Joint Liaison Committee - Industrial Designs (JLC-ID)

Record of Discussion

Thursday November 19, 2009

Chair:

James Longwell

Attendees:

CIPO:

  • Denis Simard, JLC-ID Co-Chair (Director)
  • Francine Bouthillier (Manager, Business Operations)
  • Michel Patenaude (Director)
  • Micheline Vincent (Project Manager, IT projects)
  • Rita Carreau (Manager, Technical Policy)
  • Tracey Fitzpatrick (Technical Policy Officer, JLC - ID secretary)

CIPO Observers:

  • Anik Roy (Supervisor searching and processing of Industrial Design)
  • Lucie Dumont (A/Supervisor, Industrial Design Examination)
  • Margy Vilé (Senior Policy Analyst)
  • Suzanne Provencher (Communications Officer)

IP Profession:

  • James Longwell, JLC – ID Co-Chair (Gowling, Lafleur, Henderson)
  • Alain Provost (Robic)
  • Christine Genge (Smart & Biggar)
  • Curtis Behmann (Borden, Ladner, Gervais)
  • Gary Partington (Marks & Clerk) * via teleconference
  • Kent Fincham (MacRae & Co)
  • Kimberly Lachaine (Kirby, Eades, Gale, Baker)
  • Mark B. Eisen (Dimmock Stratton LLP) * via teleconference
  • Matthew Graff (Bereskin & Parr) *via teleconference
  • Sean Xiao-He Zhang (Blakes, Cassels & Graydon) * via teleconference
  • Stephen Beney (Bereskin & Parr) * via teleconference
  • Stephen Perry (Perry & Currier) * via teleconference
  • Michel Gerin (Intellectual Property Institute of Canada) *via teleconference

Absent:

  • Bob Storey (Bereskin & Parr)
  • Brad White (Osler, Hoskin, Harcourt)
  • Chantal Desjardins (Goudreau, Gage, Dubuc)
  • Christopher Hunter (Ogilvy Renault)
  • David French (Milton Geller)
  • David A. Ruston (Sim & McBurney)
  • J. Gastle
  • Jennifer Jannuska (Deeth Williams)
  • Mark Vickers (Perley Robertson)
  • Susan Chao (MBM Intellectual Property)
  • Theresa Astles (Cameron McKendrick)
  • Tim Bourne (Ridout & Maybee)

1) Welcome and Introductory Remarks (J. Longwell)

2) Introductory Remarks (D. Simard)

  • The service standard for turn-around-time from filing to first action is 9 months. CID has been maintaining a turn around time of 7 months since April 2009.
  • The current turn-around-time from filing to registration is 11 months.
  • There has been a 10% decrease in the filing of industrial design applications, likely as a result of the recession.
  • We currently have a global inventory of 4400 files
  • There has been a decrease in staff turnover. We currently have 15 ID examiners, including 2 examiners in training. Elizabeth Colinson will be starting as our new Quality Officer beginning Monday, November 23rd.

3) Terms of Reference (D. Simard)

  • Terms of Reference were circulated, and new members were welcomed.

4) SCT meeting of November 23, 2009 – update (D. Simard)

  • D. Simard will be attending this meeting.
  • At the last meeting in June 2009, fifteen areas of convergence were proposed, with a goal of a common approach to facilitate international filing.
  • J. Longwell indicated that he circulated the last SCT report to members for their info and comment.
  • D. Simard will meet with J. Longwell prior to the meeting to discuss CIPO’s position.

5) Role of CIPO’s International Relations Office (M. Patenaude)

  • This new Office was created in 2008 with a goal of bringing focus to CIPO’s international activities.
  • The International Relations Office will be working closely with CID on its international files, and in preparation for the upcoming SCT meeting.

6) Follow up (F. Bouthillier, M. Vincent)

Quality of filing and registration certificates

  • At the May, 2009 JLC – ID meeting, concerns were raised over clerical errors. Since then, two quality control checklists have been put into place, one prior to sending out filing certificates, and a second one prior to allowance.
  • Since the June 5, 2009 implementation of the Quality Control Checklists, the rate of errors has reduced considerably:
    • Filing Certificates:
      • January 2009-June 2009 – 33 errors
      • June 2009-present – reduced to 12 errors
    • Prior to allowance:
      • January 2009-June 2009 – 75 errors
      • June 2009-present – 20 errors
  • In addition, a log is being kept to pinpoint areas of concern.
  • Members wishing to do so may still follow up with their errors in writing to F. Bouthillier at Dessins-Industriels-Industrial-Designs@ic.gc.ca

Priority Claims

  • Priority claims are often missing from filing certificates and cover sheets. If a processing clerk receives an “incomplete” priority claim i.e. date missing, it would still be entered into the processing system and the “incomplete” priority claim would appear on the filing certificate.
  • The Systems team has put a temporary fix in place, whereas all claims (complete or incomplete) will show on the filing certificate, and only complete claims will show on the cover sheet at time of registration.

Inconsistency in Exam

Definitions of Interested Parties

  • M. Vincent explained that in June, the definition of Interested Parties on the Industrial Designs Database was changed to “Parties that are or have been involved with the ownership or licensing of the industrial design (such as the applicant as filed, past and present owners and licensees).”

7) Practice Update (R. Carreau)

Extension of time

  • A formal consultation on the Extension of Time practice took place.
  • Comments have been received, and are currently being reviewed.
  • No decisions have been made as of yet.
  • It has been noted that situations with last minute changes to ownership or changes to representation might possibly require further extensions of time. Members were asked for additional examples.
  • Following several comments, R. Carreau asked, were the Office to allow and require substantive reasons, then give a warning that no further extensions of time would be allowed, how long should the warning time be?
  • The consensus seemed to be that a 2 week warning would suffice.
  • D. Simard replied that the Office would consider a 1 month warning.
  • R. Carreau stated that CID would inform J. Longwell of the next steps, so that he could inform the membership.

Bold Wavy Boundary Lines

  • At the May, 2009 JLC – ID meeting, it was agreed that an ad-hoc meeting would be held to discuss the confusion surrounding bold wavy boundary lines. The meeting took place in June 2009, during which various examples were discussed.
  • CID management met and prepared guidelines, as well as a sample drawing, which were sent out to IPIC members for comments. Comments were received and have been reviewed.
  • CID is not anticipating making any changes to the guidelines, which are in line with overall practice and are not intended to address every specific situation. The acceptance of bold, wavy lines is not provided for in the Regulations, and as a matter of office practice this will be accepted only in exceptional cases.
  • There were no objections raised to the sample drawing, however more were requested.
  • CID is considering adding an additional drawing, similar to the appliance example that was discussed at the ad-hoc meeting. J. Longwell indicated that this would be welcome, as it would support a broader policy.
  • The proposed drawing will be sent out to IPIC for comments.

8) IPIC Committee Update (J. Longwell)

Disclaimers (G. Partington)

  • G. Partington did a search of disclaimers in descriptions on the Industrial Designs Database. The two he found were his files, which were discussed with the Exam Supervisor.
  • R. Carreau responded that since these are specific files, he may wish to contact F. Bouthillier or L. Dumont to discuss them.
  • G. Partington further commented that there does not appear to be much interest in disclaimers.
  • J. Longwell asked if colour is on the horizon, given that it would be a large burden on the Office.
  • G. Partington commented that IPIC should determine whether there is sufficient interest in this, and then should establish its position.
  • Action: The profession is invited to submit their comments on the subject of colour registrations.
  • Action: T. Fitzpatrick will send the Record of Discussion from May 4, 2005, where colour was discussed.

Environment in a single view (M. Eisen)

  • The legal issue is determining the scope of a design once it is registered. Case law indicates that the important features are those that are seen when in use. There are provisions allowing for one view showing environment. It would, however, be helpful to show as many views as possible when in use.
  • Many priority claims show all views with environment. The agent must delete the environment in all but one drawing, and often amend the description.
  • Action: T. Fitzpatrick will send the relevant Record of Discussion where multiple drawings showing environment was discussed.
  • R. Carreau replied that without a concrete example, it is difficult to understand the issue. CID would consider any submissions with examples.
  • Action: M. Eisen will discuss the subject of multiple views showing environment with the IPIC ID Committee, and if there is interest, will prepare a submission.

9) Round Table (all)

  • S. Perry asked, in situations where a design relates to pattern and ornament, and is shown in solid, with the balance shown in stippled lines, what are the requirements for cross hatching in a cross sectional view?
  • L. Dumont replied that the Office asks that the design portion be shown in solid cross hatching and the non design portion be shown in stippled cross hatching
  • G. Partington mentioned that when filing electronically, one transmission notification cannot be distinguished from another. He then asked if the Office could add the applicant name, title of the design, etc, to the notification.
  • M. Vincent replied that this change has already been suggested. This will be one of the improvements made once changes to e-filing begin. In the time being, she invited agents to contact her with the ID number, and she could provide the information.
  • A. Provost asked, when filing for a chair, then restricting the claim to the arm of a chair, is it necessary to refile and lose priority?
  • R. Carreau replied that yes, this is the case.
  • A. Provost asked for further explanation.
  • Action: D. Simard will add this topic to the forward agenda.
  • M. Vincent explained that the Country Code and list of Countries on the ID Database is being addressed. There will soon be 2 lists, based on ISO 3616 and the SCT Standard at WIPO. Countries available will be the ones identified in the ISO Standard. For priority claims, the ones listed will be the ones identified as members of either the Paris Convention, the WTO, Benelux, or any country for which there is an international deposit in the International Bureau of WIPO, made under the Hague agreement. Also, all names and addresses will be changed to all caps, and will be entered based on Canada Post standards.
  • G. Partington asked how this would affect foreign applicants.
  • M. Vincent replied that Canada Post has standards for foreign addresses.
  • C. Behmann asked if accents would be included in capital letters
  • Action: M. Vincent replied that she would confirm whether accents would be added to capital letters in addresses, and follow up.
  • ***Note – M. Vincent has since confirmed that accents will be added to capital letters.
  • C. Genge commented that Office Actions do not specify which drawings and which areas are problems. In addition, phone calls to Examiners are often not returned, and voice mail messages are often not updated to inform callers that staff is away.
  • Action: L. Dumont will ensure Examiners update their voice mail messages, and promptly return calls.
  • J. Longwell commented that he has had good experience with highlighted drawings. He thanked examiners for saving him calls, and keeping actions and costs down.

10) Closing Remarks

  • M. Gerin thanked CID for taking the time to listen to IPIC’s concerns. He said that he feels that JLCs are useful. He also thanked IPIC members for their participation.