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Second CIPO Patent Quality Conversation

From: Canadian Intellectual Property Office

View as PDF (PDF: 2.54 MB; 42 pages)

CIPO Patent Quality Summit: Summary and Next Steps
Marie Quinn, Quality Program Manager, Patent Branch
English:
French:

Welcome to the second CIPO Patent Quality Conversation!

Quality is never an accident. It is always the results of intelligent effort

John Ruskin

Agenda for Today's Conversation

  • Purpose
  • Quality Summit
    • Panels
    • Workshop insights
      • Defining Patent Quality
      • Quality Factors
      • Publishable Metrics
  • Summit Feedback
  • Next Steps
  • ISO Audit

Purpose

The purpose of these conversations is to engage you, our stakeholders, and collaborate with you in an effort to continually improve the quality of our patent products, processes and services.

CIPO Patent Quality Summit

Fostering Innovation by advancing patent quality

February 26, 2019

The CIPO Patent Quality Summit fostered innovation through enhancing patent quality by:

  • Engaging participants on quality related topics through panel discussions
  • Collecting participant feedback on how they define patent quality and what they would like to see in terms of metrics and reporting
  • Encouraging networking and sharing of perspectives regarding patent quality

Summit - By the numbers

  • Over 60 participants – including stakeholders from IPIC, SMEs, industry, Government of Canada agencies, and CIPO employees
  • 1 keynote speaker – Dr. Khaled El Emam discussed the role of IP in a successful business strategy
  • 6 guest panelists – 3 panel discussions
    • Role of artificial intelligence in searching
    • Obstacles to patent quality
  • 1 presentation – CIPO presentation on our Quality Management System
  • 1 interactive workshop – activities designed to gather feedback on publishable metrics

Summit - Agenda

Morning

Keynote Address

Panel Discussions

  • Search and Patent Quality
    • AI, Databases, Search tools, client and examiner searching, comprehensive searching, etc.
  • Obstacles to Patent Quality
    • Quality vs timeliness vs cost, etc.

Afternoon

CIPO Patent Quality Presentation

Panel Discussion

  • Listening to our Clients

Workshop

  • Defining Patent Quality
  • Prioritization of Quality Factors
  • Monitoring and Reporting on Patent Quality

Panel 1 – Searching and Patent Quality

Panel 1

Panelists

  • Ian Wetherbee – Engineering Lead for Google Patents
  • Alexandra Daoud – Patent Agent and Partner at Norton Rose Fulbright
  • Berry deBruijn – Researcher, National Research Council
  • Anne-Marie Garand-Sheridan – Patent Examiner and Search Expert

Highlights

  • Searcher must be able to clearly understand the invention
  • Work done at outset in drafting and communication with searcher lays the ground for a more meaningful search
  • Trade off between time and quality
  • Using the appropriate search engine is key to returning most relevant results
  • Advances will be able to capture meaning of paragraphs or full documents to find relevant hits
  • AI driven technologies may start to look at whole collections at once
  • Confidence in ability to know when the search is done

Panel 2 – Obstacles to Patent Quality

Panel 2

Panelists

  • Greg Vidovich – Associate Commissioner for Patent Quality, USPTO
  • Jenna Wilson – Patent Agent, Partner at Wilson Lue, and Chair of the Patent Practice Committee
  • Catherine Eckenswiller – Legal Counsel, VBI Vaccines Inc
  • Kathleen Murphy – Director Biotechnology Division, CIPO

Highlights

  • Patents must be compliant with Act and Rules, enforceable and valuable
  • Balance between quality, cost and time
    • both to prepare and examine applications
  • How to measure quality?
  • Quality is a shared responsibility between stakeholders and the office

Panel 3 – Listening to our Clients

Panel 3

Panelists

  • Marie Quinn – Program Manager - Quality, Patent Branch
  • Stephen MacNeil – Member, Patent Appeal Board
  • Andrée Patry – Manager, Operations Sector
  • Christine Piché – Senior Director, Patent Services and Strategic Affairs

Highlights

  • CIPO is preparing for the Patent Law Treaty
    • Mapping updates, addition of QC steps, testing of software, awareness
    • Review of office correspondence and improvements being put into place
    • Ensure client is well aware of what steps need to be taken
  • Should examiner interview service be expanded?
  • Should CIPO standardize examiner’s reports?
  • Quality is a shared responsibility between stakeholders and the office

Workshop Insights -
Patent Quality Definition

Workshop

Words Used to define Patent Quality

Workshop part 1 - Defining Patent Quality
value 12.3%
consistency 7.7%
validity 7.7%
enforceable 4.6%
timeliness 4.6%
clarity 3.1%
communication 3.1%
scope 3.1%
trust 3.1%
other 26.2%

How do Stakeholders Define Patent Quality?

  • Value
  • Consistency
  • Validity
  • Enforceable
  • Timeliness
  • An enforceable and valuable patent obtained in a timely manner
  • Validity (begets) enforceability (drives) value
  • Provide a consistent and timely process in order to provide a valid and enforceable patent having value for the patent holder
  • Patent Quality refers to a high value property right stemming from an enforceable and valid patent
  • Consistent delivery of enforceable patent rights in a timely fashion
  • Quality patents are high-value enforceable rights in a timely manner

Quality means different things to different people

Factors Affecting Quality
Workshop part 2 - Quality Factors

Top 6/20 Quality Factors selected:

  • Claims granted commensurate in scope with what the applicant has invented and disclosed
  • Examination of applications and of responses from the applicant is thorough
  • Application of Canadian Patent Act and Rules and CIPO practices is consistent between all examiners
  • A comprehensive search of the prior art is conducted by a knowledgeable examiner
  • Confidence in the expertise and knowledge of the examiner
  • Correspondence received from the Office is easy to understand and free of errors

Stakeholder Input

  • Consistency and accuracy are more important than timeliness
  • Confidence in examiner knowledge is key
  • Improvement of online services is needed

Workshop Insights -
Patent Quality Metrics

Measuring and Reporting on Patent Quality
Workshop part 3 - Publishable Metrics

Ultimate goal: To create patent quality dashboards

  • Determine measureable quality attributes
  • Stakeholder feedback
    • From the list of 20 quality factors, pick 3 and identify metrics
Ensuring consistency
  • Training frequency
  • Customer survey/complaints review
  • Audit granted patents
  • Centralize review of QC
  • Standardize examiner reports
Ensuring error free grants
  • Compiling number of grant corrections
  • Tracking number of errors originating from applicant/office
  • Quality audit of granted patents
  • Number of certificates of correction issued per quarter
  • Number of re-examinations and reissues
Ensuring excellence in client service
  • Track number of applications filed through website vs. paper
  • Compile amount of times CIPO website malfunctions
  • Regular client surveys targeting work products

Current Metrics

Quality
  • % examiner products compliant based on quality control
    • National reports and allowances, International search reports and opinions
Timeliness
  • % on time
    • Office actions
    • Issue filing dates
    • International search reports and opinions, etc.
Efficiency
  • Number of office actions/disposal
  • Number of cases awaiting action

Potential Dashboards

  • Error free grants – Number of correction certificates
  • Quality – % examiner reports compliant based on quality control
  • Feedback – Complaints & response time
  • Timeliness – % office actions on time
  • Training – Number of training hours per employee
  • Efficiency – Number of cases awaiting action

Summit – Participant Feedback

  • Clients are more confident knowing that PB has a robust QMS system in place where we continually strive to improve our products
  • Examiner interview service is a very positive initiative.
    • more frequent
    • include discussion of more substantive issues
    • Interview record content

Summit – Next Steps

  • Compile lessons learned from summit – Spring 2019
  • Write and share Summit Report with all attendees – Spring 2019
  • Develop dashboards to publish in 2020
  • Align priorities with client feedback
  • Engage with stakeholders through more Patent Quality conversations

ISO Certification

ISO 9001:2015 Certification

  • The Patent Branch obtained ISO certification in March 2017
  • ISO 9001:2015 defines standard criteria for a Quality Management System based on the principles of consistency in meeting customer requirements and continuous enhancement of quality

2019 Surveillance Audit

  • ISO certification maintained after another successful ISO Surveillance Audit in March 2019!
  • Demonstrates our commitment to continuously improving our QMS

Feedback / Questions

Let us know what you think!

Send us your questions through the WebEx chat box.

Quality Conversation Topics

To suggest topics for an upcoming Patent Quality Conversation, please email us at: ic.qualitedb-pbquality.ic@canada.ca

Thank you

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