Archived — Practice Committee Meeting PB/IPIC - January 19, 2016

Tuesday, January 19, 2016, 1:00-3:00 PM

Attendees

Items

1. Introduction and review of the name of the committee

A. Lajoie welcomed attendees to the meeting of the committee formerly known as the Joint Liaison Committee (JLC) and newly named the Patent Practice Committee (2PC) IPIC-PB .

The minutes of the JLC meeting of June 26, 2015 were approved with the following amendment: M. Paton wished to add to those minutes, at the end of item 5, the suggestion she had made that both the terms “applicant” and “owner” be used on all forms received from the Office.

2. Update on PB projects

a) E-filing (creation of consultation sub-group)

D. Boudreau provided an update on the e-filing project.

Detailed business requirements for the project have been drafted and it is expected that deployment will occur at the end of 2017. The Office would like to create an e-filing project sub-working group in which 4 or 5 IPIC members would participate in consultations, with the first meeting to take place in February. J. Pivnicki indicated that he would put a notice out requesting volunteers from IPIC to participate in the sub-working group.

b) Legislative update

S. Vasudev provided an update on legislative projects.

Bills C-53 and C-59, which included legislative amendments to the Patent Act, received royal assent in December, 2014 and June, 2015, respectively. These amendments are expected to come into force in the fall of 2017, along with accompanying amendments to the Patent Rules. The work on regulatory amendments has been advancing. Consultation on these proposed amendments will be conducted when they are published in Canada Gazette Part 1, which publication is expected to occur in January, 2017. Comments received at that time will be considered and further amendments will be made accordingly. Regulatory amendments would then be published in Canada Gazette Part 2 in August, 2017.

c) MOPOP update and consultation

S. Vasudev provided an update on the MOPOP.

Eighteen of the twenty-five chapters of MOPOP have been updated. Chapter 23, newly titled “Disclaimers, Re-examination, Reissue and Correction of Clerical Errors”, was updated in December, 2015. Current work has been focussed on Chapter 15 titled “Anticipation, Obviousness and Double Patenting” and Chapter 17 titled “Biotechnology and Medicinal Inventions”. Chapter 15 will be published shortly. It is expected that 5 updated sections of Chapter 17 pertaining to “Living Matter”, “Nucleic acids and Proteins”, “Deposits of Biological Material”, “Chemical Combinations and Synergy” and “Reach-through claims” will be published in the next few months. The Office is continuing to work towards transforming the paper MOPOP chapters into an online tool. The online MOPOP project is now encompassed under the “CIPO Modernization of Online Manuals and Tools” project.

3. PB Topics

a) Patent Agent Registry Renewal

S. Vasudev discussed Patent Agent Register renewal. The renewal period for the Patent Agent Register is from January 1st through to March 31st of each year. The requirements to renew are set out in subsection 16(1) of the Patent Rules. Following the 2015 amendments to the Rules, the Office no longer informs agents and firms of the requirement to annually renew registration. However, reminders were sent via LISTSERV and Twitter, and were published on CIPO’s main web page in February of 2015. On December 18, 2015, thirteen agents and firms were removed from the Register for failure to renew. Those that have been removed have 1 year to reinstate their registration by following the requirements of section 17 of the Rules. Failure to reinstate within the prescribed period means the registration process must be started anew. Applicants will be instructed to appoint a new patent agent for applications currently under the care of those agents who have been removed from the Register. A LEAN project is ongoing in the Office concerning the annual patent agent renewal exercise.

J. Wilson noted that, unlike the Trademarks Branch, the Patent Branch cannot publish a full list of registered patent agents. She wondered if there was any plan to change this and if there could also be a list that is published of patent agents who have been removed from the Register.

A. Lajoie responded that this would require amendments to the Patent Act. However, the ultimate goal of the Office’s modernization project is to achieve consistency among the branches.

M. Paton wondered what the timeline is for the Office’s confirmation of renewal of patent agent registration. J. Pivnicki indicated that it would be desirable to know how CIPO confirms renewals of patent agents and firms. A. Lajoie indicated that the Office will follow up on these questions via e-mail.

b) Agent advice letter (in the context of assignments)

D. Boudreau presented this item.

When an Assignment is filed, the correct information will be entered into the system, and then agents which were not the expeditor will be sent a courtesy letter advising them of the change made in the system. In view of this, the Office must sort patents and patent applications that are received in a package, as courtesy letters are not sent in the case of issued patents. All of the application numbers must be identified as well as all of the agents associated with each application number, so that a courtesy letter may be drafted for each of the applications. This is time consuming, particularly in the case of receiving multiple assignments. In the context of a LEAN project on assignments, it has been suggested that the task of drafting these courtesy letters may be dropped for the sake of time efficiency. D. Boudreau wondered what the opinion of IPIC members would be with regards to this suggestion. J. Wilson, J. Pivnicki, M. Paton and L.-P. Gravelle agreed that it would be important to IPIC members that the Office continues the practice of sending such courtesy letters.

c) Sequence Listings at National Phase Entry

D. Boudreau presented this item.

On September 18, 2015, there was a notice posted on CIPO’s website advising clients that, in the absence of instructions otherwise, the Office would be using the sequence listings coming from WIPO for examination purposes. This notice was updated on January 12, 2016 to clarify that the Office will check the WIPO sequence listing for defects. If there are no defects in the WIPO version of the sequence listing, the WIPO version will be used, in the absence of any instructions otherwise. If there are defects in the WIPO version, any duplicate sequence listing version on file from the Applicant will be assessed for defects. If there are no defects in the duplicate version, that duplicate version will be used for examination purposes. However, where there are defects in the duplicate version of the sequence listing as well, the Applicant will be sent a requisition citing those defects. The Office identifies these defects using a sequence listing checking software originating from the USPTO.

d) Contacting Examiners

N. Tremblay presented this item.

A paragraph is included at the end of each examiner’s report indicating the examiner’s telephone number and that, in accordance with service standards, examiners should respond to any telephone inquiries before the end of the next business day. This paragraph further indicates that, in the event that attempts to reach the examiner are unsuccessful, the examiner’s section head may be contacted. It seems that in several cases, clients have been calling the section heads either directly or immediately after attempting to call examiners. The Office wishes to remind IPIC members to wait until the next business day after attempting to reach the examiner before contacting the section head.

e) Discussion about clients’ name and contact information

D. Boudreau presented this item.

The Office has a database system called “PERC” which keeps track of names and contact information of clients. There is some difficulty in determining which entries to use where multiple contact information entries exist for a single entity. Consequently, the Office intends to develop and implement a set of naming and address conventions, using standard business names and suffixes. In addition, a data master management IT project is underway which aims to reconcile such information, so that variations in contact information corresponding to a single user can be grouped under one entity. A. Lajoie added that this is a corporate initiative, and that the organization is looking at ways to collectively be more efficient.

M. Paton noted that the legal aspect of clients’ names means there would be limitations on agents’ ability to change the name provided by their clients. She also wondered how, in cases where there are multiple addresses, the Office would know which contact information to use to contact clients.

D. Boudreau responded that the Office would contact the client to confirm that multiple entries correspond to that same client. J. Wilson noted that such contacting should only be in the case of published applications and patents. She added that the Office should be aware of the possibility that an entity may indicate that a particular name should be used when, in fact, that name corresponds to a separate corporate entity. J. Wilson further suggested that one approach could be to enable clients to access a customer number that is assigned specifically to them when they file. A. Lajoie responded that the Office is taking note of these observations and questions, with a view to building a good database of clients. She added that it is a vision of the government that a given client could have a single client number to be used for all contact with any service in the Canadian government. L.-P. Gravelle wondered if other IP Offices have this same issue of multiple contact information entries for a single entity. A. Lajoie answered that the Office could confer with other IP Offices, including the Vancouver Group Offices, to understand how those Offices are addressing this issue.

4. IPIC Topics

a) Amended International Applications entering National Phase in Canada

IPIC members have noted that in the case of some international applications which have claims that have been amended under PCT Article 19 and Article 34, Examiners are not examining the correct, amended claims.

D. Boudreau responded that a LEAN project has been initiated to review this process. One issue that has been identified as a source of error is where translated claims include amendments. In order to avoid errors in this situation, it is suggested that Applicants clearly indicate when translated claims contain amendments. In addition, with the enhanced Canadian Patent Database (CPD), applicants have access to which claims will be examined. If errors are noted, the Office may be contacted to make corrections. The Office will provide an update on the progress and results of this project.

M. Paton and J. Pivnicki noted that if they are aware of Article 19 and Article 34 amended claims, they will attach them as part of a submission to help ensure that the correct claims are examined.

b) Workflow

IPIC members requested an update on the LEAN initiative for evening out of spikes in workflow. Large and continued spikes in CIPO output have been noted, particular in issuance of examiners’ reports and Notices of Allowance.

D. Boudreau indicated that, over the year of 2015, for various reasons, tasks were accumulating up to a point where there was a huge inventory of, for example, final fees to be applied. In view of this, he decided to conduct a blitz day on September 17, 2015 to process a large number of tasks, in order to return to a steady-state scenario. This would be one reason for observing a spike at that time.

L.-P. Gravelle noted that he had observed a significant spike in mid-November in the number of examiner’s reports received in a single day. N. Tremblay suggested that Mr. Gravelle provide the Office with a list of those reports received in that spike so that the cause could be investigated. The list may be submitted to D. Boudreau.

c) Electronic filing of Applications – Transcription Errors

IPIC members have encountered numerous difficulties in filing electronic submissions. D. Boudreau noted that the error occurred when two submissions were received by CIPO servers within the same millisecond. In those instances, the system would unintentionally overwrite the first submission. A temporary fix was put into place on November 18, 2015 such that, when this happens, if it is two different users, the overwriting will no longer occur, as the user name is now part of the time stamp. The problem still exists, however, only where the same user files two applications within the same millisecond. It is suggested that clients avoid having many people on the same account. A full fix of this issue will be in place by spring, 2016, after which no overwriting of any submissions will occur.

d) Policy on 92 bis

S. Vasudev noted that, at a PCT roundtable, it was shared that the CIPO policy regarding PCT Rule 92 bis is that, at national entry, the required evidence to support a 92 bis change is the IB/306 form. That is the only form that actually demonstrates that the International Bureau has accepted the Rule 92 bis request and has recorded the change. Where the Applicant enters the national phase with a different name than that which is recorded in the international application and no IB/306 form is provided, the Office will requisition evidence pursuant to Rule 58(5) and the Applicant will have 3 months from the date of the requisition to provide the evidence. The Office will be preparing a Practice Notice on this topic, and it should hopefully be out in the next two months.

e) Delays in processing Final Fees

This item was partially covered under item 4 a). A question was raised as to whether CIPO would consider including on their website a workflow dashboard for filing receipts and notices of national entry, similar to that used by the USPTO. A. Lajoie responded that the Office would look into whether there is a corporate appetite for such an initiative in order to make sure that all of our services are reported, published and updated that way. D. Boudreau added that, following the blitz day, he introduced a dashboard in Patent Operations, which dashboard monitors on a daily basis what tasks are coming in and going out.

f) Examiner initiated telephone calls - Further LEAN processes at CIPO

Some IPIC members have suggested an initiative whereby Examiners are encouraged to telephone Agents as applications approach allowance in order to deal with a variety of formal prosecution issues. N. Tremblay responded that telephone calls often cause problems, as they do not involve a requisition citing specific defects, and there is no deadline associated with these telephone calls. In addition, Patent Examiners do not have the discretion to make amendments to applications themselves. However, as always, when a report is written, Agents may respond right away. Further, the Office is initiating a project regarding conducting interviews with Agents, whereby Agents will be able to meet with Examiners near the completion of a file to discuss specific issues.

A. Lajoie observed that when Examiners call agents advising them to perform corrections in a Voluntary Amendment, at times the amendment does not come in a timely fashion. In addition, some Agents and Applicants prefer to have everything in writing, and to have a final opportunity to make amendments.

g) Letters Patent that include incorrect pages are received by the Applicant – Resolution via Reissue Section 47 / Clerical Errors Section 8

S. Vasudev initiated discussions on this item. He indicated that these issues are typically very case specific, and there are different possible mechanisms for resolution depending on the specific circumstances. If the Patent Office can determine from its records or the relevant records at the International Bureau (IB) that the error did originate from either the Office or the IB, the patent will generally be corrected without any fee being incurred. In order to make that correction, the missing pages will be attached to a correction certificate, similarly to the situation where Section 8 corrections are made. A new revised patent will not be issued in these circumstances.

In instances where the subject matter has not been examined, seeking a reissue would most likely be recommended. When the error is generated by the Applicant, the recommended approach is to follow the legislative regime. Section 8 of the Patent Act only allows for corrections of clerical errors which are defined as errors that arose in the mechanical processes of typewriting or transcribing. The Office evaluates each Section 8 correction on a case-by-case basis. In almost all cases where the Applicant’s error results in pages missing from a patent grant, they will be directed to consider reissue. Of note, the latest amendments of a patent application are now available online as part of the Canadian Patent Database (CPD). Applicants are encouraged to use this tool to verify the records once a Notice of Allowance is received.

J. Wilson suggested that the Office should consider making corrections under Section 4 of the Patent Act having regard to the Commissioner’s obligation to maintain correct records.

S. Vasudev noted that the changes in Bill C-59 spoke of eliminating the concept of correcting “clerical errors”, and instead adopting a PCT-type standard of correction of “obvious errors”. In the current revision of the Rules, a holistic approach is being taken to both Office errors and applicant errors in general and with respect to both issued patents and patent applications.

At this juncture, J. Wilson observed that recently on CPD the default order of documents has been changed to alphabetical by document name rather than by reverse chronological order, the latter of which is preferable. A. Lajoie responded that the Office would follow-up on this.

S. Vasudev noted that, while at this time, publication of the entire draft text that will be granted is not possible due to IT limitations, it is something that he is pushing for as a means to minimize errors.

h) Double-sided printing of Letters Patent

IPIC had asked that CIPO confirm how extra page fees are calculated where page numbers exceed 100 double-sided pages. D. Boudreau responded that the Office makes a distinction between “sheets” and “pages”. Thus, one double-sided sheet consists of two pages. Schedule II of the Patent Rules provides that excess page fees are calculated in terms of the number of pages (not sheets) in excess of 100 pages.

i) Change in Final Action Practice at CIPO

Some IPIC members had noted an increase in the number of Final Actions issued by CIPO and asked for clarification of Office policy on Final Actions, specifically whether only independent claims are reviewed in such cases.

N. Tremblay answered that, in the electrical division, there has been no increase in this past year in the number of Final Actions. In the mechanical division, generally few Final Actions are issued. However, in the near future, in view of the recent publication of guidelines regarding Diagnostic Method claims, an increase in Final Actions in the biotechnology and chemistry divisions may be observed. With respect to a specific case where only independent claims were reviewed in a Final Action, the examiner or section head for the specific file should be contacted, or comments may be submitted to the Online Feedback Mechanism. In any Final Action, Examiners should be reviewing all claims.

j) Past JLC Patent Meeting Minutes Archive

IPIC had expressed an interest in retaining the minutes of past JLC (2PC) meetings on either CIPO’s or, alternatively, IPIC’s website.

A. Lajoie responded that she had consulted with Julia Burke, CIPO’s new Director of Communications. Ms. Burke had confirmed that having meeting minutes is not the intention for government websites in general. The Office is in favour of sharing with IPIC all the information it requires in both official languages. In this regard, Ms. Burke and the Office’s web coordinator, Anna Lissansky, will be consulted to ascertain the optimal process with respect to storing the minutes. However, the Office will continue to prepare and translate the 2PC minutes, which are available on CIPO’s intranet.

k) IP5 Group harmonization

IPIC was interested in knowing whether CIPO is considering harmonizing practice with the IP5 Group and whether Canada intends to join the IP5 Group.

S. Vasudev noted that the IP5 works to harmonize the search and examination environment of each of their Offices, and to standardize the information sharing process. To this end, the IP5 has set up three working groups dealing with projects in the areas of classification, Global Dossier and patent information and work sharing and quality. On many fronts, CIPO works in close collaboration with its IP5 colleagues. For example, CIPO has been approached by both the USPTO and the EPO to join the Cooperative Patent Classification (CPC) system. CIPO and its Vancouver Group partners follow various IP5 initiatives and share information on those developments. The Vancouver Group Offices are working closely with the JPO to create communication linkages between the WIPO CASE platform and the IP5 Global Dossier platform. In addition, the IP5 members, with the exception of the CNIPA of the People’s Republic of China, participate in the Group B+ subgroup on substantive Patent Law harmonization. CIPO is a member of this subgroup. At this time, however, CIPO is not seeking, and has not been invited, to join the IP5.

l) Due Care

IPIC had requested clarification from CIPO on the likely approach being considered for 42-month late National Phase entry into Canada with respect to “due care”. S. Vasudev explained that amendments to subsection 73(3) of the Patent Act contained in Bill C-43 introduce a new requirement for reinstating an abandoned application. The requirement is that the Applicant is to state the reasons for the failure to take the action that should have been taken in order to avoid the abandonment and that the Commissioner is to determine that said failure occurred in spite of “due care”. Bill C-43 also amended section 12 of the Act to introduce new rule making authority respecting the reinstatement of applications under subsection 73(3). This includes the circumstances under which the reasons to take the action and the Commissioner determining that the reasons were in spite of “due care” would not apply. Thus, the upcoming regulatory amendments will define circumstances where due care will not be required to reinstate an abandoned application. No amendment to the Patent Act found in Bill C-43 or C-59 requires the introduction of a new requirement for due care in cases of 42-month late national phase entry. CIPO notes that the rationale previously noted for the introduction of “due care” in other circumstances may not apply in that case.

m) Confirmation of credit card payment

IPIC members had noted that, with the transition to the company Moneris for credit card processing of government fees, transaction reference numbers were no longer being included on IPIC credit card statements. A. Lajoie indicated that the Office has presented a request to add this information to credit card statements. CIPO awaits a response from Public Works as to whether this can be accommodated.

5. Tour de table, next meeting and closing remarks

L.-P. Gravelle indicated that IPIC members would appreciate adding at least one additional 2PC meeting per year, so that at least three 2PC meetings per year would be held. With a view to holding three meetings per year, it was suggested that the next meeting be held on June 14th, 2016 from 1:00PM to 3:00PM. J. Pivnicki indicated that, by May 11th, 2016, IPIC would submit topics for discussion at the June 14th meeting.

A. Lajoie suggested the Office could present any workflow statistics at the next meeting in the “Update on PB projects” segment.

With the tour de table, D. Boudreau noted that on December 1st, 2015, the Office began appending an ongoing client survey to Office Actions, with a view to aligning with ISO 9001 standards and to understanding clients’ needs. As of December 23, 2015, only three surveys had been received. IPIC members are kindly reminded to consider filling out these surveys.

D. Boudreau added that, by this fall, the Office is aiming to reduce the time of the grant process from 10 weeks down to 8 weeks after the final fee has been paid.

L.-P. Gravelle noted that IPIC would like to make a standing offer to have agents come to the Office to train examiners, such as on jurisprudence. He added that perhaps examiners could visit firms to see how they manage deadlines and workflows.

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The present meeting was adjourned at 3:00 PM.