Tuesday, , 1:00-3:00PM
By videoconference
Attendees
Co-chairs: Virginie Ethier and Jenna Wilson
Members: Scott Vasudev, Christine Piché, Serge Meunier, Miriam Paton, Jeff Leuschner, Jean-Charles Grégoire, Louis-Pierre Gravelle
Guest: Patrick Cyr, Krista Rooney, Craig MacMillan, Anne-Marie Garand-Sheridan
Secretary: Marie-Claude Gagnon
Items
1. Introduction
V. Ethier welcomed attendees to the meeting of the Patent Practice Committee (2PC).
2. Approval of minutes
The minutes of the meeting of February 11, 2020 have not been reviewed by all members. V. Ethier suggested that the members review the minutes (available online) and provide comments, if any, by email. The committee approved.
3. COVID-19 Update
V. Ethier provided an update of how the current pandemic situation has been handled by the Office and an overview of the various changes that took place during this time. She invited IPIC to ask questions if additional information is required.
She went through the process leading to the decision to continue to offer services by providing employees with remote access, which included consultations with USPTO and WIPO. She pointed out that although most examiners already had remote access, other employees did not; for example, most of the operational employees did not have access and/or training for remote work prior to the current situation. CIPO quickly provided the required resources to enable remote work, while coordinating alternate work schedules for the few functions that could not be performed remotely in an effective manner.
She also mentioned weekly meetings with the UK and Australian patent offices (the Vancouver group) to touch base on how the pandemic situation is handled in these other jurisdictions. Subjects of these discussions include operational process changes, procedures, workplace and IT modernization, and reintegration plans. Regular meetings are also held with the USPTO and various other IPOs to exchange information on processes. She indicated that CIPO does not currently have a date for reintegration, but that a multi-phase reintegration plan was in preparation. Since most functions at CIPO can be done remotely effectively, remote work will continue for some time in the future.
She mentioned several changes to procedures and processes that were made to adapt to the current situation, including improvements in the process of electronic submissions, improvements in the processes for the incoming correspondence unit, coordination of part time in-office work and remote work for some units (incoming correspondence, grants), and micro-IT modernization efforts including the use of electronic signatures and tools for remote training of examiners.
She indicated that a decrease in the filing of applications is expected, due to the recession likely to be caused by the current situation. Based on the last recession, a decrease of approximately 15% is expected. One aspect of the "new normal" is to consider what this change will have on productivity and on the timelines to address the inventory of pending applications.
She also mentioned other activities from CIPO to help improve processes in the current situation, including webinars and updates to the FAQ on COVID following questions received during these webinars, accelerated examination options for COVID related patents, and regular meetings with IPIC to discuss multiple issues including the impact of extensions to the designated days and when the extensions will cease.
Finally, she indicated that CIPO has returned to "regular" priorities and issues, including improving service, IT modernization, increased paperless processing, automatic correspondence, discussions on diagnostic methods, and the quality dashboard which has been finalized and will be implemented shortly.
J. Wilson asked if a decision has been taken to further extend the designated days. C. Piché answered that a further extension is planed until July 3, so that activities would resume on July 6. C. Piché however expressed concerns about having too many clients waiting for the resume date to meet their deadlines, particularly for maintenance fee payments. Currently there are close to 40,000 maintenance fees that have been pushed back because of designated days; there are concerns that the system may have difficulties in handling so many payments if done all on the same day. She recommended that agents proceed with payments in advance whenever possible (taking into considerations that payments cannot be done during the weekends).
J. Wilson pointed out that extensions in weeks instead of months are more burdensome to handle, and that if a similar situation occurs again in the future it may be easier to apply the designated days by 1 month increments.
J. Leuschner asked if it was still possible to obtain a printout of information from Techsource by going to CIPO. C. Piché responded that the client service center is closed to public access because of the current situation but that the agents from the client service center can be contacted by phone to provide the required information by phone or by mail, as required.
4. Administrative policy
4.1 Subsection 27(6) of the Act vs section 56 of the Rules
IPIC indicated that it appears that defects under section 65 of the Patent Rules were being incorrectly noted as abandonments under subsection 27(6) of the Patent Act. They feel that section 65 of the Patent Rules is appropriate for national phase entries and alterations made to a Canadian application after the filing date (e.g., applicant adds an inventor which means the statement of entitlement is inaccurate), while subsection 27(6) of the Patent Act is appropriate when an application is non-compliant on its filing date.
S. Vasudev indicated that CIPO is aware of one case where this mistake occurred, but that use of subsection 27(6) of the Patent Act is rare since CIPO views it as applicable to a notice sent on the filing date only. J. Wilson disagreed and reiterated that subsection 27(6) of the Patent Act should be applicable wherever the situation concerns the application on its filing date, regardless of the date of the notice.
S. Vasudev noted that there is apparent overlap between the two provisions, and that CIPO preferably uses section 65 of the Patent Rules because it is more flexible toward the applicant, having a requirement of good faith attempt as opposed to a compliance requirement. He indicated that subsection 27(6) of the Patent Act will be addressed at the next opportunity to amend the Act to remove this apparent duplication.
J. Wilson pointed out that in the case in question, one problem was that the abandonment reason did not match that of the defect notice. K. Rooney added that the particular file was corrected so that the abandonment status incorrectly associated with subsection 27(6) of the Patent Act is now associated with section 65 of the Patent Rules and that the clerks were provided with the required information to reduce the risks of a similar error occurring in the future.
4.2 Evidence required from transferees
IPIC asked to revisit the evidence required from transferees to record a transfer. They feel that the requirements are burdensome and not necessarily in line with international practice; the burden on a transferee to have an assignment recorded seems rather arbitrary because the different evidentiary requirements do not serve the same objectives:
- the transferee's signed statement that to their knowledge, the document effecting the transfer had been signed and executed by all parties does not do much to mitigate the risk of fraud, since the alleged transferee would be the one likely to perpetrate a fraud
- the witness requirements, on the other hand, do seem to address fraud to some degree
- recordal of the assignment in another patent office does not make the transfer any more legitimate
IPIC also pointed out that there does not seem to be much motivation to mitigate fraud generally—the Office will record a transfer without evidence on request of any party holding themselves out to be the transferor or a person authorized by the transferor (and similarly, change the address on record for the current applicant/patentee). As such, IPIC asked that these evidence requirements be reviewed, maybe via a public consultation.
S. Vasudev indicated that the Office is in agreement that these requirements should be re-examined, and that there is a need to take into account the approaches of other IPOs. Also, the intent of Patent Branch, to the extent it is possible, is to work together with their partners in trademarks and designs so as to have a common approach. He asked what the agents feel should be required as evidence. He indicated that a written submission from IPIC on this topic would be welcomed.
J. Leuschner indicated that the requirement of the signature of a witness is the requirement that is most often mentioned as being burdensome, but that they could ask more feedback from their members and provide a formal submission. J. Wilson added that members are likely to also suggest that electronic signatures should be accepted.
4.3 Sufficient proof of submission for online services
IPIC reported that an agent had difficulty establishing that a new application was properly filed online. Despite apparently having the requisite confirmation numbers associated with the list of attachments, he was informed that the Office could not verify the content of the submission so it would not be accepted as filed on the day it was submitted. IPIC indicated that this situation seemed to be contrary to the Office's position discussed earlier: https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04739.html (under "Online services").
IPIC added that this situation is also contrary to the Office's approach to lost correspondence from a regional office. Since the Office is encouraging everybody to file electronically, IPIC asked to review the requirements for proving an online submission was made, i.e. what is adequate to prove a filing date when filing electronically?
K. Rooney responded that usually, the electronic transaction confirmation number is sufficient for CIPO to be able to retrieve the filed documents. However, in the particular case discussed, no documents were found in association with the confirmation number provided. There was a question as to whether documents were actually provided at filing. The electronic transaction confirmation document usually lists the attachments, and in this case the electronic transaction confirmation document did not include this list. At this time it is uncertain what happened, since the electronic filing interface usually requires attachment of at least one document to proceed.
J. Wilson asked what CIPO expects as proof of filing for cases like this where the filed documents cannot be found based on the confirmation number. S. Vasudev responded that there is no specific requirement; the agent should provide as much information and proof as possible and available.
K. Rooney added that going forward, CIPO will accept an affidavit as sufficient evidence; the approach taken will be similar to that required to prove that a Notice from the Commissioner was not received by the client. In other words, the process and requirements to prove that documents were filed will be similar to those to prove that documents were not received. S. Vasudev added that this procedure will be clarified in a next amendment to the MOPOP.
J. Leuschner asked for clarifications on the processes at CIPO when documents are filed electronically, so as to better understand what would help CIPO retrieve filed documents; for example, are documents still printed and scanned? C. Piché clarified that CIPO no longer performs a print and scan of documents filed electronically. The filed documents do not go directly into the database, however; they are allocated a number and electronically stamped, and manually transferred to the database. The associated data is also manually entered.
5. Online Feedback Mechanism (OFM)
C. Piché briefly discussed the contents of the OFM report for 2019-2020, circulated to IPIC prior to the meeting. She indicated that although there was an increase in the number of feedback transactions, the proportion of transactions when compared to the number of tasks performed in the year remains small.
CIPO uses all of the feedback received to improve the processes and pinpoint the greater areas of concern. She indicated that the largest number of feedback transactions related to file updates, and that the Office is continuing to improve this aspect. For example, curtesy emails were implemented to notify clients of the grant of their patents. She also indicated that the second largest number of feedback transactions related to missing correspondence. Examples of improvements related to this point include improvements on electronic processing, and automatic generation of some correspondence to reduce the number of typographical errors.
With respect to electronic correspondence, C. Piché indicated that the Office is currently looking at options to enable outgoing PCT correspondence to also be sent electronically, since at the moment this correspondence is still sent by paper because of security issues. One requirement of the new IT system is that it will enable outgoing electronic correspondence for PCT, but the Office is seeking an interim solution so as to be able to send electronic correspondence before the implementation of the new system. She mentioned epost™ as a possibility being investigated, which would allow the correspondence to be sent to a central repository for later access by the clients.
J. Wilson expressed concerns about epost™, namely its size limit, the requirement for a separate account, and the fact that the documents are retained only for a limited period of time. C. Piché noted these concerns but reiterated that this would only be a temporary solution until the new system is implemented, and would be used only for PCT correspondence. Since the pandemic about 90% of PCT incoming submissions are filed electronically, so there is a need for an option to send documents electronically now.
C. Piché also indicated that the consultations on the IT modernization project will restart and invited the agents to respond to the invitations from CIPO.
6. Consultation on new policy for withdrawing patent examination reports
CIPO provided the IPIC members with a consultation document on a new policy on withdrawal of examination reports, and asked the following questions:
- Do you have any comments on the significant errors which will warrant the withdrawal of an examination report and errors that will not warrant the withdrawal of the report?
- Are there any practical issues CIPO should consider in regards to any of the proposed time limits set out in this policy?
C. MacMillan added that the reasons behind this new policy include a desire for a reduction of inconsistencies on the reasons for withdrawal of reports, for improvements in the timeliness of examination, and to encourage applicants to use the interview service for minor errors in reports.
J. Wilson indicated that there was not sufficient time to get comments from IPIC members outside of the committee, but that IPIC still had substantive comments and objections with respect to this new policy.
J. Wilson expressed concerns with respect to the different timelines includes in the policy, namely the requirement that a voluntary amendment be filed more than 1 month before mailing of the report to allow withdrawal of the report on the basis that the amendment was not considered (IPIC would like this period to be shortened), the requirement to request withdrawal of the report within 1 week of receipt to waive the fees (one month would be preferable), and the requirement that a report be received at least two months after mailing to allow withdrawal based on this delay (IPIC considers that the applicant should have at least 3 months left to respond).
With respect to the requirement that a report be received at least two months after mailing to allow withdrawal based on this delay, J. Leuschner added that CIPO should not take more than 10-15% of the allotted time to respond to send the report, so as not to penalize the applicant. J. Wilson suggested that a different standard may be applied between electronic and paper correspondence.
J. Wilson also indicated that the evidentiary requirement of affidavit or declaration should not be applicable in cases other than when the agent or applicant asserts that the correspondence has not been received at all; when the issue is delayed receipt, a showing of the date of receipt (copy of email or postmarked envelope) should be sufficient.
J. Wilson also expressed concerns about the criteria for determining whether a report should be withdrawn or not. She suggested that a distinction should be made between operational errors (which should always result in the report being withdrawn) and substantive errors (only some of which should result in the report being withdrawn). She indicated that the substantive issues are were variations are likely to arise, and that the policy as currently drafted provides possibilities for such variations. She proposed that a parallel be drawn between the Federal Court Rules with respect to the motions to strike, and the determination of whether a report should be withdrawn or not. In other words, the report should include reasonable grounds (i.e., should include identification of defect with reference to the Patent Act or Patent Rules with sufficient precision, be consistent with case law and MOPOP, and identify the material facts supporting the conclusion that there is a defect) to be valid. If it does not, but the problem can be remedied by further material facts, an interview can be performed to obtain these facts. If the problem cannot be remedied by further material facts obtainable via an interview, the report should be withdrawn.
C. MacMillan indicated that the test set forth in the policy is based on that of the USPTO to determine when an Office Action is vacated. He added that the guidelines will be refined over time, and that there will be a body (e.g. committee) responsible for making the determination as to whether or not a report should be withdrawn, thus insuring consistency in the decisions. Also, the intent is that the criteria for a report to be determined to be "so uninformative that it prevents the applicant from recognizing and seeking to counter the defects raised by the examiner" will be relatively hard to meet, which should lead to a reduction in the number of reports withdrawn for being uninformative. He however invited J. Wilson to send written details of her proposal to him.
C. MacMillan also indicated that no other consultation will be held on the policy, and that it will be implemented in December 2020.
J.C. Grégoire asked if the petition or request to withdrawn a report will need to be made more formally, or if the use of the OFM will still be acceptable. C. MacMillan responded that the Office is not contemplating any change on how the submission needs to be made, but that the submission needs to be done in writing; a phone request is not sufficient.
7. Examination: Interview Service
IPIC indicated that agents are receiving examiner's reports identifying minor issues that could have been resolved by an examiner-initiated interview. This could be due to examiner reluctance to engage on the telephone. IPIC would like the examiners to be encouraged (again) to make these calls. IPIC also asked if it would be helpful to add some sort of statement to the end of responses that the agent wishes to receive these calls, so that the examiner knows which agents will be responsive to a call.
S. Meunier confirmed that some examiners are reluctant to proceed with phone interviews despite the Office encouraging them to use this option. He also added that some examiners have noticed that since the pandemic, some agents are not returning phone calls; this may be due to the phone number on file being a landline to which they have limited access in light of the current remote work situation. He indicated that the proposal to put a note in the amendments that the agent is open to phone discussion would be helpful, provided it is not buried in the "boiler plate" type language often found at the end of the submissions, to which the examiners are less likely to pay attention.
S.Meunier added that the Office is considering the option of the examiner sending an email invitation to the agent to set up the phone interview. Also, the Office is looking into the possibility of using video conference, which some clients may prefer over a phone call. J. Wilson indicated that an initial contact by email would be a good option.
J. Leuschner suggested that the initial email from the examiner could include more substantive content, for example a proposed amendment. S. Meunier responded that this is not the current proposal, since the Office does not want email prosecution. However, the suggestion will be considered.
J. Wilson asked if the email request would be part of the file record. S. Meunier indicated that this point is not yet determined.
8. Roundtable, Next meeting and closing remarks
J. Wilson praised CIPO for their fantastic job of getting everybody to work remotely quickly and maintaining work during the pandemic.
L.P. Gravelle asked about the possibility of having communication in a file sent to a particular email address, for example for an issued patent where the agent is withdrawn, to direct sending of the notices with respect to the maintenance fees. K. Rooney responded that in the current system the client information is global, and not file-specific. If an agent is removed from a file, the notices would go to the patentee at the address on file for this patentee, whether physical or electronic. The current system does not allow to have a different email address for different files associated with the same client. The Office is willing to open up a discussion between their IT department and the agents so see what changes are possible to address this situation. J. Wilson added that allowing for file-specific information is a business requirement for the new system, but until then a workaround would be required.
V. Ethier informed IPIC that the issues provided for discussion that were not addressed during the meeting will be addressed in writing, with a possibility of a follow up discussion if required.
K. Rooney informed IPIC that a review of the administrative chapters in MOPOP is being performed, for eliminating discrepancies between the English and French versions and also to correct other issues. She invited IPIC to email her directly if they have suggestions for corrections.
V. Ethier indicated that the CUSMA related priorities consultations (patent term adjustment and processing applications efficiently) will start this week.
M. Paton asked where COVID-related questions should be sent, if they are not already in the FAQ section of CIPO's website. C. Piché indicated that these questions could be sent directly to her.
The date of the next Patent Practice Committee meeting will be determined later by email. The Committee aims for a meeting around the end of September or in October.
The meeting adjourned at 3:40 PM.