Joint Liaison Committee – Industrial Designs (JLC – ID)

Minutes - Thursday, November 17, 2011

Chair: Christine Genge, Smart & Biggar

Attendees

CIPO

  • Felix Dionne, JLC – ID Co-chair, (Director)
  • Lynne Pelletier (Manager, Business Operations)
  • Micheline Vincent (Project Manager, IT Projects)
  • Rita Carreau (Manager, Technical Policy)
  • Tracey Fitzpatrick (Technical Policy Officer)

CIPO Observers

  • Suzanne Provencher (Communications Officer)
  • James Souliere (Program Officer)
  • Carla Giannetti (A/Supervisor, Industrial Design Examination)

IP Profession

  • Christine Genge, JLC – ID Co-Chair (Smart & Biggar)
  • James Longwell, (Gowling, Lafleur and Henderson) * via teleconference
  • Alain Provost (Robic) * via teleconference
  • Curtis Behmann (Borden, Ladner Gervais)
  • Gary Partington (Marks & Clerk) * via teleconference
  • Ian Paul Goodman (Shapiro Cohen)
  • Jennifer Jannuska (Deeth Williams) * via teleconference
  • Kent Fincham (MacRae & Co)
  • Kimberley Lachaine (Kirby, Eades, Gale, Baker)
  • Susan Chao (MBM IP Law LLP)
  • Taiji Yoshino (Nelligan O'Brien Payne)
  • Andrei Ionescu (G. Ronald Bell & Associates)

Absent

  • Christopher Hunter (Norton Rose OR S.E.N.C.R.L., s.r.l./LLP)
  • Peter Everitt (Ridout & Maybee LLP)
  • Michel Sophia (Bereskin & Parr LLP/S.E.N.C.R.L., s.r.l./LLP)
  • Clark Holden (Osler, Hosken & Harcourt, LLP)
  • Stephen Perry (Perry & Currier)

1. Welcome and Introduction

(C. Genge)

  • IPIC committees run on a two-year cycle for membership.
  • Steve Perry has taken on the role of Vice-Chair for this cycle.

2. Introduction

(F. Dionne)

  • Welcome to Christine Genge in her new role as Chair of the IPIC ID Committee and as Co-Chair of the JLC – ID. Thank you also to James Longwell for your work over the past two years on the Committee as Co-Chair.

Trends and Numbers

  • In the recent past, the growth in ID applications has been relatively stable. The forecast for 2011-2012 is 5200 applications. So far, the Office is on track to reach that goal with 3200 applications received to date.
  • Turnaround time is at an average of 2 weeks to conform, 4 months for a first action, and 9.5 months to registration.
  • It is interesting to note that 16% of total filings are Canadian, whereas no Canadian companies are in the list of top filers.
  • CID has streamlined its operations in the last year and a half and is committed to maintain the turnaround times despite reductions in the staff.

Enterprise Business Solutions (EBR)

  • Launched in 2007 as a corporate-wide business transformation initiative, the main goal of EBR was to improve the quality and efficiency of our products and services to clients, particularly through electronic means.After analyzing the results to date and comparing them to client needs and expectations, it's been concluded that CIPO must refine the scope of the IT projects in order to meet the needs and expectations of clients more effectively and efficiently.
  • This will be achieved by implementing smaller, more easily manageable projects based on business needs.
  • Despite discontinuing EBR, a lot of good work was done that will be used going forward, i.e. user requirements were documented.
  • CIPO is currently producing a 5-year IT investment plan, which should be ready at the same time as the Strategic Plan in the beginning of next fiscal year.

SCT 26

  • Since 2005, member States have recognized a need for a more harmonized industrial design registration process, which would encourage filings both domestically and abroad.
  • A 2007 survey on ID registration among member States is the basis for discussion on harmonization.
  • At the spring 2010 meeting, 5 areas of harmonization and 7 trends were identified.
  • In November 2010, an ID law treaty, similar to the Patent Law Treaty and the Singapore Treaty was proposed by European member States to cover the areas of convergence.
  • This came as a surprise to many, including Canada.
  • The 2011 meetings focused on the details of draft provisions. It will be a slow process.
  • European member States are pushing for a diplomatic conference but the developing countries do not clearly see the benefits.
  • The October 2011 meeting concluded with work on the terms of reference for a study on the benefits to developing countries.
  • Canada supports the work being done, but is in no rush for a diplomatic conference.

3. IT Updates

(M. Vincent)

Payment of ID Maintenance Fees — DEMO

  • The Office is working on a new feature that will allow clients to pay ID maintenance fees online.
  • It is important to note that the feature is still in development, and therefore the text in the screenshots may change.
  • The feature is very similar to that offered by CIPO's Patent Branch.
  • It may only be used for registered designs.
  • Clients can enter as many registration numbers as they wish. The numbers must be comma-separated. Any invalid registration numbers will show up in red.
  • Fees are automatically calculated. For a design that is being maintained under subsection 18(2) of the Regulations, the fee will be $400.
  • To pay with a deposit account, contact the Finance Branch in advance to link the Industry Canada User Account to the deposit account(s).
  • The feature will provide a confirmation of maintenance letter, as well as a receipt of payment.It is possible to view PDFs of these documents at any time.
  • The history of payment search will show the transactions that have been processed previously.
  • K. Lachaine asked if anyone can pay the maintenance.
  • M. Vincent replied yes.
  • C. Genge asked if anything is mailed out after you submit maintenance payment.
  • M. Vincent replied that the Office will not mail a confirmation. There will be a PDF version of the confirmation, and the client could print it.
  • F. Dionne asked if it is a problem that the confirmation is not mailed out.
  • C. Genge replied no, not a problem.
  • C. Behmann asked for clarification on file format.
  • M. Vincent replied that the link to the XML Schema Specifications can be found directly on the File Upload page of the electronic application.
  • C. Behmann asked if it is only necessary to advise the Finance Branch once.
  • M. Vincent confirmed that this was correct.
  • F. Dionne noted that the Office would consider offering a demo to the processing clerks working with agent firms, if that would encourage the use of the feature.
  • M. Vincent stated that the Office would send an email when the feature goes live.

Copyright Enhancements

  • The electronic copyright enhancements went live earlier in November.
  • The online forms now offer more information and guidance on how to complete them. The online assistance feature has also been improved.
  • The information submitted is now validated electronically through the system.

4. Industrial Design Office Practices

(R. Carreau)

Notice of Allowance and Delay of Registration

  • The changes that were consulted on are still being considered.
  • In its comments, IPIC requested a greater time lag between notice of allowance and registration. The Office is not prepared to introduce a lengthy delay, particularly in light of CIPO's focus on reducing delays.
  • With respect to IPIC's comment that the notice be part of the examination process, it was noted that there is no statutory requirement for an allowance notice, and that an electronic notification would simply be issued as a courtesy to clients. Adding a significant delay at allowance for all applications would be going against CIPO's goal of reducing turnaround times.
  • C. Genge noted that the need for the notice of allowance is based on the timing of the filing of a divisional application. Five days is a very short turnaround time when dealing with foreign intermediaries to receive instructions from the applicant.

    With regards to the difference between a courtesy notice and a required notice, the issue is recourse. If the courtesy notice is not received, the divisional may not get filed, and there is no recourse. If there were a statutory obligation for CIPO to provide the notice, the client would have recourse.

  • F. Dionne questioned the rationale of waiting until allowance before filing a divisional application.
  • C. Genge responded that it is often cost deferral, as well as a desire to ensure that the current application is in an allowable state.
  • C. Behmann added that by the time a file is allowed, the client usually knows if the product will actually be going to market.
  • F. Dionne explained that a short delay can be justified by the Office as this time could be used to ensure quality control. The notice could also be used to let clients know that the file is ready but there is an associated file holding it up from registration.
  • C. Genge commented that she sees value in knowing which designs have been associated.
  • Ian Goodman asked if it would be possible for the Notice of Allowance to only be issued in cases where a divisional objection was raised.
  • F. Dionne responded that this solution might not be practical since it would introduce even more uncertainty.
  • C. Genge commented that the proposed system is not workable in order to file a divisional.
  • R. Carreau asked why the client would not just file a delay of registration.
  • C. Genge responded that this would be possible, but that it would require advance authorization from clients in order to pay the fee. The big problem is the fact that it would be a courtesy notice. If it were not sent out for some reason, then there could be a problem.
  • R. Carreau commented that the Office had also consulted on a proposal for delay of registration to start on the date of allowance, rather than the date of receipt at CIPO. If this practice was implemented, the applicant could file a delay of registration request early in the process which would come into effect at allowance, providing a safety net in cases where the applicant wanted to consider filing divisionals.
  • F. Dionne explained that from his discussions with the new Commissioner, it is more likely that delays that are linked to business reasons (for instance, entry into market) have more chances to be accepted than delays linked to operational/BF related needs (i.e., agent needs more time).
  • Andrei Ionnescu asked how the Office came to the decision of 5 days.
  • F. Dionne responded that the time would not be an actual delay, but rather, could be used for quality assurance checks.
  • Andrei Ionnescu explained that 5 days is not sufficient time to get instructions from foreign associates. The very shortest reasonable time would be one month.
  • F. Dionne asked how often it would be necessary to seek instructions from clients.
  • K. Lachaine responded that it is virtually 100% of the time in the cases when a divisional is filed (which is less than 10% of the total files).
  • F. Dionne commented that the Office could look at more flexible delays in certain cases.
  • C. Genge commented that there is also the delay specified in the examiner's report to file divisionals, i.e. within two months.
  • K. Lachaine explained that she uses the two-month delay in the office action as the deadline.
  • C. Genge asked if there would still be the two-month courtesy window that examiners provide now if the notice of allowance practice was implemented.
  • R. Carreau responded that the Office had initially considered eliminating this, but we may need to reconsider. The idea was that it would no longer be necessary since the applicant could request delay of registration which would start at allowance, therefore giving time to file divisionals.
  • C. Genge commented that if the Office were to do away with the two-month notice, then agents would be forced to tell their clients that they would need to either file divisionals or delays of registration at the time of their initial response, which would introduce a fee that clients do not necessarily have now.
  • R. Carreau added that there is concern about penalizing all applicants with an additional delay if they don't need it. Only those who would need the additional delay would need to request one and pay for it.
  • J. Longwell commented that he appreciates the Office's effort to balance the need for a notice of allowance with the need to avoid a delay in 100% of cases, when it's not always necessary to have the additional delay. Although it may be unworkable in some cases, 5 days is better than nothing. Clients can always file divisionals and pay the fees later.
  • R. Carreau thanked members for their comments and responded that the Office would consider them and look again at the options.
  • C. Genge commented that IPIC appreciates the effort that the Office is putting forth to come up with a workable solution.

Searching Applications With Priority Claims

  • The Office will likely consult on a proposed practice change in the case where accelerated examination is requested, namely, if a client voluntarily submits a priority document, the Office could go ahead with an earlier search, i.e. the search could be done as early as six months from the priority date rather than waiting six months from the Canadian filing date.
  • C. Genge asked about the consultation on assignments.
  • R. Carreau responded that this consultation was part of the EBR project. It is currently not a priority in the CID branch. Although the Office is looking at a less onerous verification of documents, the Office has no plans at this time to implement the solution that was proposed in the consultation.

5. IPIC ID Committee Items

(C. Genge)

  • The IPIC Committee members understand that the portal that CIPO was developing has been shelved and the EBR project has been terminated. The IPIC Committee members would like an update on the electronic initiatives of the Office and the timeline for any changes contemplated. For example, is the process for electronic filing of applications being changed or revised?
    • M. Vincent responded that there are no changes planned at this time other than what was previously discussed.
  • The date on most documents issued by the Industrial Design Office spells out the month. One anomaly is the confirmation of delay of registration which still uses a numeric date-only format. The IPIC Committee member requests that the date format be changed to spell out the month to avoid any confusion as to what date is being referred to.
    • M. Vincent confirmed that this change will be part of the next DesignPlus release, which is expected to go ahead in late winter.
  • Some IPIC Committee members have noticed an increase in the delay in obtaining corrections when errors are found in filing certificates, recordal certificates and registration certificates. The Committee would like an update on the turnaround times.
    • L. Pelletier responded that the specific files that were mentioned are currently being dealt with. The Office's objective is to provide timely responses and to provide quality work. A quality working group has been implemented to look at all errors, and to determine why they occurred. That being said, the Office will do its best to improve the turnaround time in this regard.
    • C. Genge asked if there is a delay, who should agents contact.
    • F. Dionne suggested clients use the feedback mechanism (www.ic.gc.ca/cipo/internet.nsf/comp-eng?readform), so that the complaint be registered and will be forwarded to L. Pelletier.
  • An IPIC Committee member has noted that there are sometimes errors in a registration certificate that do not appear in the filing certificate, for example, with respect to the applicant address. The IPIC Committee members would like to know if the information from the filing certificates is transferred to the registration certificate electronically, or if it is keyed in fresh and therefore new errors may arise.
    • L. Pelletier responded that the information is not re-entered, unless a request for an amendment was received between the date of the filing and the date of the registration.
    • K. Lachaine responded that she will continue to keep an eye out for these errors.
  • The IPIC Committee members would like to know the Office policy on dealing with prior art submissions. Is the prior art reviewed or not? Also, it is suggested that the prior art submissions can be acknowledged in examiners' reports similar to what is done in patent application examiners' reports.
    • L. Pelletier responded that disclosure is a requirement in other jurisdictions, but not in Canada. Should the applicant wish to submit prior art submissions, such will be placed on file; however, it is the Office's intent to issue courtesy letters of acknowledgement. In cases where the applicant provides submissions in response to an objection relating to registrability, examiners should then address each submission.
    • R. Carreau asked what the specific intent was behind submitting prior art references.
    • A. Ionescu responded that there was no specific intent, but that it was simply an instruction by the clients. It was felt that perhaps the submission could help make the case stronger.
    • R. Carreau commented that if an examiner is writing a report anyway, then the prior art submission should be acknowledged. If, however, no office action was issued, the examiner will not issue a specific report to acknowledge the submission.
    • F. Dionne mentioned that there is not a specific office practice on this subject, but that he would discuss it with staff and determine how it should be addressed.
    • S. Chao asked what databases examiners use to search.
    • L. Pelletier responded that the CIPO database and United States Patent and Trademark Office database are searched.
  • It is noted that the problem with scanning quality can change the appearance of the design.
    • M. Vincent responded that the Office is unsure of the exact cause and is currently investigating the issue. Measures have been put in place to reduce the number of registered drawings with the checkered pattern being issued with the registration packages.
    • A. Ionescu asked why it is not possible to reproduce drawings in colour in the issued registration.
    • R. Carreau responded that the problem lies in reproducing the colour faithfully with different systems.
    • A. Ionescu commented that there are other jurisdictions where colour is protected. It would be nice if CIPO could at least scan the drawings in colour.
    • R. Carreau responded that design is about appearance, and that the drawings must be reproduced faithfully. The Office does, however, welcome written submissions on the value to clients of either protecting colour, or reproducing drawings in colour on the database. Currently, when colour drawings are submitted, they are placed on file, but not reproduced electronically.
    • J. Longwell will raise the issue with clients who have submitted colour drawings in the past.

6. Round Table

(all)

  • Curtis Behmann announced that he has been appointed to the AIPPI Committee on Designs. They will be looking at input from other countries on their design practices. He will bring that information back to the JLC members.
  • G. Partington asked for any examples where disclaimers were accepted by the Office.
  • R. Carreau responded that she would speak to examiners.
  • C. Genge asked for a status update on the Hague Agreement.
  • R. Carreau responded that the Office is currently doing some research such as preparing a legal gap analysis which is also looking at other jurisdictions that are considering joining.
  • F. Dionne added that the Commissioner has a high level of interest for discussions around PLT, Madrid Agreement, Singapore Treaty and Hague Agreement.

7. Closing

(C. Genge)

Thank you all for a productive meeting.
The next meeting will take place in the spring of 2012.