CIPO does not update its trademark .xml data to flag instances in which the examination process is informally expedited. However the data can be mined to detect such instances, e.g. filing-to-examination in 7 days; filing-to-approval in 17 days; as in the examples below.In Accelerated (expedited) Search and Examination I explained that CIPO’s trademark .xml files contain:
<tmk:RequestSearchCategory> and <com:RequestExaminationCategory> elements as they appear in the version of CIPO’s .xml file for the '779 application that was released for the week 22-Jun-2021 to 28-Jun-2021 (recall that CIPO releases new and updated .xml files once per week). This version of the file includes the 24-Jun-2021 Approved event seen in the online database Action History for the '779 application. The <com:RequestExaminationCategory> element encapsulates the Accelerated value, but note that neither element is dated—we can’t tell when prosecution of the '779 application was expedited by simply examining these elements.
According to its 03-May-2021 Requests for expedited examination Practice Notice, CIPO “...does not currently grant requests to examine trademark applications out of order”. The Notice outlines certain circumstances in which CIPO will accept a request for expedited examination, e.g. ongoing or anticipated Court action involving the trademark, to combat counterfeiting situations, prevention of “severe disadvantage in online marketplaces” and preservation of foreign priority claims1. Relatively few applications are likely to satisfy these criteria.
- The <tmk:RequestSearchCategory> element:
- According to CIPO’s Trademarks Data Dictionary this element “indicates when a confusion search has been performed against the trademark” and may encapsulate any one of the text values “No search”, “Normal”, “Accelerated”, “Earlier search” or “Undefined”.
- The <com:RequestExaminationCategory> element:
- According to the Data Dictionary, this element “contains the value indicating if an expedited examination was performed” and may encapsulate any one of the text values “Normal”, “Accelerated” or “Undefined”.
To determine when the value encapsulated by the <com:RequestExaminationCategory> element changed from “Normal” to “Accelerated”, we must work backwards through earlier versions of CIPO’s .xml files for the '779 application. The '779 application's Action History indicates that the Approved event was preceded by a 11-Mar-2021 Correspondence Created event. That leads us to the version of CIPO’s .xml file for the '779 application that was released for the week 09-Mar-2021 to 15-Mar-2021. The <com:RequestExaminationCategory> element in this version of the file also encapsulates the Accelerated value, so we need to go back further. The '779 application's Action History indicates that the 11-Mar-2021 Correspondence Created event was preceded by a 20-Oct-2020 Examiner’s First Report event. That leads us to the version of CIPO’s .xml file for the '779 application that was released for the week 20-Oct-2021 to 26-Oct-2021.
In this version of the file the <com:RequestExaminationCategory>
element encapsulates the Normal value as seen in the image on the right (click to enlarge the image). This tells us that examination of the '779 application was expedited before or simultaneously with the 11-Mar-2021 Correspondence Created event, although we can’t tell exactly when. [The process of working backwards through successive versions of an .xml file can be automated.]
According to its 03-May-2021 Requests for expedited examination Practice Notice, CIPO “...does not currently grant requests to examine trademark applications out of order”. The Notice outlines certain circumstances in which CIPO will accept a request for expedited examination, e.g. ongoing or anticipated Court action involving the trademark, to combat counterfeiting situations, prevention of “severe disadvantage in online marketplaces” and preservation of foreign priority claims1. Relatively few applications are likely to satisfy these criteria.
Does this mean that CIPO is not expediting examination of any applications, apart from those which meet the foregoing criteria? No it does not.
For example, application no. 2110715 went from filing on 31-May-2021 to a 07-Jun-2021 Examiner’s First Report in just 7 days, but that is not reflected in the <com:RequestExaminationCategory> element found in the corresponding version of CIPO’s .xml file for the '715 application. In any case, this example cannot be viewed in isolation. A CIPO examiner may informally advance an application for examination out of its routine order if the examiner is simultaneously considering another application by the same applicant to register a similar mark for similar goods/services. That appears to have happened in this case: a 07-Jun-2021 Examiner’s First Report issued simultaneously on application no. 2037049 in which the same applicant seeks registration of a similar mark for goods/services similar to those set forth in the '715 application. (The '049 application went from filing on 30-Jun-2020 to Examiner’s First Report in 342 days.)
How can instances of expedited examination be detected if CIPO isn’t flagging them in its data? By calculating the time difference—in days—between each application’s filing date and a relevant examination event date, then sorting the differences from smallest to largest2.
As I explained in Prosecution Events, CIPO’s trademark .xml files contain prosecution event data constituting a date-specific record of events throughout the prosecution of an application. Data Dictionary Appendix G lists prosecution events—a numerical code, an event name and a description are provided for each event3. Event code 20 “Examiner’s First Report” is particularly useful in detecting instances of expedited examination4.
Also useful is event code 26 “Approved” which indicates that the application has been approved for advertisement in the Trademarks Journal. An application may be approved without any examination reports issuing, so it is prudent to monitor the Approved event if the objective is detection of instances of expedited examination. For example, in just 17 days, application no. 2108922 went from filing on 21-May-2021 to Approved on 07-Jun-2021 with no intervening examination events. The same applicant does not appear to own any other marks, so the '922 application's expedited treatment does not appear to involve the informal mechanism mentioned above. Conceivably, the applicant may have qualified for expedited treatment pursuant to the aforementioned Practice Notice. However, if that is the case, CIPO did not utilize either of the <tmk:RequestSearchCategory> or <com:RequestExaminationCategory> elements to reflect such treatment. That is unfortunate since we are left wondering why some applications receive expedited examination whereas others have been pending for over 3 years with no examination as of 05-Jul-2021 (for example, see application no. 1894448).
1 Also see Requests for expedited examination in the context of the COVID-19 pandemic.↩
2 In practice, this can be done by executing appropriate SQL queries against a data warehouse constructed using CIPO’s trademark .xml data, as mentioned elsewhere in this blog.↩
3 Appendix G in the current Data Dictionary version 2.2 (dated 22-May-2019) does not list all of the event codes that will be found in CIPO’s trademark .xml data.↩
4 There is an error in Appendix G in the current version 2.2 of CIPO’s Data Dictionary: the “Examiner’s First Report” event is incorrectly assigned event code 21. In fact CIPO uses event code 20 for the “Examiner’s First Report” event. According to Appendix G, event code 20 is assigned to the “Examiner’s Letter” event. However, as of 05-Jul-2021, none of CIPO’s 1,798,684 trademark .xml files use the “Examiner’s Letter” event. Subsequent examination reports use the “Correspondence Created” event code 15.↩
