Practice Committee Meeting PB/IPIC - Tuesday, February 19th, 2019

, 1:00-3:30PM
50 Victoria Street, Gatineau, Québec, Phase I
24th floor, Room G

Attendees

Co-chairs: Virginie Ethier and Jenna Wilson

Members: Louis-Pierre Gravel, Jean-Charles Grégoire, Serge Meunier, Miriam Paton, Shauna Paul, Pierre Pilon (for Christine Piché), and Scott Vasudev

Guests: Marc DeVleeschauwer, Craig MacMillan, and Rachel Mainville-Dale

Secretary: Edith Ethier and Marie-Claude Gagnon (via teleconference)

Items

1. Introduction

V. Ethier and J. Wilson welcomed attendees to the meeting of the Patent Practice Committee (2PC). V. Ethier talked about the CIPO workplace modernization and IT modernization projects. She informed members from IPIC that the Office will be engaging with them to better understand their needs.

2. Review of Terms of Reference

The terms of reference were reviewed by the committee. It was proposed to modify the document to include non-participating observers (up to three from each organization). The proposed modified Terms of Reference were approved by the committee.

3. PLT Implementation

S. Vasudev proposed that this meeting and the next two to three meetings start with discussions on the implementation of the PLT. He thanked members from IPIC for the document they had provided ahead of the meeting which presented policy questions.

Before addressing the questions in the document, S. Vasudev informed the committee that the Office is currently revising MOPOP chapters which will be impacted by the coming-into-force (CIF) of the new rules. There are a total of 10 chapters being revised. These chapters will be posted on the CIPO website in the following weeks. The Office will be seeking comments from external stakeholders.

M. DeVleeschauwer and R. Mainville-Dale also informed the committee that they are working on PLT newsletters which will be posted monthly on the CIPO website. The newsletters will provide updates on the work being completed in preparation for the CIF of the new Rules. The Office plans to continue posting these newsletters up until and past CIF.

S. Vasudev then mentioned that C. MacMillan is coordinating a teleconference to follow-up on submissions received during CG1. The president of IPIC has been invited.

J. Wilson and M. Paton asked when the Office expects the rules package to be published in CGII. S. Vasudev answered that CGII would most likely take place mid-June but that the exact date is unknown. However, everything is still on-track for CIF in the fall 2019.

S. Paul asked if the timeline between CGII and CIF will be 7 months as it was for Trademarks. S. Vasudev answered that the timeline will be shorter for Patents. V. Ethier explained that it is difficult to predict, especially in an election year, because there are many variables.

S. Paul asked if they will receive a final version of the rules package before CGII. V. Ethier answered that the Office will give as much information as possible but since the package will be cabinet confidential, the Office will not be able to share the document before CGII publication. S. Vasudev explained that during the follow-up teleconference, the Office will discuss the changes being considered and will provide explanations why others will not be made.

J. Wilson mentioned that she expects that they will see answers to some of their policy questions when they see the draft MOPOP chapters. She asked how much detail will be included in the chapters. S. Vasudev indicated that his team have determined who are the different audiences and identified areas where more specific information can be provided.

J. Wilson asked if the Office had surveyed the public to identify exactly who consults the MOPOP. P. Pilon answered that no survey has been done.

J. Wilson asked if the Office would be amenable to having conference calls to talk about the MOPOP drafts. S. Vasudev answered yes.

M. Paton mentioned that she had read the consultation submissions and noticed that there are sometimes opposite views being submitted by different parties. She asked how the Office balances out these submissions especially when one submission comes from an organization and the other comes from one individual. S. Vasudev answered that all submissions are considered while keeping in mind the reasons why the policy decisions were made. R. Mainville-Dale added that fair consideration is given to all submissions.

S. Paul asked if there will be many changes to the rules package following CGI and what was the nature (minor and/or major) of these changes. S. Vasudev answered that any substantive changes that didn't originate from consultation feedback are not permitted between CGI and CGII. He followed by explaining that each comment have to be formally addressed.

C. MacMillan added that some changes due to departmental review will be made but that these changes will not have any negative effect on the applicant and that some will actually have a positive effect.

S. Paul expressed concern about the short timeline between CGII and CIF. R. Mainville-Dale asked the members from IPIC if they would be interested in working together to make a list of changes. J. Wilson indicated that it is more complicated for agents than for the Office because there is more tracking to do on their end. Therefore, it may be too late to put together such a list.

M. Paton added that there is concern because missing deadlines is one of the primary causes of mal-practice suits. She asked if it would be possible for the new notices to state a specific calendar date for the deadline rather than giving a time limit (for example "within two months"). R. Mainville-Dale answered that this has been contemplated and that efforts to increase clarity of notices are being taken when preparing the new notices.

J. Wilson asked if the discussion can be continued by conference calls. S. Vasudev answered that this was possible.

4. Digital Services – CDAS and CPD

  1. CDAS status information (particularly abandonment status) – update on this?

    IPIC asked for an update on the availability of application status on CDAS.

    • P. Pilon answered that this has been prioritized as a top improvement to be made on the CPD after PLT implementation. A list of possible status has been created and can be shared. J. Wilson mentioned that they had already seen the list.

    • P. Pilon followed by indicating that the new Digital Government for Business Program, being led by ISED, is also considering developing a real-time status Alert and Notification service. Upon subscription to the service, patent agents or interested parties, would receive notifications (such as SMS texts, emails, etc) each time a change of status occurs on a patent/application which they are watching. He asked if this would be a service that the members would be interested in obtaining. Everyone answered yes.

  2. Redaction of personal information from files

    IPIC submitted that it was recently noticed that a self-represented inventor had included highly personal information in a required document (his SIN and birthday were included with the claims). It was never redacted on CDAS (this particular case was submitted via the online feedback mechanism). They asked what mechanisms exist for redacting sensitive information like this, when the submitter is over-inclusive. They also asked, if there is an option for redaction, can it be used to redact assignment documents and petitions to be made available via CDAS?

    • P. Pilon answered that, although the current patent office tools do allow for redaction, the Office does not currently have automated tools for identifying personal information. Redacting documents would require operations analysts to routinely review and identify elements for redaction, which is a time consuming service. This requirement has been included for consideration as the Office modernizes to new systems.

    • J. Wilson specified that the case being referred to is a 20 year old case and asked why the information wasn't noticed by an examiner. M. Paton asked if the Office is able and willing to redact upon request. R. Mainville-Dale clarified that, in fact, the Office does not redact documents. When an analyst notices private information, the document goes in a CAP-TAB which is not available on the CPD. The document is however still available in Techsource and may be consulted by the public. S. Vasudev explained that there is an obligation under Section 10 of the Act to make documents available to the public unless instructed by the court.

  3. Corporate Title Documents

    IPIC submitted that corporate title documents (e.g., intercompany assignments, change of name documents) do not contain an individual's personal information and asked why they are not available on CDAS?

    • S. Vasudev answered that all documents filed in connection with a patent or a patent application, including corporate title documents, are open to public inspection following the end of the confidentiality period. Most of the documents are available on the Canadian Patents Database (CPD) except for those that are likely to contain sensitive personal information. A privacy assessment completed as part of the CDAS project to make more documents available on the CPD identified that assignment documents were more likely to contain sensitive personal information. The Office codes all assignment documents in their database with the same code which is why they don't appear on the CPD.

    • J. Wilson asked if it would be possible to have the chain of title available on CDAS. S. Vasudev answered that this could be considered after PLT implementation.

5. Operations – General Correspondence

  1. Transmission of examiner interview summaries

    IPIC had previously raised the issue of having these documents sent to authorized correspondents, like other correspondence. At that time, the Office had indicated that they would not send the interview summary if it wasn't requested because (i) not all agents seemed to want this, and did not request a copy to be mailed, preferring to retrieve it from the CPD; (ii) this is not actually "correspondence" that is intended to be mailed, and (iii) creating a process to send the summaries would be a significant operational burden.

    IPIC mentioned that the law has changed since then (section 53.1 PA) and that any written communication is now admissible in evidence concerning a patentee's position on claim construction. It is not clear that a document memorializing an interview can be excluded. The applicant should be provided with formal notice of any document in the possession of CIPO that reflects a position taken by the applicant, and probably should not be treated as a mere administrative record.

    • S. Vasudev answered that the law that has changed indicates that the written communication must be between the applicant and the Commissioner, officer or employee of the Patent Office, etc. It is unclear whether a written record of an oral communication between the applicant and an examiner would fall under that language. However, if the written record of the interview was sent to the applicant or agent then this would definitely be encompassed by the language of the law. However, given that the three reasons documented in the question remain and the new consideration that sending out the records would ensure that the records fall under the law, the Office would be hesitant in proactively sending out records especially in the absence of any jurisprudence on this topic and/or overwhelming demand from all applicants.

    • S. Paul indicated that when the interview service was piloted and the agents were surveyed, they thought that if a summary was not requested that no record was created at all. He also indicated that when the pilot ended and the service was officially implemented, the process changed to include agent initiated interviews which could be substantive in nature. S. Meunier answered that this does not change the Office's position. When a telephone conversation between an agent and an examiner includes discussion of substantive issues, these should already be covered by an examination report. The conversation should only be clarifying these issues.

  2. Formatting of notices of national entry/filing certificates

    IPIC submitted that the current design of these form letters does not accommodate large blocks of information

    Example: notice of national entry in 3021106. In this case, there were so many priority claims that they did not fit under "Priority Date", and the earliest date—the actual priority date the application would tend to rely on—was not even included. This is even more serious in a direct (non-PCT) case, since this document is the applicant's evidence that the priority date was properly claimed.

    IPIC suggested that any redesign maximize use of the entire page (assuming this is being redesigned for PLT); in the meantime, perhaps either a continuation sheet should be attached and the notice sent manually, or else the document should be prepared and sent manually as currently done for divisional filing certificates.

    • S. Vasudev thanked IPIC for the suggestion. He indicated that these certificates are generated automatically by the Office's database and these types of correspondence are limited to a single, 1-sided page. The Office will however take this issue under consideration for a future improvement, and the possibility of multi-page documents is being investigated in the modifications of documents for PLT implementation.

    • J. Wilson asked if the solution was to write to the Office separately. R. Mainville-Dale answered yes.

    • M. Paton asked what the office's internal process for correcting an error on a certificate is. R. Mainville-Dale answered that corrections are made in-house.

  3. CIPO deposit account statements

    IPIC submitted that it would be helpful if the firm's file numbers, and not just the application number, appeared on these statements and asked if this is possible.

    • P. Pilon answered that at present, where available, the firm's file numbers appear on the statements under the Reference/Référence column. For all requests submitted through paper that contain a firm file number, it is captured by the ICU staff and the number is transferred to the statements. For requests submitted through online services, it appears that some online services capture and transfer the firm file number (i.e. payment of patent maintenance fee) while others do not. The Office will review the design of the online service products in this regard and see what can be done to have the firm's file number captured and subsequently included on the statements. This work has been captured in the list of IT priorities submitted for 2019-20.

  4. Grace period status

    IPIC asked how long is the "in grace" period (i.e., how many days between a deadline and a determination that no correspondence was received meeting that deadline?).

    • P. Pilon answered that there are differing processing periods which are set depending on the service type. Also, the internal office processing periods are currently under review in light of PLT and Service Fee Act obligations and therefore will be changing soon.

6. Examination – Examiner's reports

  1. Use of foreign work product to generate reports

    IPIC submitted that they understand, to some extent, the rationale for instructing examiners to repurpose IPRPs when claims enter the national phase without amendment; however, it appears that the IPRP and other foreign work product are being used as a substitute for the content that should appear within a Canadian examiner's report.

    In one case, the Canadian examiner used the PERM paragraph to refer to the IPRP—however the IPRP was in Chinese and all prior art references were in Chinese. There was no indication that the examiner had a translation of any documents, and IPIC assumes that the examiner is not qualified to examine in that language. Essentially, the examiner's "reasonable grounds" under 30(2) were not presented in English or French to the applicant.

    In another case, the examiner cut and pasted an OCRed version of a European report into his report, but forgot to change the references to the EPC. Again, it seems that no "reasonable grounds" were provided.

    IPIC also indicated that the IPRP PERM issue is now of more concern with the change in the law: written communications from the examiner are admissible against the patentee's claim construction, but those written communications are supposed to be between applicant and the Commissioner, an officer or employee of the Patent Office, or a member of a re-examination board. The IPRP was not sent by a named party in section 53.1, yet it is incorporated by reference. On the other hand, when a Canadian examiner is fulfilling PCT functions, the IPRP is prepared by an employee of the Office. This is not specifically a policy or quality issue; it has to do with the procedure followed when these reports are prepared, so seems to encompass all themes.

    • S. Meunier answered that the use of foreign work products to generate reports, when applicable, is an efficient way to identify defects. The IPRP PERM paragraph is only used when the claim set being examined is identical to the claim set examined in the IPRP and the examiner considers the prior art cited and explanation provided in the IPRP are relevant and persuasive under section 28.2/28.3 of the Patent Act.

    • S. Meunier also indicated that examiners must review the IPRP and the prior art cited in it, and only use the PERM paragraph when the claims are identical and they believe the art applies. The viewpoint of the Office on the use of the IPRP PERM paragraph even when not in English or French is also based on the fact that the applicant has already received the IPRP, usually well before examination has proceeded, so they should be well ready for those same arguments to surface during any national examination. If a translation of the IPRP is required, PatentScope provides machine translation of IPRP in English or French.

    • He further indicated that the reference to EPC in a Canadian Office Action due to a cutting and pasting of EP work product by an examiner should not occur. When using IPRP work product, the defect is actually identified under the correct section of the Canadian Patent Act or Rules. The Office will remind examiners to make sure the correct section of the Act or Rules is identified and the reasonable grounds are provided.

    • Finally, the Office does not consider the amendment in the law, concerning prosecution histories now being admissible in evidence to construe claims, changes the current written communication practice. Using the IPRP perms are still written communications, which refer to other documents, and so the Office does not have any intention of changing this practice.

    • J. Wilson mentioned that the examiner must review and agree with the IPRP but should also look in other offices; if the U.S. or EP offices have added documents or have different documents, why didn't the examiner consider those as well? S. Meunier answered that the Office does not instruct examiners to use only the IPRP. They should be considering all the art cited in foreign prosecution and use the best art to advance the case. Use of the IPRP art should indicate that this is the art considered to be most relevant by the examiner.

    • J. Wilson asked if the Office has surveyed how often examiners use the IPRP PERM paragraph when there are other foreign prosecution available. S. Meunier indicated that the Office will consider the possibility of gathering this information.

    • M. Paton asked how an agent should respond to a report where the examiner copied and pasted from a foreign report when the claims are different. S. Meunier answered that the best way is the feedback mechanism but that sometimes, although the claims are different, the gist of the defect may still be the same.

  2. IPRP PERMS and unity objections

    IPIC submitted that it is not unusual for an examiner to adopt a unity division set out in the IPRP. When this occurs, they requested that the examiner explicitly set out the claims of each division in the report, and not simply refer to the IPRP for the specific claim numbers.

    • S. Meunier answered that the unity IPRP PERM is used for PCT national phase applications when the claim set being examined is identical to the claim set examined in the IPRP and the examiner considers the claim groupings and explanation provided in the IPRP are relevant and persuasive under subsection 36(1) of the Patent Act. When the claim groupings are clearly identified in the IPRP, the examiner does not have to reproduce them in their Office Action. Otherwise, the efficiency gained by using the unity IPRP PERM would be lost by reproducing the claim groupings in the report. Further, reproducing the claim groupings might introduce errors which would lead to some confusion, as two sets of claim groupings would now be referenced in the prosecution.

    • J. Wilson asked if the examiner is allowed to incorporate prosecution from other offices by reference. S. Meunier responded that incorporation by reference is permissible only for the IPRP which is part of the application being examined, and not for products from other offices.

  3. Conciseness PERMS

    IPIC asked if the Office could share the PERMS used for Rule 84 and subsection 27(4)? They sometimes encounter problems but cannot tell whether it is a PERM issue or not.

    • S. Meunier said that the Office can definitely share the Rule 84 and subsection 27(4) PERMs and asked what the perceived problem relating to conciseness is. It might help resolve or clarify the issue. J. Wilson indicated that no particular example was available for the moment.

    • M. Paton asked why the PERMs are not in MOPOP or publicly available otherwise, similar to the U.S. PERMS being provided in the MPEP. S. Vasudev answered that this could be considered but requires some organizational discussion.

    • S. Meunier indicated that he will send the Rule 84 PERMs by email.

  4. Drawings review by examiners

    IPIC mentioned that there were earlier discussions about the quality of drawings/drawings treated as unscannable when they are scannable. Quality and process issues aside, they also find that examiners are inconsistent about whether they raise concerns with the drawings.

    IPIC asked if it is possible to include, as part of a first report, a mandatory paragraph in which the examiner indicates that the quality of the drawings has been reviewed, and indicates to the applicant whether any documents were deemed unscannable?

    • S. Vasudev mentioned that this question appears to conflate unscannable with low quality of drawings. An operations analyst determines whether a drawing is unscannable and this is clearly indicated in the Canadian Patent Database (CPD): for any document having unscannable portions, a supplemental page is included at the beginning of the document indicating exactly what is unscannable. Examiners do not engage in the question of whether any portion of a document is scannable.

    • He indicated that in terms of the quality of the drawings, examiners are instructed to identify a defect if a drawing is illegible or of poor quality in the first report or the first report after the drawing is submitted. However, when the quality of the drawings is the only impediment to allowance, examiners are instructed to identify a defect only if the quality of the drawings creates a defect with regards to section 27(3) of the Patent Act when taken together with the other drawings and the description as a whole. Consistency in the examination of quality of drawings is difficult because it is a very subjective question. Furthermore, certain examiners are understandably reluctant to identify an issue with the quality of a drawing in situations where they believe that the only way to fix the defect would also serve to introduce new subject-matter to the application.

    • As there is a presumption that every part of the application (including the drawings) is reviewed by the examiner at every action (unless explicitly indicated otherwise in a report) and there is already an indication in the CPD of which portions of the application are unscannable, there is no need to insert a mandatory paragraph into examiner reports indicating that the quality of the drawings has been reviewed and which portions of the application are unscannable.

    • He added that the Office has done a review of its processes pertaining to reception of patent applications containing colour drawings (photographs) that are permitted if conditions prescribed under S83 of Patent Rules are met. For paper submissions, the process relies on visual inspection to triage applications to be treated appropriately, and sometimes the colour photos can be missed. Notations on transmittal instructions do not help CIPO in avoiding this error. Submissions containing colour drawings (photographs) are quite rare. The Office is considering options for action to reduce errors and monitor the situation such as providing refresher training to ICU employees that are responsible for identifying applications that contain colour drawings prior to scanning them.

    • M. Paton mentioned that unscannables used to be kept and asked what was the current procedure. S. Meunier said that the Office will follow-up with an answer.

  5. Requisition paragraph

    IPIC asked how the all-caps requisition paragraph is inserted at the beginning of a letter. Is it done by the examiner or by exam support, and by whom is it editable? IPIC is inquiring because of an instance where the paragraph was missing altogether.

    • S. Meunier responded that the all-caps requisition paragraph is inserted by the examiners by running a MS Word macro that downloads the tombstone information of the application being examined and generates the initial report with that requisition paragraph. Since the report is a Word document, the paragraph is editable by anyone who opens the Word document, though only the examiner, the SH and exam support should be opening a specific report. It is possible that paragraphs are inadvertently deleted, but this is very rare and should not be happening.

7. Client Services

  1. Echoing feedback

    IPIC asked if the feedback mechanism acknowledgement page could be rewritten to echo back the content of the user's submission (is this already on the list of possible changes)?

    • P. Pilon responded that Patent Branch will make this recommendation to CIPO Client Service Centre as they are the product owner of the Online Feedback Mechanism (OFM).

    • M. Paton clarified that it is not a system problem but more of a procedural one. Sometimes the content of the feedback is indicated and sometimes not. It would be helpful to know, when a response is received by the client, which feedback is being addressed. P. Pilon indicated that this would be taken into consideration.

    • J-C. Grégoire asked what kind of reply a client may expect. Is the response a generic notice that the issue will be looked at? P. Pilon answered that CSC routes all feedback to the appropriate party and then follows up to know if the loop has been closed by providing a complete response to the client.

8. Roundtable

M. Paton brought to everyone's attention the letter by BLG on divisionals. S. Meunier indicated that this was mentioned at the last meeting and that the Office was supposed to follow-up.

V. Ethier followed by indicating that a table will be created to track action items from the 2PC meetings. This table will be circulated as an appendix to the meeting minutes.

9. 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 3:30 PM.

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