Patent Practice Committee Meeting PB/IPIC - Tuesday, February 23, 2021

, 1:00-3:00PM

By videoconference

Attendees

Co-chairs: Virginie Ethier and Jenna Wilson

Members: Scott Vasudev, Christine Piché, Serge Meunier, Jeff Leuschner, Jean-Charles Grégoire, Louis-Pierre Gravelle, Patricia Folkins

Guests: Patrick Cyr, Nathalie Tremblay, Doug Milne, Carla DiNardo

Secretary: Marie-Claude Gagnon

Items

1. Introduction

V. Ethier welcomed attendees to the meeting of the Patent Practice Committee (2PC) and proposed a change in the order of the Agenda to accommodate the availability of the guest speakers. J. Wilson suggested an addition (point 9.2) to the agenda. The changes are approved.

2. Approval of minutes

The minutes of the 2PC meeting of are available online and are considered approved; IPIC will contact CIPO if modifications are required.

3. National Entry Request (NER) application demonstration

C. DiNardo demonstrated the new CIPO web-based application for NER currently in development, showing the various screens that will be used by the agents and applicants once the application is operational. The screens shown included the summary page showing the user's list of patent applications including their status (draft, submitted, paid), International patent application number, title, reference number, date modified, and Canadian patent application number, with filter and sorting capabilities. International patent application numbers are provided as hyperlinks in the list, each providing direct access to the screen for that patent application, which includes tabs for details, parties, options, documents, and application confirmation.

C. DiNardo indicated that upon creation of a new patent application file, the CIPO system accesses a live version of the WIPO API system so as to import the data and documents from WIPO directly in the CIPO application. The data obtained from WIPO is imported into the different tabs and is not editable, but additional data can be entered and edited as required. The documents tab will include the documents obtained from WIPO and other documents uploaded by the user. The options tab will allow, for example, to request small entity status, to request examination, and to request accelerated examination due to green technology, special order, PPH, or COVID-19. The application confirmation tab will include the payment receipt, the acknowledgement of receipt of the NER, and a snapshot of the documents submitted. Filing of the NER using this new system will allow the user to instantaneously obtain their national entry date and Canadian application number.

C. DiNardo indicated that some tabs are still being worked on, and that the application is expected to be online in May.

J. Leuschner asked if the user will be able to upload various other documents aside from the NER documents, for example a voluntary amendment or a general fee authorization statement. C. DiNardo responded that yes, this will be possible as long as the document is in a compatible format, which should be text or pdf.

J. Wilson indicated that currently, when there are multiple documents filed with a NER, there can be a mix up when documents are entered in the file, for example, there can be confusion as to which set of claims is the latest set of claims to be examined. She asked if the new application will allow to organize and/or rename the uploaded documents to help make it clearer what each document is, to minimize the risk of confusion. C. DiNardo responded that the name of the uploaded documents will be retained, so if the client uses a document name representative of its content, it will help avoid confusion. The upload will be done document by document, so each document can be in a separate file.

J. Wilson cited as an example the submission interface of the United States Patents and Trademarks Office (USPTO), where the user needs to select the type of each document from an extensive drop down list on upload, and asked if something similar could be integrated in the CIPO application. Update after the meeting: C. DiNardo confirms that the user will be able to select a "document type" from a drop down exhaustive list of documents when uploading a document.

J. Wilson also remarked that it would be very convenient if the system automatically generated the statement of entitlement.

JC Grégoire asked if the acknowledgement of receipt of the NER will still be sent by email, or if it will be only communicated via the application confirmation tab. C. DiNardo responded that the acknowledgement of receipt will still be sent by email (or by mail if the user selects the option of paper correspondence), but that the snapshot of the application as filed will not be sent, and will only be available in the application confirmation tab.

J. Wilson asked if the workspace will be individual for each user. C. DiNardo responded that for now it will be, but that the Office is looking into broader access for the second release of the application.

J. Wilson asked if there will be a possibility to download a draft application file created by a user to give to another user for approval before submission. C. DiNardo responded that this will not be possible for the current version.

C. Piché concluded that error proofing is a general principle that is important in the IT modernization program, and drop down menus upon document uploads are in-line with that principle; also, one goal is for data to be touched only once, so that data entered in the application goes directly into CIPO's "back end" system without the need to be re-entered, further reducing the risk of errors.

4. Digital Services

4.1 One button download

IPIC indicated that the new one-button download on the documents tab of the Canadian Patents Database (CPD) for the patent package ("Patent documents at time of issuance") was appreciated by the agent community, and asked whether it would be possible to have similar buttons to obtain the patent application "as allowed", "as published", and "as filed". They advised that a button for the application "as allowed" would make it easier for the applicants to verify the pages that will make up the patent package once granted. They also remarked that having to first filter the documents with the filter "At Issuance" to obtain the one-button download seemed to be an unnecessary step, and indicated that it would be helpful, if possible, to make the "Patent documents at time of issuance" button immediately available in the documents tab without first requiring filtering.

C. Piché responded that the Office is aware of these CPD document filters pain-points, since they were brought forward during a broad user research with patent agents. However, the Office is currently in its planning cycle for IT Investments for the 2021-2022 fiscal year, and various upgrades to the CPD (e.g. usability with the documents tab, adding status of applications, adding host correspondence to the documents dossier, additional filter/button changes) are being proposed. It is still to be determined if these proposed CPD changes will be a priority, as most of the IT capacity will be allocated to the IT Modernization Program for new online services and replacing the back-end systems. She indicated that the Office will have more certainty in March with respect to this issue.

4.2 Email notification

IPIC remarked that there are apparently additional email notifications being sent to advise patentees that the package is available for download, and asked if such a practice will be discontinued, since it is creating unnecessary work.

C. Piché asked if this comment was referring to the automated Courtesy Grant Emails implemented with respect to COVID following a special request made in the early days of the pandemic, which was meant to capture instances when packages were being sent and agents were unaware because they were working remotely. She indicated that if agents felt that this service was no longer necessary, the Office could discontinue it. J. Wilson remarked that if the Office is moving forward with the e-grant service, this point will become moot since paper patents will no longer be delivered and as such additional email notifications will no longer be sent. C. Piché confirmed that the e-grant service will be implemented. It was thus concluded that no change was necessary with respect to this point.

4.3 Examiner training materials

IPIC requested that examiner training materials be put online so that they are available for the public to review.

C. Piché responded that the manuals will be available shortly through a document request on CIPO's website. Through the Client Service Center (CSC), members of the public will be able to request a copy of the current version of the Basic Training Manual, as well as the Advanced Training Manual in both languages, and an electronic copy will be sent to the requesters via email upon such a request.

J. Wilson asked if such a request will be subject to the tariff set forth in Schedule 2 of the Patent Rules applicable to requesting a copy in electronic form of a document (item 25.1). C. Piché responded that the tariff would likely not apply, but that she would check and get back.

J. Wilson asked if additional training material would similarly be available, for example the slides used during the training sessions, recordings of these sessions, and training on other topics such as the Practice Notice on Patentable Subject Matter following the Choueifaty Federal Court decision. C. Piché responded that she would check and get back.

4.4 CPD document order

IPIC remarked that in the documents tab of the CPD, the order of the documents seem to vary: for issued patents, the documents are listed with the patent package parts ("as issued") first, with everything else following, while for applications, the documents appear with what seem to be the documents "as filed" first. Such variation is confusing because it requires deduction to figure out why the documents are being presented that way. They believe that the most common use of the Documents tab is by agents who are checking to see if their most recent correspondence has been added to the file, or if there has been an examiner's report issued that they have not seen. They indicated that it would be simpler if all documents were always ordered by reverse chronological order with a clearer instruction (in bold, set off from the other explanatory text) instructing the user to use a filter to view the application as filed, published, etc.

IPIC also remarked that if the user has selected a different document order, this order is not preserved if the user navigates away from the page (e.g., clicks on a document to view it). The workaround is to open each document in a new tab, which is not optimal. They indicated that it would be preferable if the selected setting would persist for the session.

C. Piché responded that the default sort order for the documents tab in the CPD is currently in chronological order for all patents and applications, and the user can sort the documents by any column in ascending or descending order. Should a user select a specific sort order, this selection is maintained only for that screen: if the user navigates to another screen, the sort order does revert to the default order. She however indicated that as CIPO moves forward in its IT Modernization program, enhancements will be made to the CPD. Accordingly, these suggestions will be considered when making these enhancements.

J. Leuschner noted that it would be beneficial for agents to have a filter or button allowing them to get all the documents issued by CIPO together. C. Piché responded that this option is also being considered for the CPD enhancements of the IT Modernization program.

5. Operations

5.1 Continuing confusion with late fee notices after deemed abandonment/expiry

IPIC remarked that even when an application is deemed abandoned for non-payment of a maintenance fee or a patent is deemed expired, a late fee notice is still sent when the next anniversary passes. This issue was discussed in the 2PC meeting of (see item 4.3), where CIPO confirmed that a late fee notice would still be sent during a reinstatement period (or reversal period, for patents). Nevertheless, IPIC feels that the use of the same form for the late fee notice regardless of the status of the patent/application creates confusion, especially for self-represented inventors. Moreover, they indicated that an applicant/patentee may eventually attempt to argue that if the Commissioner sent the late fee notice in the current form, then the Commissioner must have thought the case was in good standing.

IPIC indicated that it would be helpful if CIPO could indicate the current status of the application/patent on the document (e.g., This application was already deemed abandoned on [date]), or use a different form letter when the application/patent is not in good standing.

C. Piché responded that following the end of the Designated Days, the Office did send many notices during the reinstatement period, but that such a situation is now expected to be a rare occurrence in the future. Due to the effort required to implement changes to the notices, and as this is appears to be a rare occurrence, the Office will not update the forms at this time. However, text will be added to CIPO's website if the community considers that this would be of value to the public, such as:

  • Reasons a client may receive a notice for an application deemed abandoned or a patent deemed expired
  • Information explaining that these notices will not be withdrawn (since the current systems do not allow for such withdrawals)
  • Information about how to confirm status online using the CPD

J. Wilson remarked that this situation is not such a rare occurrence, as it can happen even outside of the Designated Days; there is an overlap between the time when the application/patent does not yet have dead/lapsed status in CIPO's database and the date at which the maintenance fee is due. C. Piché responded that the instructions given to the applicants will be to refer to the CPD to obtain the status of the application/patent. J. Wilson remarked that the CPD is not updated on the actual date the application/patent becomes dead/lapsed. C. Piché confirmed that there was a delay of approximately 3 weeks before the status was updated on the CPD.

P. Folkins reiterated that the second late fee notice should have some feature that distinguishes it from the first one so that the agent can readily know if it needs to be reported to the client or not. C. Piché explained that there is currently a backlog of about six months for programming changes required to change a notice; if the change is absolutely essential it could be done, but this is an issue that will be dealt with in the new system in the IT Modernization program. J. Wilson indicated that the distinction between live and dead/lapsed cases could likely be taken care of on the agent's side, instead of relying on the content of the late fee notice. She however indicated that it would be beneficial to CIPO if the template of the notice was changed to add a note that sending of the notice does not mean the application/patent is in good standing.

P. Folkins asked if all of the notices sent with incorrect dates during the Designated Days had been reissued. S. Vasudev responded that they likely had been, but that he would check and get back.

Update after meeting: S. Vasudev confirms that all of the notices sent with incorrect dates during the Designated Days have been reissued.

5.2 Indicating that a patent is available for license or purchase

IPIC noted that there seems to be continuing confusion as to how requests to indicate that a patent is available for license or purchase are handled. Agents submitting requests (particularly, after the issue fee is paid or the patent is granted) are finding it difficult to have their request processed without undertaking extensive efforts to contact the people responsible in the Office. They accordingly asked if CIPO could explain how these requests are processed, and what gaps in processing might result in the problems that agents have experienced?

P. Cyr indicated that information would be provided in writing following the meeting.

Update after meeting: Requests to indicate that a patent is available for license or purchase are handled according to the following: the incoming correspondence unit receives the letter from the agent indicating their request to "mark this patent with an asterisk (*) in the Patent Office Record to indicate that it is available for license/sale", scans the letter and creates a task for exam support. The analyst at exam support verifies that the information on the request is accurate, changes the indicator in Techsource for License/Sale to "Y", and completes the task. Pre-grant, the publication in the Canadian Patent Office Record (CPOR) and Canadian Patent Database (CPD) is an automated process that is incorporated in the granting process. Post grant, which is where this present issue arises from, once the task is completed the operations team contacts the CPOR team for publication. The granting process has been completed at this stage and the lack of automation may be the cause for a gap in the process. The Office will address this issue through training within the operations teams, and updated process mappings.

Example provided by IPIC: 2516817, granted on , request received on indicates original request of was not received, CPOR publication on .

5.3 Field sizes on form letters

IPIC requested a status update on the revision of form templates to include complete bibliographic information. They are most concerned with filing certificates, since this is the only document that an applicant can use to verify that the inventor and title information, etc. is accurate when the application is still confidential.

S. Vasudev responded that the Office has made a request to IT to revise the filing certificate to accommodate more characters for the title of the invention and the inventor names. There will still be a limit to the number of characters in those fields, but by increasing the maximum character limit the Office hopes to reduce the number of certificates that are created with incomplete information. Changes have not commenced due to other IT priorities. Work on the changes is expected to start in the spring and should be completed by the end of March 2022.

5.4 Order of inventors on filing certificate

IPIC asked for confirmation that the order of inventors appearing on the filing certificate matches the petition or PCT request, and is not alphabetical; it is important that the inventors be listed in the order in which the applicant indicates.

C. Piché responded that in the current system, for regular national filings (both paper and e-filing), inventors names are manually entered in Techsource in the order in which they appear on the Petition, and the inventors are listed on the Filing Certificate following that order; for NER filings, the inventors names are manually entered in Techsource in the order in which they appear on the WIPO submission, and the inventors are listed on the acknowledgement letter of national entry date in that order. CIPO's system does not retain an ordered list which means that there is no ability to change the order of the list of inventors; the order on the generated certificate/letter is strictly driven by the order in which the names were originally inputted into the system.

C. Piché also indicated that in the future system demonstrated by C. DiNardo today and which should be in force in the spring, for NER filings, the user will be presented with the inventor and applicant lists in the order imported from the WIPO database, and will have to option to edit the order of the list before submitting the filing. The resulting order that the user will input at filing will be used for the generation of the acknowledgement letter of national entry date.

J. Wilson asked how paper submissions will be handled once the new NER online filing system is implemented. C. Piché responded that the inventor list will still be manually entered for these cases, and that the analysts will be reminded to enter them in the order provided by the applicant (regular filings) or WIPO (NER).

5.5 Timely processing of voluntary amendments (including after-interview amendments)

IPIC expressed their understanding that some examiners are concerned about the timely processing of voluntary amendments after an interview, and indicated that they are also concerned about the timely processing of voluntary amendments to ensure that the correct submissions are examined. They asked if amendments labelled as "Voluntary Amendments" are processed faster than amendments in response to a requisition, and if they are not, they asked if it would be possible to give them a higher priority.

C. Piché responded that at the present time, all amendments are processed in around 15 business days after tasking by the Incoming Correspondence Unit. This turnaround time is slightly higher than the Office would like, but is accounted for in examination processes and work instructions. She clarified that amendments encompass multiple types of service requests provided by the applicant or applicant's representative, which include Voluntary amendment, Voluntary Submission of Prior Art, Response to an Examiner's requisition, response to a Notice for Drawings, Response to a Notice for Translation or a Statement, Response to a Notice for a Certified Copy, with some of the service requests found within the same correspondence. Specialized clerks and analysts read each submission and action the different request types within each correspondence. Accordingly, to ensure that each correspondence is fairly processed, the Office operates on a first in, first out principle. At this time, the Office cannot efficiently prioritize any one of the various service requests related to amendments.

J. Wilson asked if Patent Prosecution Highway (PPH) cases are processed faster. S. Meunier clarified that they are not processed out of order when being entered on file, since such processing has a length of time measured in days and does not have a significant impact on the pendency time; these cases are advanced out of order after this processing, when they get to the examiner, by being assigned a higher priority level in their queue.

6. Examination

6.1 Figures presented slightly out of order

To conclude this matter which was brought forward in the last 2PC meeting (see item 4.1), and as requested, IPIC provided some examples of applications with Figures presented out of order in which a defect under subsection 59(10) of the Patent Rules was raised which was, according to IPIC, not merited:

  • 3002105 (report dated )
  • 2807288 (multiple reports)
  • 3024392 (report dated )

S. Meunier responded that the particular perspective of IPIC on the assessment of this drawing requirement was not previously understood. The order of the Figures of the examples provided does not appear to conform to the wording of the Rules but he expressed his understanding that such defects are a pain point for the agents, and would probably not lead to invalidation of a patent by the Courts. He indicated that this matter will be brought before the internal practice committee with the inclusion of IPIC's perspective on it to allow for proper consideration.

6.2 Use of section 85 of the Patent Rules

IPIC remarked that some requests under section 85 of the Patent Rules (and former section 29) were made to ask for particulars of non-existent foreign corresponding applications long after such applications would have been published. In other words, some examiners seem to use these requests as a double-check to ensure that there is no foreign corresponding application. In such cases, the examiner cannot possibly have "reasonable grounds" to make the requisition, as set out in section 85. The request in these cases seems to be a fishing expedition. Multiple requisitions create a heightened risk of abandonment, so that risk should only be imposed when there are indeed reasonable grounds.

IPIC accordingly asked CIPO to share what criteria are given to examiners to determine whether to make a request under section 85 of the Patent Rules, including, but not limited to, situations where examination takes place less than 18 months after the claim date (e.g., special order cases): while it may not be unreasonable in practice for a Canadian examiner to ask for particulars of foreign applications in such cases, IPIC feels that such request do not seem to meet the legal prerequisite of "reasonable grounds" in section 85 either

S. Vasudev responded that examiners have been informed of the issue with unnecessary multiple requisitions, and that for the specific requisition relating to section 85 of the Patent Rules, the following general guidelines have been given:

  • Blanket Rule 29/Rule 85 requisitions for all or for any one particular patent office are not acceptable;
  • Any requested documents and the patent family member to which they pertain should be specifically defined in the requisition;
  • The requested documents or prosecution should be reasonably expected to exist. In other words, the examiner should have evidence that the document or patent application exists. It should be noted that the absence of a published patent application in a jurisdiction is not sufficient evidence to support a requisition;
  • The requisition should be directed as narrowly as possible;
  • The requisition should not be directed to documents or prosecution that are accessible to the examiner through the use of the CIPO Resource Centre, the relevant websites of the national patent offices, the global dossier or the CASE database; and
  • A requisition should not be routinely sent in cases where a non-laid open application is otherwise allowable.

He also indicated that the examiner paragraphs (PERMS) have been modified to focus on particular documents cited against a family member, translations of such a document and the particulars of conflict, opposition, re-examination and other such proceedings.

He concluded that in the event that a requisition is received that does not appear to be based upon reasonable grounds, a submission to the online feedback mechanism (OFM) would be appropriate.

J. Wilson pointed out that if the OFM is used to report an unreasonable requisition and the requisition is not answered, there is a risk of abandonment of the application for lack of response to the requisition.

JC Grégoire asked if, in the case of an unreasonable requisition, a request could be made to withdrawn the report and have it re-issued without the requisition under section 85 of the Patent Rules; this would avoid having an unaddressed requisition that could potentially lead to invalidation of the patent by the Court. S. Meunier responded that the criteria for withdrawing a report are now more strict, so he would have to look into whether this would be an acceptable reason for withdrawal and get back.

6.3 References to webpages and subsection 57(3) of the Patent Rules

IPIC raised again the issue of defects related to website citations in the patent description, specifically with reference to Wikipedia and other similarly reputable or stable websites. MOPOP 14.07.04 states that: "Examiners will object to the identification of a document by way of a URL where it is not clear that the URL refers to a reliable, publically available source that can reasonably be expected to ensure the information in question is of fixed content and will be more or less permanently retrievable". IPIC pointed out that Wikipedia is a reliable source that can be expected to ensure that the information in question is more or less fixed, and permanently retrievable. Changes made by editors are tracked; the edit history is available for any page. Additionally, Wikipedia is archived by the Internet Archive. IPIC also noted that the Commissioner relies on Wikipedia as a source of prior art and for common general knowledge (CGK) in Commissioner's Decisions – not necessarily citing to the page as it existed as of the relevant date.

IPIC accordingly asked what is the internal guidance given to examiners about Wikipedia, and if there are any "sanctioned" websites; and for those websites that are not considered to be sufficiently reliable, if the applicant could address the objection by submitting a printout of the webpage in a voluntary submission of art.

S. Meunier responded that the concerns raised in MOPOP are still current. While it can be conceded that Wikipedia is likely to remain present for the foreseeable future, the information in each entry is not fixed and, as such, is not helpful to the examiners and the public when assessing the disclosure of the invention. He also clarified that there are no sanctioned sites: it is incumbent on the examiner to determine for their particular field of technology what websites might satisfy the conditions laid out in MOPOP. With respect to accepting voluntary submissions of prior art, he advised that it is not the role of CIPO to act as a library for all references cited in an application.

He also pointed out that even if CIPO allowed for further references to internet sites, the Office would likely follow the standards laid out in WIPO Standard ST.14 (PDF version) which requires the date of the retrieval of an electronic document be included in any citation of an electronic document.

He added that the Office knows that documents are being published more and more electronically and sometimes even only in electronic format, and CIPO understands IPIC concerns with this situation, and so it was proposed to also bring this item before the internal practice committee. CIPO's position will be communicated at the next 2PC meeting.

7. Agent College Update

D. Milne provided an update on the College of Patent Agents and Trademark Agents, and in particular on the process of transferring responsibilities from CIPO to the College. Administrating the patent agent exam is of these responsibilities in the process of being transferred. ISED is currently working on supporting the transition period, and the time when the responsibilities will be transferred is getting close.

N. Tremblay added that ISED is working with the College to ease the transition, to ensure data security during the transfer, and also to transfer the knowledge and procedures for administering the patent agent and trademark agent exams. She confirmed that although COVID has impacted the exam schedule, there will be patent agent and trademark agent exams in 2021.

J. Wilson asked if the exam Boards were involved in the transition. N. Tremblay responded that the CIPO side of the Boards was involved.

LP Gravelle asked what was the timeline for the transfer of responsibilities to the College. D. Milne responded that there is no specific date yet, but that the general target is during spring. LP Gravelle asked if IPIC could do anything to help facilitate the process. D. Milne responded that IPIC has already been very helpful and supportive, and that nothing more is required on their end.

8. Administrative Policy

8.1 Due care reinstatement report

IPIC requested an update on any decision made by CIPO on requests for reinstatement subject to the due care standard, and an indication of how many requests have been received.

S. Vasudev responded that as of , no final determinations of due care have been made. The Office had approximately 18 pending requests for which a determination of whether due care was taken is required. Requests for reinstatement in which the reasons for the failure were not included are not considered to be pending determination. He indicated that the Office is processing requests carefully and acknowledges that service standards are not being met at this time, and plans on creating a committee to review requests regularly and as needed.

He also proposed to provide an update on the due care decisions as an recurring item on the agenda for upcoming meetings of the 2PC. J. Wilson responded that such an update would be appreciated.

J. Wilson asked if the decisions will be published in an easily accessible manner. S. Vasudev responded that this aspect is currently under consideration; the response letter will of course be part of the published documents of the individual case it relates to, but the Office is also considering whether there is an appropriate way to make the bulk of the decisions available to the public for easier review.

J. Wilson asked if there is/will be a particular status code associated with the due care cases. S. Vasudev responded that he did not believe there will be, but this will be taken into consideration as part of how to make the decisions more easily accessible.

J. Leuschner asked whether there will be an opportunity for reply in the cases where the decision is not favorable, for example in the form of a oral hearing. S. Vasudev responded that there will be an opportunity for review, but that the specific format of this review is not determined yet.

8.2 Substantive reasons to justify an extension of time (EOT)

IPIC indicated that they believe that CIPO understands their position on the amount of information required to obtain an EOT under subsection 3(1) of the Patent Rules, but that despite the clarifications published by CIPO, it is generally felt that recent decisions are not necessarily consistent. IPIC asked:

  • Could CIPO please provide more examples of suitable and unsuitable reasons?
  • Could CIPO please provide the guidance provided to analysts assessing the EOT requests?
  • Why must a supplemental communication be submitted before the expiry of the original time period (see the January 6 notice on EOTs)? We suggest that some informal period of time could be set for supplementary reasons, as long as the initial request and fee are received by the Commissioner before the original due date expires.

S. Vasudev provided the following general comments:

  • Subsection 3(1) of the Patent Rules requires that the Commissioner make a determination that the circumstances justify an EOT. The Rules do not intend for EOTs to be allowed solely on the basis that administrative requirements have been met.
  • It is CIPO's objective to reduce pendency. To that end, the EOT provision should be limited to situations where there is a genuine, valid reason for an EOT to be granted.
  • Any alleged inconsistency in Office decisions would be reduced by providing specific justifications for an EOT, with a minimum amount of detail necessary for the analyst to make an informed decision. A specific request with a minimum amount of detail is likely to be accepted.

With respect to the requested examples, S. Vasudev responded that CIPO's expectation is that the justification for the EOT request be specific to the application in question, and contain the minimum amount of detail necessary for the analyst processing the request to make an informed decision. There is no limit to the potential reasons that would be acceptable. Any specific reason that the applicant needs more time to provide instructions or to respond to the outstanding Office action is likely to be accepted as a valid justification. However, a generic statement lacking a specific reason, or specific information regarding the application at hand will likely be refused. It is the Office's expectation that the applicant have a genuine, specific reason for requesting an EOT, and that an EOT would not be requested simply for convenience. Accordingly, the analyst processing the request should be able to reasonably conclude, based on the information provided, that the applicant has a specific reason for requesting the EOT. The analyst should not feel that they are reading a generic statement which could be used interchangeably every time an EOT is requested.

S. Vasudev added that Patent Operations analysts have been instructed to grant the request so long as a specific reason is provided, and that a simple, generic statement that more time is required is insufficient. In cases where the COVID-19 pandemic is specified as the reason that an EOT is required, analysts have been instructed to grant the EOT if the request explains how the pandemic specifically impacted the application in question. A generic reference to the pandemic would not constitute an acceptable request if no further information was provided. He indicated that the instructions provided include the following:

  • The analyst reviews the justification to make sure that it explains why the required action could not be completed by the deadline and why an EOT is required.
  • The request must explain why the EOT is required. A specific reason must be given. As long as a specific reason is provided, the requirements are met.
  • If the request simply states that an EOT is required, but does not provide a specific reason, it does not meet the requirements.
  • If the request states that more time is needed to respond to the Office or that more time is needed to obtain instructions from an applicant etc., but does not specify why more time is needed, it does not meet the requirements.
  • No affidavit evidence is required.

He also indicated that the following instructions were provided to the analysts in a bulletin with respect to the requests specifically related to the COVID-19 pandemic:

  • If the request simply states that an EOT is required because of the pandemic, the requirements are not met. The request must be refused.
  • If the request is vague and general (ex. an EOT is required because of "complications related to the pandemic", or "more time is required due to difficulties caused by the pandemic", etc.), and does not mention any specific complication caused by the pandemic, the requirements are not met. The request must be refused.
  • As long as the request mentions a specific difficulty faced by the applicant(s) and/or patent agent that is related to the pandemic, the requirements are met. The request may be granted.
  • Specific difficulties related to the pandemic may include, but are not limited to, the following:
    • Illness or death related to the pandemic
    • Financial hardship related to the pandemic
    • Inability to travel or access resources due to the pandemic
    • Having to change patent agents because of the pandemic

With respect to IPIC's suggestion that some informal period of time could be set for supplementary reasons, S. Vasudev responses that subsection 3(1) of the Patent Rules states that the EOT must be applied for before the end of the time period in question. CIPO interprets this to mean that the entirety of the application for an EOT must be submitted before the expiry of the time period. This would include all of the information necessary for the Commissioner to make her determination. Therefore, CIPO is unfortunately unable to grant this request.

J. Wilson asked for more details on what is determined to be "specific" to an application. For example, if the agent has not yet received information on the prior art from the inventor, or if the foreign associate is advising that inventor comments have not yet been received: such reasons are applicable to a particular case, but could also likely apply to the majority of cases, so would these be considered to be "specific"? S. Vasudev responded that the fact that a particular reason can apply to many cases does not negate the fact that it can be specific to a particular case. The requester should be as specific as they can, so that the reason provided relates to the particular application, even if it could also apply to others.

S. Vasudev also indicated that there is a small group of analysts that deal with the requests that are more challenging to assess, and that the Office is also keeping track of the reasons that were considered to be sufficient, in order to ensure consistency in the responses.

J. Wilson expressed concerns with respect to the apparent link made between the Office's objective to reduce pendency and consideration of the requests for EOTs. S. Vasudev clarified that this objective is not related to how the Commissioner's discretion is applied, just to the fact that it is being applied. In other words, the deadline for response to an examiner's report which has now been reduced to 4 months in an effort to reduce pendency should not be automatically extendible back to 6 months.

J. Wilson indicated that before the implementation of the Patent Law Treaty (PLT), the template type of requests for EOT were accepted, and now this is no longer the case, even though the language of the Patent Rules with respect to EOTs is the same; she asked what changed. S. Vasudev responded that the actions of the Office in that matter were not commensurate with what was intended in the Patent Rules before, and that this has since been corrected.

J. Wilson asked if, once patent term extension is in force, it would be possible to consider changes to the Patent Rules so that granting of an EOT is no longer discretionary, since the EOT will be balanced by a reduction of patent term extension – in other words, to apply an EOT model similar to that of the USPTO. LP Gravelle further suggested that if the Office is concerned about use of EOTs if discretion is removed, the fee for obtaining an EOT could be increased as a deterrent. S. Vasudev responded that changes are always possible and that this could be considered in the future; these comments should be submitted the next time CIPO calls for comments on future amendments to the Patent Rules.

J. Wilson and LP Gravelle both remarked that there is also a concern about putting too much information on a request for EOT since such statements, for example indicating that more time is required to consider art that is particularly relevant, can be used later in Court to impact validity of the patent, depending on the application of section 53.1 of the Patent Act.

LP Gravelle asked for confirmation that the quality of the reason provided for the EOT is not evaluated. S. Vasudev confirmed that the Office is not evaluating whether the reason is good or not, merely that it is specific to the application for which the EOT is being requested.

8.3 Refunds for unusable vs rejected EOTs

IPIC remarked that the form letter rejecting a request for refund for a (justifiably) refused EOT is confusing. It appears that the analysts, when they complete the form checklist, are indicating that the fee is not refundable under section 139 of the Patent Rules (which is correct), but also that fee constitutes an "overpayment". Of course an overpayment is refundable under paragraph 139(h) of the Patent Rules, so this is inherently contradictory. IPIC suggested that proper use of the checklist be reviewed, or that the form be revised.

S. Vasudev agreed that there appeared to be a possible point of confusion within the option structure of the letter, where the third overpayment option seemed to be redundant to the second option that indicates the overall refund provision in which overpayment already resides. The third overpayment option was designed to cover non-prescribed or unusable fee situations, however, in instances where the analyst selected "yes" on one and "no" on the other, an apparent contradiction was shown. He indicated that the letter was simplified this week to remove the third redundant option, and as such the letters sent should now be formatted as per this simplified version. Prior to implementation of the new letter format, clarifying work instructions had also been sent to Operations and Examination Support to use the "N/A" option on the third line in order to neutralize any possible contradiction, if the second option had already been suggested.

8.4 Evidence required when a transferee records a transfer

IPIC had previously asked to revisit the evidence required from transferees to record a transfer in the 2PC meeting of  (see item 4.2). They requested an update on a consultation on that issue, and asked it would be included as part of the forthcoming MOPOP consultation.

S. Vasudev responded that review of the evidence required under section 49(2) and (3) of the Patent Act has not yet started, and that as mentioned in the 2PC meeting of , the Office welcomes any written submission from IPIC outlining options for evidentiary requirements.

J. Wilson asked for the date of the related MOPOP consultation. S. Vasudev responded that there was no date set at the moment; the Practice Notice on Patentable Subject Matter following the Choueifaty Federal Court decision delayed other MOPOP revisions. He suggested that comments from IPIC outlining options for evidentiary requirements might speed up the process.

9. Client Services

9.1 "Subject to change" 2022 fees

IPIC asked if it was really necessary for CIPO to indicate the 2022 fees, particularly this early in 2021, in the fee schedule, and asked if CIPO was required by law to post the future fees. Considering that the 2022 fees are "subject to change", and considering an applicant/patentee could choose to prepay those fees at today's rates, it seems pointless to post these fees until the amounts can be confirmed. IPIC also added that including the 2022 fees also makes the fee list difficult to read.

C. Piché responded that the fees have been determined for 2022, and that as such CIPO is only posting fees which have been confirmed. The Office feels that this would provide some clarity to the applicants.

J. Wilson asked why there is a note that "all fee amounts for 2022 are subject to change" if these amounts have already been determined. S. Vasudev responded that the 2022 fees provided are based on the annual increase, and should be as indicated, but that all fees are subject to change in principle, for example due to legislative changes. J. Wilson suggested that the note could make it clearer that the 2022 fees are calculated and what could be the reasons for potential changes. S. Vasudev responded that he would look into this issue and get back.

9.2 Response from OFM to missing documents

J. Wilson indicated there seemed to be an additional burden on the OFM staff responding to feedback about missing documents. She noted that the delays to receive answers seem to be longer than before, and that the requests seem to be less well understood. C. Piché responded that in the majority of cases a reply is sent within one or two days, but noted that in some cases it took 7 calendar days before a response was sent – these statistics include error correction requests which seem to be taking longer. She will look into this issue.

J. Wilson indicated that there was one case where a response was obtained quickly, but the request was misunderstood, so she responded to clarify and provide more information, and was told that a new OFM request should be submitted. She asked if this was proper procedure. C. Piché responded that it was not.

J. Leuschner experienced several instances where a document his firm was supposed to have received by email from the Office was not received, for example a late fee notice, and they used the OFM to enquire about the status of the document. The OFM answer was that the document was sent since Techsource indicated that the document had been sent. They did not check the email sent box to confirm that the document was actually sent. He is aware of instances where an Operations employee contacted by phone checked the sent box, and the check revealed that a document had not been sent, even though the status in Techsource stated that it had. As such, the reliance of OFM on only the Techsource status is not sufficient to establish that a document was sent. He suggested that the OFM clerk should also check the sent box, and provide proof of the document having been sent together with a copy of the document when responding that a document has been sent.

C. Piché responded that the Office noticed that there were issues with the sent box in the past, which should be fixed now. The processes have been updated to ensure that the documents that are supposed to be sent have been sent, that the emails that bounced back are resent, etc., and a daily report is produced to catch sending errors. She will look into OFM doing a check beyond the status of Techsource when determining if email correspondence has been sent, and into the possibility of OFM providing proof of the document having been sent together with a copy of the document when responding that a document has been sent.

J. Leuschner asked in the meantime how to address the issue where the only information available is the OFM response that Techsource indicates that the document has been sent, considering that it is highly unlikely that the document was somehow "lost in the internet". J. Wilson suggested an affidavit that the inbox of the firm was checked and that the document was not there.

10. Roundtable, Next meeting and closing remarks

No items were brought forward during the round table.

The next Patent Practice Committee meeting will take place on , at 13:00, likely via videoconference – to be confirmed.

The meeting adjourned at 3:20 PM.

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