should be accompanied by the required supporting information and the prescribed fee.

The applicant must determine which correction mechanism applies to their particular situation and submit their request accordingly.

If a request for correction under section 8 of the Patent Act has already been submitted but is not the appropriate mechanism, a new request will be necessary and will have to refer explicitly to the appropriate mechanism.

Jurisdiction of the Federal Court

In order to obtain a change that will further alter the content of Office records, such as the removal of a previously registered document, a requester may need to seek an order from the Federal Court.

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Trademarks guide

Trademark order form, privacy notice.

All personal information created, held or collected by the Canadian Intellectual Property Office is protected under the Privacy Act . This means that you will be informed of the purpose for which it is being collected and how to exercise your right of access to that information. You will be asked for your consent where appropriate.

See the " products, fees and response times " for more information.

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• Enter the document number.
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For security measures, our Office will only contact you by telephone to obtain your credit card information and no record will be kept for future orders. Furthermore, any credit card information sent via email or using this web form will be ignored and deleted. It is our policy to contact clients to confirm the cost and to finalize delivery and payment details.

• Intellectual Property

Registering Documents With CIPO

A frequent interaction with the Canadian Intellectual Property Office is the registering of documents ‎against pending or granted patents and trademarks. Assignments of intellectual property rights, changes of corporate ‎name, reorganizations and security interests are all commonly registered. As part of changes expected ‎later this year, this practice is likely to change, reducing some formalities.

For the approximately 23,000 patents granted in 2018, around 20,000 of these types of documents ‎were registered. With a government fee of $100 per document, around $2 million in government fees ‎were paid to register various documents against the granted patents. ‎

‎Currently, for patents, sections 49 and 50 of the Patent Act provide certain guidance as to the ‎assignments of patents and the registration of assignments against patents and patent application. In ‎particular, section 50(2) says that “Every assignment of a patent … shall be registered in the Patent ‎Office in the manner determined by the Commissioner.”

The Patent Act also sets out guidance as to the proving the assignment stating at s.50(3) “No assignment, ‎grant or conveyance shall be registered in the Patent Office unless it is accompanied by the affidavit of ‎a subscribing witness or established by other proof to the satisfaction of the Commissioner that the ‎assignment, grant or conveyance has been signed and executed by the assignor and by every other ‎party thereto.” The Manual of Patent Office Practice (MOPOP) says that the patent office will accept a ‎variety of proofs, including:

• A statement from the requestor that to their knowledge the document effecting the transfer has ‎been signed and executed by all parties (for patents), or by the assignor (for patent applications); ‎
• A similar statement by a witness; ‎
• The signature of a witness or a corporate seal on the assignment document; ‎
• A document showing that the assignment was registered in a patent office of another country. ‎

The applicable sections of the Patent Act will be amended, likely in the fall of 2019, as part of ‎significant changes to the Patent Act (see Bill C-43 ) to read in part as follows: ‎

49 (2) The Commissioner shall, subject to the regulations, record the transfer of an application for a patent on the request of the applicant or, upon receipt of evidence satisfactory to the Commissioner of the transfer, on the request of a transferee of the application. (3) The Commissioner shall, subject to the regulations, record the transfer of a patent on the request of the patentee or, upon receipt of evidence satisfactory to the Commissioner of the transfer, on the request of a transferee of the patent.

Similar changes are being made to the Industrial Designs Act (also part of Bill C-43) and the Trademarks Act (see Bill C-31 ) which will standardize the practice to some degree.

The Patent Office practices for the new Act and Rules are still being finalized but a consultation on the procedures was ‎announced earlier this year and is open until May 27 th . These procedures are based on the draft ‎ Patent Rules published in the Canada Gazette at the end of 2018. In addition to referring to all updates ‎to chain of title of patents and patent applications as ‘transfers’, the procedures will allow an applicant ‎or the patentee to record a transfer without additional evidence (i.e. without any underlying ‎documentation). Only if the request is made by a transferee will documentation be required, to a ‎similar standard as is required under the present rules. This will reduce the need for providing specific supporting documentation in some circumstances.

Other documents such as security agreements may continue to be registered against patent and ‎patent applications as permitted under new proposed Patent Rule 125 and under similar sections for trademarks and industrial designs.

The Patent Act and Rules currently ‎and under the proposed amendments do not have an explicit priority system for registered liens and ‎security interests. New s49(4) of the Patent Act, that voids transfers if a subsequent transfer if the transfer to the ‎subsequent transferee has been recorded, only appears to apply to transfers, not the registration of ‎other documents. ‎There have been few reported cases on the effect of registering documents and particularly assignments with respect to priority but see Verdellen v. Monaghan Mushrooms Ltd , 2011 ONSC 5820 , where the lack of a registered assignment was a key fact in determining ownership of patents.

We expect that the practice of registering transfers as well as security interests in egistered intellectual property ‎will continue under the new rules coming into force later this year and that applicants will take ‎advantage of the reduced formalities to reduce the transaction costs in Canada.‎

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Related Expertise

Electronic signature considerations for patent practice

In the wake of the COVID-19 pandemic, many people are working from home, making it more difficult than usual to get handwritten signatures. Here are answers to some frequently asked questions regarding the use of electronic signatures on assignment documents for patents and patent applications.

When do I need to submit assignment documents to the Canadian Intellectual Property Office?

It is no longer the case that you always need to submit assignment documents to the Canadian Intellectual Property Office (CIPO) in order to record a transfer of a patent or patent application. According to procedures that came into effect in October 2019, the applicant may record a transfer without submitting the assignment document. Evidence of the transfer is only required when the transfer is recorded by the transferee, in which case a copy of the assignment document along with one of the following pieces of evidence would be considered satisfactory (s. 6.05.01b, MOPOP):

• A signed statement from the transferee stating that to their knowledge, the document effecting the transfer has been signed and executed by all parties;
• An affidavit, or other proof to the satisfaction of the Commissioner, from a witness stating that to their knowledge, the document effecting the transfer has been signed and executed by the assignor;
• The signature of a witness or the presence of a corporate seal on the document effecting the transfer; or
• A document showing that the transfer was registered in a patent office of another country.

There is no general requirement to submit assignments to CIPO in conjunction with a patent application in Canada, but the option to do so remains available as a distinct process from recording a transfer

Does CIPO accept electronic signatures on assignment documents?

Generally, CIPO does not accept electronic signatures. However, due to the COVID-19 pandemic, CIPO has reduced its signature requirements and is temporarily accepting electronic signatures. This temporary measure was recently published on  CIPO's website  (see Question #39). Although it appears that this measure applies to all documents, including assignment documents, CIPO does not explicitly specify whether assignment documents may be electronically signed. CIPO has also not specified how long it will continue to accept electronic signatures.

Which types of electronic signatures does CIPO accept?

Due to the COVID-19 pandemic, CIPO is temporarily accepting the following types of electronic signatures:

• Facsimile signatures (images of a signature submitted by facsimile)
• Text string signatures (also known as s signatures (Ex: /JohnDoe/))
• Font type signatures
• Digital signatures that are an electronic capture of a handwritten signature (such as DocuSign)

Are electronically-signed assignment documents legally valid?

In addition to the question of whether CIPO will accept electronic signatures, there is the further question of whether an electronically signed assignment legally effects the transfer of patent rights. This will depend on the jurisdiction of the assignment. If the assignment is governed by foreign law, then the legal validity of the electronically signed assignment document will depend on the law in that foreign jurisdiction.In this case, neither the  Patent Act  nor the  Patent Rules  (SOR/2019-251) requires assignment documents to be signed. There is therefore no current requirement for assignment documents governed by Canadian law to use handwritten signatures. Nonetheless, given the temporary nature of existing procedures, and potentially complex jurisdictional issues, the legal validity of electronic signatures on any particular document deserves careful consideration. Please connect with your Gowling WLG IP professional for more information.

In Canada, there are separate federal and provincial regimes for electronic signatures. The federal regime applies to the  Patent Act  (R.S.C., 1985, c. P-4), since it is a federal statute. Part II of the  Personal Information Protection and Electronic Documents Act  (S.C. 2000, c. 5) (PIPEDA) deals with electronic signatures under the federal regime. If a federal statute requires a signature on a document, then that signature must be handwritten, unless the federal statute in question appears in Schedules 2 or 3 of PIPEDA. Very few federal statutes appear in these Schedules. As a result, the federal regime under PIPEDA has limited applicability. In particular, the  Patent Act  is not listed in the Schedules. When a federal statute requires a signature on a document and does not appear in Schedules 2 or 3 of PIPEDA, you can also find permission to use an electronic signature in the federal statute itself, in related regulations, or in case law.

In this case, neither the  Patent Act  nor the  Patent Rules  (SOR/2019-251) requires assignment documents to be signed. There is therefore no current requirement for assignment documents governed by Canadian law to use handwritten signatures. Nonetheless, given the temporary nature of existing procedures, and potentially complex jurisdictional issues, the legal validity of electronic signatures on any particular document deserves careful consideration. Please connect with your Gowling WLG IP professional for more information.

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Canadian Trademarks: File Now, Renew Now!

By Alice Denenberg

Significant changes are coming to the Canadian Intellectual Property Office (CIPO). The changes were passed into law in June 2014. The new law is not yet in force, but will be in force on June 17, 2019 .

Changes to come into effect as of June 17, 2019 include:

• Membership to the Madrid Protocol: Canada will join the International Registration system so it can be designated as an extension country from an existing or new International Registration filed through the World Intellectual Property Organization.
• Classification Requirement: Canada will adopt the Nice Classification system, which is the current system in effect in the U.S and most other countries. Classifications of goods and services will be mandatory. Eventually all existing trademark registrations not classified will require reclassification.
• Elimination of Use to Secure Registration: Neither a declaration of use nor a date of first use will be required to secure a Canadian trademark registration. Use will still be necessary to determine priority of rights and to defend against a nonuse cancellation.
• Elimination of Foreign Registration Basis: The foreign registration filing basis will be eliminated. This means that it will no longer be possible to rely on a U.S. trademark registration to secure trademark protection in Canada. Priority claims will remain.
• New Bar to Registration: There will be a new bar to registration, “lack of distinctiveness.” This refusal means that the subject application does not function as a trademark.
• Acceptance of Letters of Protest: Letters of Protest allow a third party to notify the trademark office of evidence bearing on the registrability of a trademark. CIPO will accept Letters of Protest bearing on confusion any time up to registration.
• Division of Applications: Classes will be permitted to be divided from the application. A class that is subject to a refusal or an opposition will be able to be separated out so that the remainder of the application can register.
• New Trademark Protection: Nontraditional trademarks such as color, taste, holograms, sounds, and texture, as well as others, will be registrable.
• Elimination of Registration Fee: The $200 registration fee will be eliminated. Marks accepted for publication, published, or allowed before the new law is in force may still be subject to this fee.
• Change of Registration Term: The registration term will go from 15 years to 10 years.
• Assignments and Merger: Recording of assignments and mergers will be simplified by eliminating the need for supporting documents.
• Increase in Official Fees: Application filing fees and renewal fees will increase and the CIPO will charge additional per class fees.

What does this mean for you?

Trademark Registration

Trademarks filed now are expected to be examined under the new trademark rules and should not require use to secure registration.

Beware: Trademark trolls are taking advantage of the current low official filing fees ($250 – unlimited classes) and the fact that a trademark filed now is unlikely to require use to register. Trademark trolls have started filing trademark applications for marks that are similar to existing U.S. and foreign brands, covering all 45 available classes. These trademark applications (and any eventual registrations) can serve as a basis for a confusion refusal and prevent registration of a brand owner’s important trademarks in Canada. In some cases, they may be used for ‘extortion’ by requesting payment for assignment of their trademark(s) to your company.

In Canada, cancellation due to nonuse is not available until a trademark has been registered for at least three (3) years. Oppositions and litigations are costly alternatives. Earlier filing is therefore recommended to avoid this costly scenario.

If you do not have protection of your trademark in Canada, now is the time to file!

Canadian Trademark Renewal

The current official fee for a trademark renewal is $350 (CAD) regardless of how many classes are listed in the registration.

Specimens, declarations of use, or actual use in Canada are NOT required in order to renew. A trademark registration may be renewed now, regardless of when the renewal term expires. You may renew your entire Canadian trademark portfolio.

The new renewal term will depend on when the current term ends. A trademark renewed now will have a term of:

• 10 years, if the renewal deadline falls after the new law is in effect
• 15 years, if the renewal deadline fall before the new law is in effect

Reclassification

Since Canada did not previously adopt the Nice classification system, legacy trademark registrations are not classified. Currently, compliance with Nice classification is voluntary. However, CIPO will eventually require mandatory reclassification of all trademark registrations.

Watch Services

To keep an eye out for infringing applications, brand owners may wish to include Canada in any watch service subscriptions. This can be useful in conjunction with Letters of Protest.

Now is a good time to review your trademark portfolio and file for trademark protection in Canada before the official fees increase and before per class fees are added. Canadian trademark portfolios may and should be renewed before the new law comes into effect.

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Canada: Electronic Signature Considerations For Patent Practice

In the wake of the COVID-19 pandemic, many people are working from home, making it more difficult than usual to get handwritten signatures. Here are answers to some frequently asked questions regarding the use of electronic signatures on assignment documents for patents and patent applications.

When do I need to submit assignment documents to the Canadian Intellectual Property Office?

It is no longer the case that you always need to submit assignment documents to the Canadian Intellectual Property Office (CIPO) in order to record a transfer of a patent or patent application. According to procedures that came into effect in October 2019, the applicant may record a transfer without submitting the assignment document. Evidence of the transfer is only required when the transfer is recorded by the transferee, in which case a copy of the assignment document along with one of the following pieces of evidence would be considered satisfactory (s. 6.05.01b, MOPOP):

• A signed statement from the transferee stating that to their knowledge, the document effecting the transfer has been signed and executed by all parties;
• An affidavit, or other proof to the satisfaction of the Commissioner, from a witness stating that to their knowledge, the document effecting the transfer has been signed and executed by the assignor;
• The signature of a witness or the presence of a corporate seal on the document effecting the transfer;
• A document showing that the transfer was registered in a patent office of another country.

There is no general requirement to submit assignments to CIPO in conjunction with a patent application in Canada, but the option to do so remains available as a distinct process from recording a transfer

Does CIPO accept electronic signatures on assignment documents?

Generally, CIPO does not accept electronic signatures. However, due to the COVID-19 pandemic, CIPO has reduced its signature requirements and is temporarily accepting electronic signatures. This temporary measure was recently published on CIPO's website (see Question #39). Although it appears that this measure applies to all documents, including assignment documents, CIPO does not explicitly specify whether assignment documents may be electronically signed. CIPO has also not specified how long it will continue to accept electronic signatures.

Which types of electronic signatures does CIPO accept?

Due to the COVID-19 pandemic, CIPO is temporarily accepting the following types of electronic signatures:

• Facsimile signatures (images of a signature submitted by facsimile)
• Text string signatures (also known as s signatures (Ex: /JohnDoe/))
• Font type signatures
• Digital signatures that are an electronic capture of a handwritten signature (such as DocuSign)

Are Electronically Signed Assignment Documents Legally Valid?

In addition to the question of whether CIPO will accept electronic signatures, there is the further question of whether an electronically signed assignment legally effects the transfer of patent rights. This will depend on the jurisdiction of the assignment. If the assignment is governed by foreign law, then the legal validity of the electronically signed assignment document will depend on the law in that foreign jurisdiction.In this case, neither the Patent Act nor the Patent Rules (SOR/2019-251) requires assignment documents to be signed. There is therefore no current requirement for assignment documents governed by Canadian law to use handwritten signatures. Nonetheless, given the temporary nature of existing procedures, and potentially complex jurisdictional issues, the legal validity of electronic signatures on any particular document deserves careful consideration. Please connect with your Gowling WLG IP professional for more information.

In Canada, there are separate federal and provincial regimes for electronic signatures. The federal regime applies to the Patent Act (R.S.C., 1985, c. P-4), since it is a federal statute. Part II of the Personal Information Protection and Electronic Documents Act (S.C. 2000, c. 5) (PIPEDA) deals with electronic signatures under the federal regime. If a federal statute requires a signature on a document, then that signature must be handwritten, unless the federal statute in question appears in Schedules 2 or 3 of PIPEDA. Very few federal statutes appear in these Schedules. As a result, the federal regime under PIPEDA has limited applicability. In particular, the Patent Act is not listed in the Schedules. When a federal statute requires a signature on a document and does not appear in Schedules 2 or 3 of PIPEDA, you can also find permission to use an electronic signature in the federal statute itself, in related regulations, or in case law.

In this case, neither the Patent Act nor the Patent Rules (SOR/2019-251) requires assignment documents to be signed. There is therefore no current requirement for assignment documents governed by Canadian law to use handwritten signatures. Nonetheless, given the temporary nature of existing procedures, and potentially complex jurisdictional issues, the legal validity of electronic signatures on any particular document deserves careful consideration. Please connect with your Gowling WLG IP professional for more information.

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USPTO modernizes patent, trademark assignment request process

Beginning August 1, the U.S. Patent and Trademark Office (USPTO) is streamlining the process for following new assignments, obtaining information on pending assignments, questions on assignments, liens on patents, filing assignments, recordation forms, and trademark assignments.

Going forward, users will submit requests virtually using the Electronic Patent Assignment System (EPAS) and Electronic Trademark Assignment System (ETAS) storefronts. Paper and fax assignment requests will be directed to the EPAS and ETAS storefronts for digital submissions.

The collection of assignment information is required by 15 U.S.C. § 1057 and 1060 and is used by the public to submit (and by the USPTO to process) patent and trademark assignment recordation requests using the EPAS and ETAS.

For more information, contact the Assignments Recordation Branch customer service personnel at [email protected] or (571) 272-3350, or visit the Assignments Recordation Branch webpage on the USPTO website.

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