Practice Committee Meeting PB/IPIC - Tuesday, October 23th, 2018

, 1:00-3:15PM
50 Victoria Street, Gatineau, Québec, Phase I
24th floor, Room G

Attendees

Co-chairs: Virginie Éthier and Jenna Wilson

Members: Louis-Pierre Gravelle (via teleconference) Jean-Charles Grégoire, John Hurkmans, Éric Lafontaine, Miriam Paton, Shauna Paul and Scott Vasudev

Guests: Marc Hunt and Christine Piché

Secretary: Sandra Hurley

Items

1. Introduction

V. Éthier and J. Wilson welcomed attendees to the meeting of the Patent Practice Committee. Mme. Éthier has been appointed Assistant Commissioner of Patents (ACP) and Director General (DG) of the Patent Branch effective .

2. Update on PB projects

  1. PLT update

    S. Vasudev provided a PLT update.

    • Draft Patent Rules were blue-stamped by DOJ in early September 2018 and are being readied for pre-publication in Part 1 of the Canada Gazette. Part I of the Canada Gazette is estimated to start early December 2018 and the comment period will be 30 days. Submissions received after the close of the comment period may not be able to be fully considered before publication in Part 2 of the Canada Gazette.

    • On October 12, Patent Branch gave a presentation at the IPIC Annual Conference in Vancouver, within which an overview of the proposed changes to the Patent Rules and a deep dive on transitional provisions were provided. The presentation can be made available in English and French to interested parties.

    • The Patent Branch created a working group to ensure efficient liaisons between the different groups involved in the implementation: Operations, Examination, Policy, Practice, IT, Training and Quality. Actions are already taken for efficient change management. For example, all employees are offered awareness sessions in October. Training will start in early 2019.

    • Internal training will be tailored to the different roles. Examiners and the Operations' employees will receive training, as will the Client Service Centre's agents and the BSB's IP advisors.

    • Regarding external engagement the Office plans on consulting on some administrative topics of MOPOP that will be changing as a result of the amended Rules in January, 2019. This will include such administrative issues as consulting on assessment of due care and filing requirements.

    • Coming-into-force of PLT is expected in the second half of 2019.

  2. Practice Update

    S. Vasudev provided an update on Office practice.

    • Work on updating MOPOP continues. A review of the submissions during the public consultation for the chapter 17 section on pharmaceutical solid forms is ongoing. IPIC is thanked for their input in the consultation. Chapter 16 "Computer-implemented inventions" is undergoing final drafting in preparation for a public consultation. Drafting on chapter 9 "The Description" is well-advanced and drafting on chapter 11 "The Claims" is underway. Drafting on other sections of chapter 17 is also proceeding. The extent to which these projects advance in the next year may be affected by the work required for the coming-into-force of the Patent Rules implementing the Patent Law Treaty.

    • The IPIC-CIPO Diagnostic Working Group had a good open and constructive dialogue on some of the issues surrounding the examination of medical diagnostic methods in the first meeting on The working group agreed to continue the dialogue and have scheduled a second meeting for

3. PB Topics

  1. Presentation: Online Practice Manual

    • M. Hunt from Programs Branch presented a demonstration of the Online Manual of Patent Office Practice in Qweri (licensed from Lexum). The online manual has been in beta-testing and is expected to be in final production toward the end of the month. The link to the online manual may be found on the CIPO website here. Feedback on the online manual may be submitted to the following e-mail address: marc.hunt@canada.ca or by telephoning the Client Service Centre at 1-866-997-1936.

    • J. Wilson noted that it would be helpful for the online manual to include hyperlinks to sections and subsections of the Act and Rules or to appropriate parts of the CIPO website. She added that CIPO's in-house Commissioner's Decisions database is superior in terms of search function to the Decisia platform (from Lexum) used by the Trademarks Opposition Board (TMOB).

4. IPIC Topics

Follow-up issues:

  1. CDAS Status

    IPIC had requested that the Office follow-up on the provision of application status information on CDAS. The last indication had been that the Office would get to this in August 2018.

    • E. Lafontaine responded that this will most likely not be completed until after PLT CIF (coming into force). The one resource that could have achieved this was required for TM legislative changes. The Office considers that this is a high priority item and will be pushing to obtain further resources to have this done sooner.

  2. Digital signature

    IPIC had understood that there had been some work on the development of a digital signature policy and that the Office would consult with IPIC in the development of that policy.

    • E. Lafontaine explained that due to the intensive and extensive efforts to prepare for implementation of the PLT in fall of 2019, work to develop a comprehensive digital signature policy will be postponed and resume in 2020. In the interim, the Office has begun registering assignment documents signed with ‘DocuSign'. The Office remains committed to consulting IPIC when developing this policy.

  3. Examiner's Bulletins and training manuals

    IPIC had requested that Examiner's Bulletins (EBs) and training manuals be made available online and earlier this year the response from the Office was that this request would be raised with the Business Services Branch.

    • E. Lafontaine responded that there are some concerns with making these publicly available because they were written to be directed to a specific audience and not for how they would be perceived by the general public. Some of this material requires context and additional information that a trainer would provide while giving training. Without this, there could be a risk of misinterpretation. The Office generally provides any EB (with DG approval) when requested, even if not through an ATIP request.

  4. Scanning issues

    IPIC asked the Office to explain how drawings are added to a national phase entry. It was suggested that the WIPO drawings be uploaded on national entry regardless of quality, and that examiners make an assessment about suitability. The Office was also asked to indicate the status of training concerning scanning of A4 paper.

    • E. Lafontaine responded that since the procedure has been to upload the drawings from WIPO or the ones received by the agent regardless of the quality. The office no longer lists drawings as "unscannable".

    • M. Paton cautioned that if a client specifically asks that a drawing not be scanned, it should remain "unscannable". S. Paul asked that examiners be reminded to examine the drawings for quality in view of the policy of uploading all of the drawings regardless of quality. E. Lafontaine indicated he would follow-up on both of these concerns.

    • M. Paton reiterated a suggestion from the previous 2PC meeting (Topic 4e)) that the Office consider adopting the USPTO practice in regards to scanning of drawings for future systems when online filing is fully automated. 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 a supplementary content tab where these original drawings are stored and available to the examiner and public. A black and white scanned copy is made which is stored in another tab.

    • E. Lafontaine explained that the Incoming Correspondence Unit (ICU) has a documented process to follow for scanning of A4 paper and that a further QC step has been implemented. This issue could be investigated further if there are specific examples with application numbers.

  5. Requests under subsections 31(3) and (4)

    IPIC indicated that, in response to an inquiry about the Commissioner's non-exercise of her powers under subsection 4(2) in the case of requests submitted under subsections 31(3) and (4), the Office said they would follow up with the Department of Justice for the rationale as to why these powers were not used.

    • E. Lafontaine responded that due to the intensive and extensive efforts to prepare to implement the new Patent Rules in fall 2019, the Office has not yet consulted with the Department of Justice as indicated in the last meeting. This work will resume in 2020. The Office maintains its position that it is not within their mandate to resolve disagreements that may arise between inventors and/or applicants. In the interim, any requests submitted by a 3rd party will be treated on a case by case basis.

  6. Analyst letter on allowability after reinstatement after allowance

    IPIC members had requested that additional information (date of last amendment and number of allowed claims) be added to the analyst's letter advising that a previously allowed/abandoned/reinstated application had again been approved for allowance and would proceed to grant.

    • E. Lafontaine responded that this can be done internally without the need of CIO resources. The Office will conduct an analysis to see if and when this could be done.

  7. Erroneous removals of agent from register

    IPIC noted that the glitch which erroneously removed agents from the register was corrected, and was discussed at June meeting; the Office had said it was investigating the cause and would report in October.

    • E. Lafontaine responded that an error arose through manipulation of paper and data entry in the system. To prevent this situation from re-occurring, a QC step will be added to the process, which will be monitored regularly. Furthermore, the process has been properly documented and is maintained by the group responsible for agent renewals.

  8. Longer applicant field in General Correspondence Interface

    The Office had advised that it would extend the applicant field in the General Correspondence Interface to the maximum 144 characters.

    • E. Lafontaine responded that the issue has been logged but will not be worked on until there is a major problem with the page, which problem can be corrected at the same time. This could also be achieved with PLT changes since this screen will need to be modified for PLT.

    • M. Paton noted that in the Filing Interface, if it is desired to automatically generate the Petition, the Petition will be faulty if the applicant name is too long. In such cases, the client must generate the petition themselves and attach it. In addition, she requested that in the new online application filing interface, any fields that are not applicable should be excluded from the automatically generated petition, rather than marked "not applicable". In addition, she noted that confusion can arise if the "enter" key is pressed when in a given text field, as this changes the language of the document.

Online services

  1. Transmission confirmation receipts and proof of submission

    IPIC members had earlier requested a "unified" online receipt that linked attachments and payment together with an online submission. Last year, David Boudreau had provided a mock-up of a new unified receipt, suggesting that this might be implemented at some point.

    In the meantime, the workaround implemented by the Office is to provide a submission receipt with a concatenation of the Temporary Confirmation Number (provided when a submission is previewed) and the Order ID (provided with a credit card payment). Therefore, three documents need to be downloaded / printed by a submitter to have a (somewhat) complete record of an online submission accompanied by a credit card payment: the preview page, which lists attached files and the Temporary Confirmation Number; the credit card receipt with the Order ID; and the submission receipt with the concatenation.

    IPIC wanted to know what minimum evidence needs to be provided to the Office to prove that any submission (online, fax, mail) was actually made: whether the submitter needs to save all three of these documents and if an accompanying affidavit is required.

    • E. Lafontaine responded that a new version of the web site for filing a new application is in the final phase of testing and should be released in the first half of November. The list of attachments, the submission receipt with the confirmation number will all be on one document but the payment confirmation will be a separate document because this is provided by a third party. The Office will need to follow-up on whether an accompanying affidavit will be required.

  2. Lost submissions

    IPIC wondered what the process is in the Office for reconciling credit card and deposit account payments with electronic submissions and if a payment cannot be reconciled, what the Office process is to track down the payer.

    • E. Lafontaine responded that a daily report for e-payments (both credit cards and deposit accounts) is kept in a daily file and reconciliation is done by financial agents when the transaction is posted in the IFMS system. If the Office receives correspondence and the payments do not go through, it is considered an attempt to pay and the operations analysts send letters to clients informing them of this issue. If for some reason the Office does not receive correspondence (for example, if there is an IT issue), then no task is generated for the analysts. The Office will explore ways to minimise potential issues in the future. If further examples of this occur, clients are asked to share these with the Office.

    • J. Wilson noted that it would be helpful to know what the best line of contact would be in these situations.

  3. Service interruption alerts and timing

    IPIC noted that it would be very helpful to the Office's clients if downtime could be scheduled to start after midnight, and if service interruption notices were posted on every search page, and not merely the home page.

    • E. Lafontaine answered that the main login page indicates the site availability as "This e-service operates Monday to Friday from 6:30 a.m. to 10:00 p.m. (Eastern Time)." Since this service is connected live to the Office's backend systems it needs to be taken off-line when the automated process runs overnight for maintenance done on TechSource. If it is desired to explore the possibility of moving this window, the CIO will need time to analyse the potential impact on the production schedule for databases and mainframe processes running during off hours. A JIRA will be created, but it is not foreseen that this work would be done until after PLT CIF.

    • As for having notices on all pages, CIPO can program static pages (e.g. homepage) itself, but for the other pages which are not static, a programmer from CIO is needed to go in and change the text.

    • M. Paton noted that if the Maintenance Fee payment system goes down and there is still time to pay, the Online General Correspondence Interface can be used. She wanted to make sure that this would always be possible. When the application number is known, a warning is received since the fee descriptions indicate that General Correspondence is used to pay Maintenance Fees when the application number is unknown. J. Wilson added that many of these issues with the forms arise from a lack of clarity as to the roles of the online forms with respect to the Rules.

  4. Corrective payments under subsection 26(3) of the Rules

    IPIC noted that an applicant cannot use the payment mechanism in the General Correspondence interface to make a corrective payment under the extension of time provision in subsection 26(3). The payment menu includes the fee under 26(4)(c), and the user can enter a quantity for that fee, but not the "difference" payment required by 26(4)(b). The online workaround is to submit a letter authorizing a charge to a deposit account. IPIC asked if this would be implemented in the online form.

    • E. Lafontaine answered that, currently, only the full amount of a fee as prescribed in the Rules can be paid online. It has been logged in the JIRA system. The CIO is conducting a preliminary analysis to see if they could easily fix it.

  5. Identifying related applications in CPD

    IPIC wondered if it was possible to identify related Canadian applications (e.g., divisional children, parents) online, and to make this searchable.

    • E. Lafontaine responded that this has been logged in the JIRA system as a possible improvement to the CPD. Technically speaking, it could be done. J. Wilson suggested that petitions be made available online. M. Paton noted that the USPTO PAIR system has a continuity tab allowing viewing of parent and child applications.

Administrative Policy

  1. Courtesy copies of protests and prior art/documents on CDAS

    IPIC asked whether courtesy copies of protests and prior art/documents could be made available online. In addition, the Office was asked to publish examination search reports that are created when an application is allowed.

    • S. Vasudev responded that the Office is unable to provide such copies due to copyright issues.

    • E. Lafontaine added that publication of examination search reports that are created at allowance can technically be done. The Office will have to explore further to see if and when it could be accomplished. As a first step, the Office could publish such reports for allowances on a first action. At this juncture, J. Hurkmans responded to item y) regarding the possibility of identifying the examiner on notices of allowance. Given that the notices are generated by an automatic correspondence generation tool and printed and sent by a service provider, this cannot be done easily. However, publishing a search record with the notice of allowance would achieve this since the examiner's name would be on that record. A request would need to be made to PBIIMS to have a new correspondence type created and a process would need to be implemented where the search report is scanned into CM8 with the new correspondence code. It will then be available online. This would be a significant investment of time, which is why this was not done when the practice of publishing search records was initiated.

    • M. Paton wondered if suggestions she has made are being taken into account when planning new correspondence. These suggestions include identifying the applicant and the owner on every piece of correspondence and including actual deadlines. S. Vasudev responded that all of the suggestions have been forwarded to the person looking at these notices. These suggestions are being considered and are appreciated.

  2. Letters confirming use of GAS

    The language of the Office letter confirming a payment taken under a general authorization statement reads, "In light of your general authorization statement dated [date], CIPO has debited your deposit account in the amount of $space to insert amount to maintain your patent application in good standing." IPIC submitted that this wording is confusing as it is being used regardless of the nature of the payment. It was suggested that the word "maintained" be changed.

    • S. Vasudev answered that the Office agrees that this language should be updated. It will be reviewed and updated in the near future.

  3. Removing documents from file history/online

    IPIC wondered what the Office policy is for removing documents from a file history, and who has authority to remove a document.

    • S. Vasudev responded that all documents submitted to the Office and generated by the Office with respect to a patent application or patent remain part of the official record. No document is removed from the official record without a court order. Most documents that form part of the record are available on the Canadian Patents Database. Those that contain sensitive and/or personal information are not available on the CPD. More information is available online (Protect your privacy on the Canadian Patents Database: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03960.html )

    • Documents available on the CPD reflect those available in the Office's internal database. On occasion, an erroneous letter is stored in the database before it is sent to a client. The error is caught and the erroneous letter is replaced with a correct one which is then sent to the client. It is possible that in these situations, the erroneous letter is uploaded to the CPD before it is replaced in the system. Questions regarding specific files should be submitted either to the Online Feedback Mechanism or to the Client Service Centre.

Examination

  1. Obviousness language

    IPIC noted that in some examiners' reports, language is used indicating the following: "The Applicant should be aware that any submissions relating to benefits which do not have a basis of support in the description will not change this conclusion. If the actual invention is based on benefits that were not disclosed originally, then that invention was not correctly and fully described in the specification." IPIC submitted that this language does not seem to be supported by the statute or regulations and wanted to know the legal justification. IPIC also wanted to know how custom language developed by examiners is supervised to ensure that examiners do not add unsupported flourishes to the legal requirements.

    • J. Hurkmans thanked IPIC for bringing this to the Office's attention. It is no longer the Office's policy to use this paragraph. Some examiners have continued to use it, and this is being addressed. The PERM paragraph was an official paragraph and not an example of custom language developed by examiners. It will be decommissioned, likely by the end of the week. Examiners are not encouraged to develop and use custom language as it detracts from the goal of consistency in examination. Examiners wishing to develop or contribute new paragraphs do so by discussing with their section head and then with the practice team. The practice team controls the content of our pre-written paragraphs (PERMs).

    • If clients are questioning whether or not a particular paragraph in an Office Action is standard, they are encouraged to contact the examiner. If the response is unsatisfactory, they may contact the examiner's section head. Feedback may also be submitted through the Online Feedback Mechanism, with Attention to the Examination Practice group.

  2. Final Action practice

    IPIC noted that MOPOP chapter 21.05 indicates that the examiner must review a response/amendment prior to the expiry of the time to respond (assuming the applicant reviews the application before the due date), and in the event the response does not place the application in condition for allowance and the time to respond has not yet expired, the examiner "may" contact the applicant to advise them of that conclusion so that the applicant can choose to exercise the option of making further submissions. While the "may" in MOPOP suggests that the decision to contact the applicant is at the examiner's discretion, it appears to IPIC that some examiners are not even aware that this option exists. IPIC wished to understand what instructions have been given to examiners concerning the exercise of this discretion, and to discuss what could be done to ensure that examiners timely review early responses and provide feedback. In addition, there is a lack of clarity regarding who may withdraw the finality of an action, whether the examiner does this, or if this must be approved by the section head.

    • Examiners are provided with process flowcharts for the discrete tasks performed during examination. In the flowchart addressing the examination of final actions examiners are instructed to call the agent or applicant if there is sufficient time for the applicant or agent to submit an additional response. However, this instruction comes into effect when the examiner examines the final action: there will still be a period of delay between the submission of the response and the examination of the response caused by processing time and examination workload. The "may" in the MOPOP is less to indicate any discretion on the part of the examiner and more to temper expectations in cases where an unsatisfactory response is submitted shortly before the due date. Such cases may not receive such a communication from the examiner because of this delay in time to examination.

    • J. Wilson wondered what is considered "sufficient time" in this context, and what the service standard is for an examiner picking up a final action response.

    • J. Hurkmans responded that the tasks corresponding to these responses are given a priority of "1", meaning that they must be looked at by the examiner within 30 business days.

    • J. Wilson noted that under the future Rules, there will never be sufficient time for the applicant or agent to submit an additional response, since the time to respond will be shortened to 4 months. She suggested that perhaps this could be dealt with by routinely requesting extensions of time, changing the deadline for responding to final actions or a more robust appeal procedure where multiple proposed claim sets could be submitted for consideration.

    • With respect to the withdrawal of final rejections, S. Vasudev explained that under subsection 30(5) of the Patent Rules, an examiner might decide to prepare a letter informing the applicant that the rejection is withdrawn. However, in the context of an ISO 9001 organisation, these decisions and products are subject to quality control. As such, the examiner's letter and the decisions to withdraw the rejection are subject to quality control by the section head.

  3. Grounds for withdrawing an office action

    IPIC wished to know the appropriate grounds for withdrawing an examiner's report, and what the procedure is for having one withdrawn.

    • J. Hurkmans responded that examiners' work instructions on this topic indicate that the decision to withdraw an office action is ‘a conversation' between the client and the Office (examiner/section head). The Office's findings are that some clients prefer the official withdrawal of an office action, while others note the issue and proceed to respond to the initial OA. These decisions are unique to each case. However, the examiners' instructions on this topic will be reviewed by the Office in view of an example provided by IPIC.

    • J. Wilson noted that it would be helpful to have guidance for the ultimate decisions that are made in this regard. J. Hurkmans responded that the Office would follow up on the example provided and appropriate training would ensue.

  4. Use of telephone interview program

    IPIC asked that the Office confirm whether interview summaries are posted only for examiner-initiated interviews or for all interviews. It was also requested that examiners remind applicants during a telephone interview that the summary will be written and made part of the file history. It was further suggested that examiners be strongly encouraged to use the telephone interview program first when a defect is caught by QC after approval for allowance.

    • Scott Vasudev answered that since it is clearly stated in MOPOP chapter 1.08 that all interviews are documented it is probably not necessary for examiners to further remind applicants that the interviews will be documented.

    • For the suggestion of using the telephone interview program first, it is left to the examiner's discretion whether to initiate interviews; it should be noted that other factors beyond whether there are only a limited number of minor defects may be applicable to whether an interview is initiated. These factors could include operational constraints and examiner schedule constraints as well as whether the interview would serve to advance prosecution. The suggestion that examiners be strongly encouraged to use the program first when a defect is caught by QC will be passed along to the practice group.

  5. Double-patenting/overlap PERM language

    IPIC had requested a change to the PERM language used for double-patenting/overlap objections from "overlapping subject-matter" to "not patentably distinct subject matter" and wondered if this has been done. In addition, IPIC noted that examiners are now raising an improper divisional objection instead of an overlap or double-patenting objection. Sample language is as follows:

    "A review of the purported divisional application has revealed that the claims do not define an invention ‘other' than the one claimed in the original application, [insert parent application number]. Consequently, the present application is not entitled to divisional status under subsection 36(2) of the Patent Act.

    The claims of the application are not patentably distinct from those of the parent.

    In view of the fact that a change in divisional status may affect the claim date of the present application, a search of the prior art and substantive examination of the claimed subject-matter have been deferred pending the applicant's response to the present requisition."

    It was asked what the legal basis is for an objection under subsection 36(2), when "not patentably distinct" is obviousness-type double patenting, and the statute only defines same-invention double patenting. Also, IPIC felt that the above sample language does not provide enough information for the applicant to understand what the examiner considers to be the linking inventive concept, preventing the applicant from making an informed decision about continuing prosecution (MOPOP 13.04). In addition, IPIC opined that it is inappropriate, and with minimal gain in efficiency, to make a determination about loss of divisional status versus overlap prior to any substantive examination.

    • S. Vasudev responded that the change in the PERM language with respect to "overlapping subject-matter" in obviousness-type double-patenting has been made.

    • The identification of the improper divisional defect instead of a double-patenting defect is not a new change in practice: MOPOP section 14.13 which deals with these cases was published in November 2013. Furthermore, the office does not read the requirement of subsection 36(2) of the Patent Act for "any other invention" as being narrowly limited to cases involving conterminous double-patenting.

    • As each search for prior art must be grounded in the claim date and/or the filing date of the application, the question of whether an application is entitled to divisional status is a necessary precursor to performing an effective search. Searches for prior art based on an incorrect claim date will not be efficient which, in the context of examination under constrained resources, may result in failures to identify the most appropriate prior art. For this reason, the office addresses questions of improper divisionals before engaging in a full prior art search. Note that, as detailed in MOPOP 14.13, the records of the Patent Office will not be updated with the appropriate filing and/or priority dates unless the applicant agrees with the determination.

    • The PERM for identifying an improper divisional defect does include a field for examiners to explain their reasons and examiners are instructed to provide sufficient information when identifying defects. As such any specific cases where insufficient information is provided should be directed to the online feedback mechanism.

  6. Raising double-patenting on parent grant

    IPIC wondered if it is now Office policy to wait for a parent patent to grant before raising an overlap/double patenting objection.

    • S. Vasudev responded that this question may arise out of a misunderstanding. Examiners are instructed not to identify double-patenting as a defect until after one of the applications proceeds to grant. This would mean that the paragraph on double-patenting occurs below the line "The examiner has identified the following defects in the application:". For cases where potential cases of double-patenting arise (i.e. when the relevant applications are still pending in the office), if an examiner's report is being written, then examiners are instructed to identify a potential defect as a courtesy. This would mean that the paragraph on double-patenting would occur above the above-mentioned line. More detail on this can be found in MOPOP 15.06.03.

  7. Consistency in treatment of antecedent phrasing

    IPIC has found that examiners treat antecedents differently.

    The following example claim 1 was provided:

    • 1. A method, comprising:

    • obtaining a user input via a user interface device;

    The Office was asked to consider these variations of dependent claim 2:

    • 2a. The method of claim 1, wherein the obtaining a user input via a user interface device comprises…

    • 2b. The method of claim 1, wherein obtaining a user input via a user interface device comprises...

    • 2c. The method of claim 1, wherein obtaining the user input via the user interface device comprises...

    • 2d. The method of claim 1, wherein obtaining the user input comprises...

    IPIC noted that it is clear to the reader that in all cases the preamble of the dependent claim is intended to narrow the first step recited in claim 1. Further, examiners are not consistent in how they treat examples 2a and 2b; some will make an objection that the dependent claim improperly introduces a new instance of the same element when it clearly does not.

    • S. Vasudev responded that examiners are given broad discretion on determining whether a claim is clear and are further given the direction to improve the clarity of a claim before grant when the language becomes fixed. In the above examples, 2c and 2d eliminate the possibility of any confusion which could still arise in claims 2a and 2b. This possibility of confusion would only be further elevated if similar claim language is present in the bodies of the claims.

  8. Consistency in treatment of multiple dependencies

    IPIC noted that examiners are inconsistent in how they treat multiple dependencies.

    The Office was asked to consider these variations of a dependent claim:

    • 5a. The method of any of claims 1 to 4, wherein…

    • 5b. The method of any one of claims 1 to 4, wherein…

    Some examiners object to 5a and requisition correction to the form of 5b, whereas other examiners do not. IPIC also asked for clarification of example claim 11 in MOPOP 11.06.

    • S. Vasudev responded that examiners have been instructed to identify defects in claim 5a and have been provided a PERM for that purpose. Removing example claim 11 in MOPOP 11.06 is one of the changes being made in the current update to chapter 11.

  9. Identifying examiner on notice of allowance

    This item was discussed under item n) above.

Other

  1. --Feedback mechanism statistics

    IPIC requested to receive periodic statistics on the use of the feedback mechanism, with a little more granularity than what was provided before (e.g. the general count of people finding information unavailable, lost correspondence, etc.).

    • E. Lafontaine responded that the quality team has done an analysis of the bulk data generated from BSB for both the OFM (Online Feedback Mechanism) and the CCD (Client Contact Database). The statistics can be shared after some small modifications since they were not written specifically for agents. The data is more granular than previous versions; however, a fair amount of time is required to analyse it and generate a report.

    --Notices of National Entry

    IPIC asked if Notices of National Entry forms could be updated (perhaps with PLT) to include the actual national entry date.

    • S. Vasudev responded that in preparing to implement PLT CIPO is conducting an extensive review of its letters and forms, including the Notice of National Entry. The Office will make this update at that time and IPIC is thanked for the suggestion.

    --Policy Advisor Contact

    Agents have found that CIPO information officers cannot always provide correct information to callers, and on occasion are not equipped to answer complex or nuanced questions because of their lack of knowledge. Options for escalating a matter are not clear. It has been suggested that the Office create a contact address for inquiries that cannot be handled by an information officer.

    • S. Vasudev responded that the Office strives to continually improve the information and training available to CIPO's information officers. CIPO recognizes that information officers may not be equipped to answer all possible questions. When a question is complex, the client can submit a request either through the Online Feedback Mechanism or through the Client Service Centre and request that it be escalated. The request should outline why it is a complex or nuanced question.

5. Roundtable

  • S. Vasudev asked whether there would be a problem with no longer sending Final Actions by registered mail and, instead, sending them by the routes used for sending non-final actions (i.e. regular mail, e-mail). There was no opposition to this on the part of any of the 2PC meeting attendees.

  • J. Hurkmans announced that the electrical and mechanical divisions are in the process of hiring new patent examiners. Those interested have until midnight on October 31st to apply.

6. Next meeting and closing remarks

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

The meeting adjourned at 3:15 PM.

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