Archived — Practice Committee Meeting PB/IPIC - Tuesday, June 12th, 2018

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Archived

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Tuesday, June 12, 2018, 1:00-3:00PM
50 Victoria Street, Gatineau, Québec, Phase I
24th floor, Room E

Attendees

Co-chairs: Agnès Lajoie and Jenna Wilson

Members: Jeff Coghlan, Jean-Charles Grégoire, Jennifer Marles (via teleconference), Miriam Paton, Lynne Jorge, Serge Meunier, and Scott Vasudev

Guests: Martin Béliveau and Darlene Carreau

Secretary: Sandra Hurley

Items

1. Introduction

A. Lajoie and J. Wilson welcomed attendees to the meeting of the Patent Practice Committee (2PC). Darlene Carreau, Director General (DG), Business Services Branch, was introduced. After Mme. Lajoie’s retirement, which will take place on June 29, 2018, she will be taking on the role on an interim basis of Assistant Commissioner of Patents and DG, Patent Branch, pending completion of the staffing process for the position. Martin Béliveau was also introduced. He is the director responsible for the Incoming Correspondence Unit (ICU).

2. Update on PB projects

  1. Patent application status information in CPD

    L. Jorge provided an update on the provision of patent application status information on the CPD.

    • There is continued work on the business requirements in terms of what wording will be used for the status information. CIPO continues to prioritize legislative implementations, and many IT resources are committed to this priority. It is hoped that some IT capacity will be freed up at the end of August to move this patent application status information project forward, at which time will be the IT testing phase for the PLT. There will be two releases on CPD: 1) updating of all products to the SOLR search engine; followed by 2) building in of the status indicators.

    • J. Wilson asked for additional information about PLT testing. L. Jorge responded that the milestone of “coding complete” has just been reached, and the development team is performing their integration testing. It is anticipated that system testing will begin at the end of August, and this phase will be a 6-7 month endeavour because of the architecture and age of the system. User testing is expected to commence in January, 2019. At that time, the Office hopes to engage clients, including IPIC, regarding the online components.

  2. Patent application status information in CIPO bulk data products

    • J. Marles noted that, on the Trade-marks side, their firm purchases bulk data from CIPO, including change in status information. This has been used to verify that all correspondence from CIPO has been received. She wondered if the same could be done on the patents side, where there is currently no status information in the bulk data. A. Lajoie responded that there are a number of differences between the two branches’ systems and possibilities for services. Once status information does become available, it is something that could be explored in the future.

  3. Pending Old Act Patent Applications

    A. Lajoie provided an update on pending Old Act Applications.

    • In 1989, there had been an inventory of >100,000 Old Act applications. There are currently 226 Old Act patents in good standing (as of January, 2018) and fewer than 12 pending applications. These numbers do not include documents in the secret room.

  4. Update on PERM language for double-patenting/overlap objections

    At this juncture, S. Vasudev provided an update on item 4j) of the 2PC meeting of February 27, 2018.

    • This previous item 4j) pertained to PERM language for double-patenting/overlap objections, and the possibility of replacing the expression “overlapping subject-matter” with “not patentably distinct subject matter” for the relevant situations. S. Vasudev noted that the change of wording should be implemented in the coming months.

  5. S. Vasudev provided an update on the Patent Rules.

    • Patent Branch officials are still working with the Department of Justice Regulations section to obtain a “blue-stamped” version of the proposed amendments to the Patent Rules. As stated on the Departmental Forward Regulatory Plan, stakeholders will have the opportunity to comment when the proposed amendments/rules are pre-published in Canada Gazette, Part I (expected in Fall, 2018). Following that, the final amendments should be published in Canada Gazette, Part II in mid-2019. Entry into Force will be identified at that time.

    • J. Wilson wondered if IPIC could obtain an advanced copy of the Rules prior to Gazette I.

    • S. Vasudev responded that once work is completed with the Justice drafters, the draft is passed on to editors. After the Office responds to any comments the editors have, it is passed on to jurilinguists and then it is passed back to the Office. At that time, there may be comments from Justice which may or may not result in adjustments. Finally, the process to obtain the blue-stamped version ensues, in order to meet the time-line for Gazette I. Thus, the time-line is fairly tight. Whether or not it would be possible to share draft versions prior to Gazette I may depend on the extent of comments that are received from Justice.

  6. S. Vasudev provided an update on international cooperation.

    • As mentioned at the previous meeting, in January, 2018, CIPO and the EPO extended their PPH programme for a period of an additional three years. Cooperation with the EPO has intensified with the launching yesterday of a comprehensive bilateral cooperation programme on patents. On June 11, 2018, in the margins of the 11th IPBC Global Congress in San Francisco, the Office’s CEO and Commissioner of Patents, Johanne Bélisle and EPO President Benoit Battistelli signed an MOU on Bilateral Cooperation, as well as an MOU on the Introduction of the Cooperative Patent Classification (CPC) at CIPO. The MOUs are for a four-year period and will be implemented through a Biennial Work Plan that was also signed at the occasion. The MOU on Bilateral Cooperation foresees joint activities in the areas of patenting procedures, search tools, examination and quality management, as well as use and exchange of patent data and databases. The signature of the MOU on the CPC paves the way for CIPO to use the CPC, a patent classification scheme that is quickly becoming an international standard for most examination performing IPOs in developed countries. Activities under both MOUs are tempered in the near term by CIPO’s current commitment to implementing the PLT and modernizing the IT modernization project.

3. PB Topics

  1. Service Fees Act

    A. Lajoie discussed the Service Fees Act.

    • At present, the Canadian Intellectual Property Office (CIPO) has approximately 30 service standards and reports on our performance against these standards annually.

    • In 2017, the Government introduced the Service Fees Act (SFA). The SFA replaces the User Fees Act. The SFA increases transparency, accountability and predictability. Under the SFA, federal departments and agencies must set service standards for services associated with fees, as appropriate, and must make those standards accessible to the public, by June 22, 2018.

    • CIPO will be publishing its service standards for all fees associated with a specific service by this date. Approximately 90 new standards have been created for fees that previously did not have service standards, and around 30 existing service standards have been modified to increase certainty. While it may be noticed that some of the numbers have changed, this is due to the new level of certainty that these standards offer (i.e. 100% of the time instead of the former 90% of the time).

    • The new and updated standards have been set based on data and evidence that reflects the Office’s current levels of service. As such, there should not be any difference seen in the level of service that is received. CIPO will maintain its existing performance targets, and they will continue to be met under normal operational circumstances and when all application client requirements are completed. The Office will be keeping up with its strong service track record, which is reported publicly online each year. (https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02948.html).

    • To be in compliance with the SFA, departments across government will need to remit a proportion of fee paid by the client, if a service standard is not met. In the months ahead, we will be introducing a Remissions Policy that will be communicated to stakeholders and clients. CIPO strives to continuously improve its service to its clients. The Office will continue to work with its clients and stakeholders as it improves its service and refine its standards.

    • M. Paton noted that there are certain actions that clients take where no confirmation correspondence is received from CIPO to indicate that the clients have met the corresponding requirements. For example, fees are associated with complying with a requisition to correct errors in a sequence listing or for completing an application. There is no letter from the Office acknowledging that the conditions of the requisition have been satisfied. M. Paton wondered if, in view of the implementation of the SFA, such acknowledgment notices will be sent out by CIPO, since all services associated with a fee will now require a service standard. A. Lajoie responded that the Office is trying to avoid modifying their IT system to create additional notices. At the same time, clients have indicated that an over-abundance of notices is not necessarily appreciated. Using the example provided, there is presently no service standard associated with a completion fee. What is proposed is that upon request of a duly completed request for completion, CIPO will process the request and complete the task within 30 business days; however no new notice would be generated.

  2. Priority Data

    • S. Vasudev noted that this will be a bring-forward agenda item for the next meeting. It pertains to a distinction between the recording of a Priority Date and making an assessment of whether or not the application has made a valid Priority claim.

4. IPIC Topics

  1. Task priority assigned to processing appointments of agent

    IPIC had requested that the Office increase the priority which it assigns to the processing of new appointments of agent.

    • L. Jorge responded that the Office acknowledges that there have been occasional delays in the processing of assignments of agents. As of the end of May, 2018, the priority of the task associated with that processing has been increased to 1, so that it is the first priority task of the relevant unit. Also, additional people have been trained in that unit. It is hoped that these two actions will help to reduce the delay significantly. The inventory was previously at 60 documents for this task and is presently at 20 documents or fewer.

    • M. Béliveau added that, as of late fall 2017, a service level agreement was made to have the documents transferred from the Incoming Correspondence Unit (ICU) to Patent Branch within 72 hours. Generally, the objective for this is less than 48 hours. All processes are being reviewed using the LEAN methodology and staffing has been increased.

  2. Bulk appointments of agent not posted online

    IPIC noted that the Office had changed their policy on posting appointments of agent that list multiple applications or patents, this because of the possibility that one of the listed properties has not yet been published. Thus, users who wish to verify the appointment of an agent must order a copy of the documents from the Office. IPIC added that this policy leaves both the new and former authorized correspondent in doubt as to whether the documents have been properly copied to every affected patent and application. IPIC wished to discuss a solution that provides new and former authorized correspondents with the information that they need.

    • J. Wilson opined that if an applicant deliberately chooses to submit a document against a patent application where they identify an unpublished document, that should be “on them”, and not the responsibility of the Patent Branch, to avoid putting information about unpublished documents online.

    • S. Vasudev opined that Section 10 of the Patent Act provides an obligation on the Office rather than on the Applicant. He added that there is no easy solution; however options are being explored from the perspective of the pending new Rules. Best practices can be suggested to clients but cannot be imposed.

  3. Erroneous removal of agents from the patent agent register

    IPIC members had learned that some agents received erroneous notifications that their names were being removed from the register of patent agents for failing to renew their registration for 2018, even though their firms had previously renewed their registrations and received confirmation. The Office was asked to explain how the error arose and how it would be prevented in the future.

    • L. Jorge acknowledged that this occurred and apologized. She added that, in a few cases this past year, requests for renewal had been filed as completed but not actually processed. Fortunately, the renewals had not been lost. The Office is reviewing the process to analyse what happened. A LEAN project has been launched on this particular process and the Office is looking at how the intake and filing of renewals occurs. Two employees that had been highly trained in processing renewals both left unexpectedly in November/December. The issue will be fixed so that it does not reoccur, and at the next 2PC meeting, the Office will share its findings and the process changes that will be put in place.

  4. Online interface – New Application applicant field too short

    IPIC noted that the applicant field in the new General Correspondence interface is 80 characters, but the applicant field in the New Application interface is even shorter, with the result that applicants with long names may have to resort to other filing routes. M. Paton noted that even a field with 80 characters is not adequate.

    • L. Jorge thanked IPIC members for this feedback and responded that the Patent IT team is working with the IT teams from Trade-marks and Copyrights/Industrial Designs to apply any fixes globally to the CIPO system so that interfaces are consistent. The back-end database allows for 144 characters in total. The proposal is thus to allow all online interfaces to consistently allow for 144 characters.

  5. Scanning of pages – quality control

    IPIC raised a number of issues pertaining to the quality control of scanning of images:

    • (i) Loss of quality from the original – Agents have found examples of applications in which the scanned drawings on file with CIPO are of very poor quality, far lower than what was submitted on paper.

      • L. Jorge responded that the Office scans at a consistent resolution of 300 dpi. If a poor quality page is received, the Office will scan it to the best of their ability. If a good quality page is received, and the Office notices that the scanning is poor, the scanning unit is trained to adjust the scanner system to obtain a better quality scan. If members could provide examples, this would be helpful.

    • (ii) Scannable elsewhere, not scannable in Canada – Agents have found examples where the Office determined the drawing pages of national entry applications were unscannable, but the drawings were available on PatentScope.

      • L. Jorge answered that the majority of national phase entries are imported electronically from WIPO. There are a few exceptions including an early laid-open application and a translated application.

    • (iii) Inconsistent “unscannable” practice – Agents have the impression that inconsistent standards, generally are being applied to determine whether a page is unscannable. The Office was asked to explain the difference between when a page is considered “unscannable” vs. just being low quality.

      • L. Jorge responded that if paper pages are received, the ICU would determine if a page is “unscannable”. Photographs and images in colour are considered “unscannable”.

      • M. Paton noted that she found that when she submitted photographs and colour drawings and marked the cover page with “Do not scan these figures”, the Office has sometimes scanned them nevertheless. This is a concern, as after a period of time, documents which are scanned are destroyed. S. Meunier responded that the best outcome in this situation is to keep the originals and have a placeholder in the system. S. Vasudev added that the PCT has been working for several years on the possibility of permitting colour drawings.

    • M. Paton explained that the USPTO has two designations for drawings: 1) only black and white; and 2) “other than black and white”. For designation 2), the USPTO creates what is known as “SCORE”, which is a supplementary content tab where these original drawings are stored and available to the examiner and public, and a black and white scanned copy is made which is stored in another tab. The Office may wish to consider this practice for future systems with fully automated online filing.

  6. Office correspondence not received

    IPIC members expressed concerns over the rate of undelivered Office correspondence (e.g. Office Actions never received) and correspondence that is not received because it is sent to the wrong agent or applicant. The Office was asked to explain (1) why some letters are generated but not mailed; (2) the procedure for documenting that correspondence has actually been mailed or transmitted; and (3) how these errors will be avoided in the future.

    • L. Jorge responded that a LEAN project has been launched in the Outgoing Correspondence Unit (OCU) to review processes and identify where the issue is stemming from. Additional Quality Control steps are being considered. One additional Quality Control step has been added. Specifically, a new tool is being used which will allow issues with outgoing e-mail to be detected by putting counts in place. The next step is to fully automate all host-generated outgoing correspondence. This fiscal, the IT team will help automate the host-generated outgoing correspondence through e-mail channel. Clients are encouraged to use the Online Feedback Mechanism to flag when any issues occur.

    • J.-C. Grégoire asked if there is a record to indicate that correspondence has, in fact, gone out. L. Jorge responded that for e-mail, a generic e-mail box is used so that there would be a trace in the sent box. For physical mailing, host generated correspondence is created through an app that was purchased from Shared Services Canada. PSPC prints and mails them, and there is a trace for this type of correspondence. Custom correspondence (e.g. examiner’s reports) is kept temporarily on a local drive. Thus, there are breadcrumbs on what is coming in and what is going out. Again, the processes will be reviewed and better checks and balances will be put into place. The specific examples provided by IPIC were all the result of human error, which would be eliminated with a full automation of outgoing correspondence. A follow-up on progress will be provided at the next 2PC meeting.

  7. Switching to e-mail delivery

    The Office was asked whether, in such cases when an applicant wishes to switch to e-mail correspondence for an application and makes the request online as part of a General Correspondence submission, the Applicant still needs to type an explicit instruction in the comments field. Further, the Office was asked to consider associating an e-mail address with an agent’s PERC record, so that all correspondence is sent to the e-mail address provided.

    • L. Jorge affirmed that if an applicant is performing a transaction through the General Correspondence form, and there is an indication that the preferred method of communication is e-mail, this does not necessarily mean that there will be a switch to the preferred method for everything on the file. Therefore, wording is required in the comment field of the General Correspondence form, for example, instructing that the Applicant wishes to change the method of correspondence for that file, indefinitely, going forward. This explicit instruction should only be made once.

    • J.C. Grégoire proposed that a Practice Notice be published providing example language for the wording of such an explicit instruction. A. Lajoie suggested that perhaps ListServ or Twitter could be used for this type of communication.

  8. Faxed documents not received, but payments processed.

    An agent had filed a number of submissions with fee payment forms by fax, only to be informed by the Office that while the payments were processed (per the payment fee form), there was no record of the filing. The issue appeared to be systemic. The Office was asked to explain how the error occurred and what mechanism can be put in place to alert applicants of a problem sooner.

    • L. Jorge responded that this would have happened with the staff at the ICU or mail room. The Office had identified this as an issue, and since January, 2018, two new measures were put in place to prevent this from reoccurring. New Quality Controls were put in place between the ICU and the mail room unit to ensure that documents are accounted for and distributed within the proper business lines. There has also been a change to the workflow: now a single formally trained individual is responsible for separating documents, so that the paper is not being dispersed amongst many desks and sets of hands.

  9. Completion requirements for ST.25-compliant sequence listings

    Applicants have received pre-completion fee courtesy letters requiring corrections to sequence listings for issues such as foreign language content or lack of a serial number/filing date when, in fact, the sequence listing was compliant with PCT Administrative Instructions. IPIC members did not think that compliant sequence listings with these kinds of informality issues should trigger the completion requirement.

    • L. Jorge responded that, indeed, such letters should not have been sent for this kind of formality. The process will be reviewed. Fortunately, this type of informality is seen very rarely.

    • Of note, Doug Lloyd, the technician responsible for sequence listings, is retiring at the end of the month. A succession plan including full training has been in place for several months, and Doug’s replacement will be Emeterio Duque.

    • M. Paton noted that changes to MOPOP Chapter 17 require the withdrawal of any paper copy of the sequence listing. Her understanding was that there is now a consensus amongst examiners to “let it slide”. S. Vasudev indicated that the Office would follow-up.

  10. Exclusive reliance on IPRP when information is available from multiple offices

    IPIC members noted that examiners have been directed to rely on the IPRP when no amendments have been made subsequent the international phase. It was opined that reliance on the IPRP alone results in piecemeal examination, if the examiner subsequently resorts to the foreign-cited art, resulting in prior art objections spread over multiple reports. When the claims under examination are substantially the same as claims examined in other jurisdictions, IPIC members would generally like examiners to address all available art that was cited in foreign applications that are referenced in the Examination Search Report as this would likely shorten overall pendency. Two example cases were provided.

    • S. Meunier responded that, indeed, when no amendments have been made, and relevant prior art exists either from the IPRP or from prosecution of family members (or both), a search can be deferred. In such a case, the Examination Search Report would be recorded as “No Search Conducted”.

    • Examiners need only cite the prior art which they consider to be the most relevant; there is no requirement to address all possible prior art. What is considered the most relevant art may change through prosecution because of amendments to the claims which are beyond the control of the examiner. That change to relevant art may give the appearance of piecemeal examination but it is, in fact, a response to the actions of the applicant.

    • S. Meunier added that in the two examples provided, with regards to shortening pendency, the applicant already knows that the claims are anticipated/obvious (from the IPRP) but has not engaged to fix that defect and so is contributing to the slower pace of examination. That being said, from the Examination Search Records of the two examples provided it would appear that only the PCT family member was reviewed. According to the work instructions, examiners are supposed to review all available foreign-cited art and prosecution results from family members, and examiners will be reminded of the foregoing. Of note, before the end of prosecution of an application, a first-to-file search will always have been conducted by the examiner.

  11. Follow-up on piecemeal discussion from last meeting.

    IPIC members had asked for an explanation of the meaning of “time constraints and competing demands” of the examination process, which S. Meunier mentioned in item m) of the previous 2PC meeting of February 27, 2018. It was noted that piecemeal examination concerns are not limited to non-substantive issues and wished to know what steps are taken to prevent this type of examination.

    • S. Meunier responded that “time constraints and competing demands” means just that. As can be appreciated, examiners have a workload to balance, sometimes everything is due at the same time and it happens when they are covering for a colleague on leave, there are busy periods and many other scenarios can occur. Sometimes as a result, an examiner may be rushed and something could get missed. The key is to ensure that there is no pattern of defects being missed, and a system of checks and balances is in place to ensure this. Specifically, patterns of piecemeal prosecution are monitored through a QC system. Section heads (SHs) constantly monitor the quality of the work of their examiners by doing quality control of the work of their examiners’ reports and allowances. Any defects, issues and/or patterns identified by the QC are addressed swiftly. Since QC is not carried out on 100% of cases, there is a chance that a defect could be identified following a QC step which occurs at a later stage, without the case having been selected for QC at an earlier stage.

    • The expression “Time constraints and competing demands” also refers to the fact that examiners have production objectives, and do not have unlimited amount of time to examine each application.

    • J.C. Grégoire asked if examiners are given guidelines on how to prioritize their examination.

    • S. Meunier responded that there is rigorous training and there are many tips and tricks for helping examiners work efficiently. However, there are different ways to achieve the same outcome, and different examiners may work best in different ways. Clients are encouraged to use the Online Feedback Mechanism when an examination issue is identified. Such issues will be brought to the attention of the section head, who will subsequently have a discussion with the examiner.

    • A. Lajoie added that time management and priority management can come easy to some and not to others. Those who struggle with managing time and priorities can be paired with a mentor who can share best practices in this regard.

  12. Implicit divisionals

    IPIC members noted that examiners may deem that there has been an “implicit election” of an invention when, following identification of a unity defect, claims are narrowed or amended, even when the implicitly elected group does not correspond to one of the groups identified in the original unity defect. In an example, an applicant submitted amended claims in response to a unity objection and expressly stated that no election was made. The examiner’s next office action identified an election and used PERM language to prohibit amendments to the claims to recite any other invention. Concerns were expressed by IPIC members that this could deprive applicants of Consolboard protection for a subsequent divisional, and it was opined that an explicit or implicit election should only be found where the applicant either explicitly indicates an election, or where the amended claims clearly correspond to one of the previously-identified claim groups.

    • S. Vasudev responded that the practice involving unity of invention relies on the notion of procedural fairness overlaid on the requirements of the Patent Act and Rules. If an examiner considers that the claims are not unified under a single general inventive concept, then a lack of unity defect is identified and the applicant is given an opportunity to narrow the claims to a specific invention.

    • If the applicant responds with claims that correspond to a single general inventive concept identified or otherwise then the applicant is deemed to have chosen the subject of examination of the current application and will be held to that choice both to prevent unfairness and reduce piecemeal prosecution. This practice does not stop an applicant from later introducing claims to other possible unity groups. At that point a lack of unity defect would be identified if they possess separate general inventive concepts but the applicant would not be given the opportunity to change unity groups. In that case any introduced unity groups would have to be removed from the current application but could be submitted as part of a divisional application.

    • By way of contrast, if the applicant after the first unity defect submits claims directed to multiple general inventive concepts then another lack of unity defect would be identified and the applicant would be allowed to elect any of the identified groups. Depending on the particular claims submitted, these groups could be the same or similar to the original groups or could be different. This process could continue until: there is an election by the applicant; the examiner is persuaded that some or all of the unity groups possess a single general inventive concept; or, an impasse is reached.

    • To reduce piecemeal prosecution following the identification of a unity defect, applicants who wish to adjust the identified unity groups should submit amendments claiming all desired subject-matter in their response. Applicants can also elect a group or groups (if they can persuade the examiner of a common general inventive concept) that have been identified.

    • S. Meunier added that the Office could look into using different wording than “election” in a case like the example, where the amended claims are directed to an invention other than one of the Groups set forth in the Office Action identifying a unity defect. The Office will follow-up on this possibility at the next 2PC meeting.

5. Roundtable

  • S. Meunier added that the Office could look into using different wording than “election” in a case like the example, where the amended claims are directed to an invention other than one of the Groups set forth in the Office Action identifying a unity defect. The Office will follow-up on this possibility at the next 2PC meeting.

6. Next meeting and closing remarks

  • The next 2PC meeting has been scheduled for Tuesday, October 23rd, 2018 at 1PM, at Place du Portage, Phase 1, room 24-G.

The meeting adjourned at 3:00 PM.

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