Tuesday, June 8, 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, Shauna Paul, Patricia Folkins
Guests: Patrick Cyr, Doug Milne, Jeffrey Orser, Jeremy McLean
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 2PC meeting of February 23, 2021 are available online and are considered approved; IPIC will contact CIPO if modifications are required.
3. CIPO Updates
3.1 IT Modernization (ITM)
V. Ethier indicates that ITM is well under way. The Office is working with two consultants and one sub-consultant, using the agile development model. Several work packages are being developed at the same time, both for internal systems ("back end") and client-facing systems ("front end"). The Patent Branch (PB) is the business owner and informed client of this initiative; 22 people from PB work part of full time on ITM (directors, section heads, operation analysts, examiners, etc.). The development is being done taking into consideration what agents have indicated as being irritants and missing pieces of the existing systems, and also taking into consideration what is being done in other jurisdictions and business transformation initiatives. Some patent agents are also directly involved.
J. Wilson asked for examples of deliverables, so as to have an idea of the scope of ITM. V. Ethier responded that communications will be sent in the coming months with more details with respect to the work packages and their sequence, and that this sequence could be discussed in more details at the next 2PC meeting.
J. Wilson pointed out that it is important for current systems to be reliable, so even if improvements of the current systems is not a priority in light of those being replaced during ITM, there still needs to be work done to ensure reliability in the interim.
3.2 Due Care
S. Vasudev indicated that the Office is still adjusting the process for the cases of due care reinstatement, and that the volume of these requests is greater than expected. A close eye is being kept on relevant dates. The first decisions should go out this week.
J. Wilson asked if the decisions will be easily accessible. S. Vasudev responded that a list should be available online. The Office is also considering the possibility of adding to CIPO's website information on the consequences of not making a payment when due care is required, as well as additional means of providing this information, for example in a webinar format. There is a feeling from the requests that are being processed that there may be some confusion, particularly for non-represented applicants. He indicated that the due care standard applies to the entire spectrum of communication, for example between the Office and the agent, between the agent and the foreign agent, and between the foreign agent and the applicant.
J. Wilson asked if trends could be seen with respect to the reasons provided in the requests. S. Vasudev responded that the involvement of annuity services and the designated days are themes that are recurrent.
J. Leuschner asked what happens to intermediate due dates when awaiting for a due date request to be treated; he cited an example where he was unable to pay a 2021 maintenance fee because the due care reinstatement relating to the 2020 maintenance fee was still pending. S. Vasudev responded that the applicant should be able to make submissions on other matters while waiting for the decision, and that he will look into this issue.
J. Leuschner wondered where the Office will position itself in the wide possible range of requirements to establish due care. S. Vasudev responded that the initial refusals to be sent shortly should not be solely interpreted as an indication of the position of the Office within that range but as an indication of the level of evidence being required. Current submissions seem to indicate that there is a need to educate the clients as to the requirements, as the refusals are mostly related to insufficient arguments or information; the decisions are worded to include direction as to what information may be missing in the submission that might convince the Commissioner that the threshold for due care has been met.
3.3 Service Fees Act (SFA)
C. Piché reminded the attendees that as per SFA, the clients are now eligible to receive a percentage of the paid fee if the Office does not meet the service standard associated with the service that was paid for. The Office has posted information on their website with respect to SFA. She indicated that if a service standard is not met by fault of the Office, a correspondence to that effect will be sent to the client, providing a deadline of 1 month to refuse the fee remission. If no response is received after 1 month, the remission will be issued. She also added that there were no missed service standards in April.
J. Wilson asked if this correspondence will be added to the Canadian Patent Database (CPD). S. Vasudev responded that yes, the SFA remission letter is stored on the file and can be viewed on the CPD.
3.4 Regional Mailrooms
D. Milne announced that the Office will cease services in the regional mailrooms (Ottawa, Vancouver, Montreal, Edmonton, Toronto) in July. These offices have been closed to the public since March 2020 because of the pandemic. Online correspondence is always preferred, but if clients wish to continue paper correspondence, they may send registered mail to the Gatineau Office. The Office is currently working on enabling bulk correspondence online.
J. Wilson indicated that it is possible that some agents have adopted e-filing as a necessity during the pandemic but would like to be able to go back to paper filings at regional offices when it becomes possible again. J. Leuschner added that paper filings in regional offices may be useful at least in particular circumstances. S. Paul indicated that she is still using paper submissions, and indicated concern over the fact that the closing of the regional offices is coming very soon.
D. Milne invited IPIC to provide comments from agents that plan to go back to paper submissions after the pandemic restrictions are lifted, including feedback on how they would like this issue to be handled, and on the particular circumstances, if any, where paper submissions are desired. D. Milne will also reach out to S. Paul (and other members as required) for discussions on how to facilitate the transition.
3.5 Post-dated Cheques
D. Milne indicated that the Office stopped accepting post-dated cheques in February of 2021. All post-dated cheques are returned with a note explaining the change. Receipt of post-dated cheque however does not happen very often.
4. Client Services – Online Feedback Mechanism (OFM)
4.1 Errors and miscommunications
IPIC pointed out that generally, agents seem to be experiencing a higher rate of errors and miscommunications, and increased frustration with OFM responses. Those agents who "know" analyst names and numbers are resorting to direct communication to resolve their problems. They asked for clarifications on how OFM is handled, and on the trends in errors reported and their causes. For example, IPIC are concerned about the defect rates in both incoming and outgoing correspondence. Some agents have been told that the processing of incoming responses is more rushed, and have found that sometimes their submissions are overlooked and not properly processed by the Office.
C. Piché responded that the quality team has put together a report on OFM for the March 2020- March 2021 fiscal year. From that report, it can be seen that the increase in errors is a combination of circumstances:
- Moving incoming and outgoing correspondence to digital
- The 6 month deadline following implementation of the Patent Law Treaty (PLT) arrived in May
- Designated days causing many notices to come out at the same time (around 10,000 notices in one day)
She added that the rate of errors may be a reflection of process changes needed to respond to the COVID-19 pandemic. For a period of time in 2020, in order to continue processing applications with a workforce impacted by the pandemic, the Office suspended use of a quality control (QC) process for some documents, and this likely had a role in the increase of errors. The quality control process is now back in use.
With respect to the OFM system, C. Piché responded that the Office is implementing an update to the internal routing system, including a tiered approach to the queries. When a client selects an option with the OFM system, the issue is routed to a triage person within Patents. For Operational issues, that is the Manager of Operations. The triage person does a review of the issue and, if appropriate, assigns the issue to the appropriate team for response. The appropriate team member reviews the issue and responds to the client. Periodic quality reports are also provided.
She added that the internal routing system of the OFM is being updated to provide more granularity with respect to the issues. The monitoring system has been updated to allow all Team leaders to see all OFM interactions, so that they will be able to monitor incoming and outgoing interactions, and to ensure that updates are provided to clients.
J. Wilson suggested implementation of a ranking system of the response received, which could then be used for evaluation of the Office members responsible for the responses.
4.2 Follow-ups
IPIC asked whether follow-ups to initial OFM responses are tracked, since when agents are attempting to follow-up, they are told to re-initiate contact instead.
C. Piché responded that yes, OFM responses are now tracked. However, the OFM system allows to send emails but not to receive subsequent responses from clients. This is a systems issue that the Office is not able to update at this time. In cases where more in-depth investigation is needed, employees are requested to send updates to clients, either via an email from the OFM system (unfortunately clients will not be able to participate in a dialogue), or an email from a member of the Office when more information is sought from the client. Going forward, employees have been asked to close OFM issues only after the investigation is complete.
J. Wilson asked what the agents could do if they want to follow up on a particular issue. C. Piché responded that the goal is to avoid creating a new OFM for a same issue. The format of the email from a member of the Office is not finalized yet, but she will verify if the contact information for someone will be included. J. Wilson suggested the creation of a generic email address for status inquiries. S. Vasudev indicated that this would be taken into consideration.
4.3 More granular options
IPIC indicated that it would be useful if the OFM form provided more granular options for specifying the type of service. For example, users who want to submit OFM about a response to an examiner's report that does not appear on the CPD may not know whether to select "Examination Process", "Lost/Misdirected Mail", or "Publications", or whether they will get a different answer if they select one option over the other.
C. Piché responded that the external interface for clients is integrated across all CIPO (Patent Branch, Patent Appeal Board, Trademarks & Industrial Design and Trademarks Opposition Board, Service to Business Branch). As a result, the external interface will stay the same for the time being. She however indicated that as previously discussed, the patent-specific internal routing of the OFM issues is being updated. The goal is to assign the issue internally to the correct team more quickly and to better characterize client pain points. The update to the internal routing system means that, regardless of which option the client selects in the OFM interface, the Office should route the issue to the correct employee.
J. Wilson asked if this meant that the Office does not really rely on the category of submission selected in the OFM form. C. Piché responded that issues related to status update go to the Client Service Center (CSC), but that other patent options are re-routed internally.
5. Digital Services
5.1 Full file histories (including reprints)
IPIC reiterated that it is important that a complete file history, including host correspondence, be made available for download from the CIPO website.
C. Piché responded that the Office is aware of this particular pain-point with regard to the CPD as it came out during the broad user research done for ITM with patent agents. The organization is currently in the planning cycle for desired IT investments for this fiscal year and upgrades to the CPD are being proposed (including having all host correspondence online). While most of the IT capacity is allocated to ITM, upgrading the CPD is a priority. The capability to address this issue will depend on CIPO's priorities in the upcoming budget.
5.2 Status of new application e-filing interface and transmission IDs
IPIC asked for a report on the status of various technical issues with the e-filing interface. They added that it is important that the e-filing interface be perceived as reliable, and indicated that this is not something that can be addressed with IT modernization as it should be addressed sooner. They suggested provision of proof documents for download, similar to the industrial design e-filing system, and/or the computation of hashes of the uploaded documents for display on a confirmation webpage, which the user can print and save.
C. Piché responded that the following issues where fixed May 13, 2021:
- Transmission ID received by client not matching transmission ID received by CIPO
- Statement of entitlement indication dropped upon retrieval from "work in progress"
- Agent confirm email lost upon reload (work in progress and html upload)
However, she indicated that the issue of attachments retrieving incorrectly when an application draft is retrieved from "work in progress" is still ongoing. It has been found that when a draft application with stored attachments was retrieved from work in progress, the attachments may not be restored correctly. One attachment may be omitted while another one is attached twice. If not corrected by the user before submission, it would result in submission of an application missing an application part. This issue seems to appear either intermittently or only in response to certain conditions. She asked that clients could contact the PB IT team directly should they see this happen (ic.cipopbit.ic@canada.ca)
Regarding the suggestion for proof documents for download, she indicated that this was being looking into.
J. Wilson asked if the fixed problem with respect to the transmission ID also fixed the related problem with the time stamp. Before, the temporary transmission ID and time stamp generated when previewing a file were preserved. With respect to the time stamp, the user saw the time stamp of preview, so in theory the file could have a time stamp showing a date different from the filing date. She asked if the time stamp was now correctly reflecting the time of filing. C. Piché responded that she would check and get back.
5.3 Payment of next maintenance fee with a divisional filing
IPIC indicated that the new application interface only lists catch-up maintenance fees for a divisional filing and not upcoming maintenance fees, and that this is always a problem when the next maintenance fee falls due shortly after the presentation date. They added that some submit instruction to pay the next maintenance fee using a deposit account in an accompanying letter, but that this attempt at payment sometimes fail: sometimes the instruction is ignored, and sometimes the fee is marked as paid but not actually debited from the deposit account. They asked for the next maintenance fee to be added to the drop-down list of fees to be paid.
C. Piché responded that this pain-point has already been captured during the patent agent user research and will be implemented in the ITM. At this point the Office recommends that the user pay all indicated fees for the divisional and subsequently use general correspondence to pay any further fees. She added that the fees page within the e-filing application will be updated with these instructions for improved clarity.
5.4 Adding maintenance fee due date in the MF payment portal shopping cart
IPIC asked if it would be possible to add the maintenance fee due date when the shopping cart is displayed just prior to payment, as this would be helpful as a means of verification.
C. Piché responded that the Office did not have this IT service improvement characterized in the prioritized ITM backlog and that it had not captured as a desired feature during the patent agent user research. She indicated that it would be helpful to understand the importance of this feature – essential, very important, nice to have – and that this desired improvement will be added to the backlog of service improvements for the maintenance fee payment portal and prioritized accordingly. J-C. Grégoire characterized this feature as "nice to have".
5.5 Updating CPD to indicate that a patent is deemed expired
IPIC asked clarifications as to when the "Admin Status" tab of the CPD is updated to indicate the patent has lapsed, after a maintenance fee goes unpaid. They indicated that some patentees wish to have the expired status updated as soon as possible, i.e., after the late fee deadline has passed. They assume that the update is done after the period for requesting reversal of the deemed expiry and asked that, if this is the case, if it would be possible for the patentee to hasten this status change by submitting a letter confirming the expiry was intentional.
C. Piché responded that the Office is aware of this particular pain-point with regard to the CPD as it came out during the broad user research done for ITM with patent agents. The organization is currently in the planning cycle for desired IT investments for this fiscal year and upgrades to the CPD are being proposed (including showing the current/actual status). While most of the IT capacity is allocated to ITM, upgrading the CPD is a priority.
With respect to the policy on when the status is updated as expired, S. Vasudev asked IPIC what would be most important for them.
J. Leuschner responded that it would make sense if the CPD is updated 6 months after the missed deadline, i.e. after the case can be reinstated without a due care showing. The use of a status like "deemed expired" would be a proper reflection of the status. J. Wilson added that a warning could be included to indicate that this could be reversed, with an explanation of what "deemed expired" means.
S. Paul added that the term "expired" should be reserved for the period after the end of the term, and that a different term should be used when the term is cut short, for example for lack of payment of a maintenance fee. She suggested "lapsed" for the status after a maintenance fee is not paid.
J. Leuschner added that it is important to understand what is the meaning of the labels being used and how they are applied. J. Wilson indicated that the CIPO website includes a page providing such an explanation.
S. Vasudev indicated that the Office will look into this status issue.
5.6 Illegible characters
IPIC noted that it appears that somebody who is processing incoming correspondence does not have common font sets installed on their computer, resulting in perfectly legible correspondence being mangled on CPD. An example can be seen at: https://brevets-patents.ic.gc.ca/opic-cipo/cpd/eng/patent/2874061/images.html?page=25&frenchDocType=Poursuite-Amendment&englishDocType=Prosecution-Amendment&modificationDate=20201211&scale=25&rotation=0&type=number_search&objectName=A1001001A21A29A93943G15159&numPages=27
IPIC has encountered this problem before, and found that it seemed to do with decorated text (bold, underlined) or something similar; they indicated that the missing text of the above example is decorated, and not a special font – for example, not Greek letters, since those appear correctly elsewhere in the same document. They also added that this problem does not seem to occur upon submission of a PDF having an embedded full font set.
C. Piché responded that the Office will be looking into this issue.
5.7 Inconsistent availability of protests in the CPD
IPIC's understanding is that protest letters are supposed to be made available online, but not the prior art submitted with the letters. They pointed out that the form letters that were sent to applicants prior to October 30, 2019 were clear on this policy, but that the text of the new notices is not. Some agents have found that protest letters are available online, and other agents have found that they are not, and they are being told by Information Officers that they need to be ordered for $10.
C. Piché asked if IPIC could suggest wording that would make the form letters clearer.
Regarding the online availability of the protest letters, C. Piché responded that the Office will review the process for handling these documents with the employees. She also asked that IPIC provide application numbers through OFM under Patents and Examination Process so that the Office can investigate what has occurred for any applications that appear to have been processed incorrectly.
S. Vasudev confirmed that protest letters should be available online, but not the prior art submitted with the letters.
6. Operations
6.1 Update on erroneous letters of deemed patent expiry
IPIC asked if the Office had started sending out correspondence to correct the notices of deemed expiry that were sent earlier this year without a prior late fee notice, and indicated that as of mid-May agents did not appear to have received any correspondence to that effect.
C. Piché responded that the omission of late fee notices appears to be related to issues with outgoing email correspondence. The Office is continuing to investigate this situation to identify correspondence that was not sent to clients and to correct affected patents. Also, the email servers will be changed in the coming weeks. With respect to notices to correct the notices of deemed expiry, she indicated that content for these notices was reviewed, but that she believes they have not yet been seen. She will follow-up.
6.2 Unsatisfactory responses to OFM
IPIC reported that multiple agents have attempted to engage with OFM, only to be told that they could not engage in a dialog to resolve a problem. For example, an agent submits a complaint or query; the first OFM response demonstrates that the responder did not answer the question; the agent attempts to respond by email to clarify the question; and a second OFM response advises the agent that they are not permitted to respond to an OFM response with another question, and that they must submit their question by mail, fax, General Correspondence, or a new OFM request.
IPIC pointed out that in a "normal" support process, when a ticket is opened it remains opened until the customer's problem is resolved, and there is dialog between the customer and the support personnel, and as such asked why are CIPO customers required to submit a new ticket when attempting to continue dialogue on an existing ticket. They asked:
- Who is responding to OFM queries?
- Is it possible to have the name and telephone number of the person providing the OFM response so that the agent can contact them directly to make any clarifications that are needed?
The responses to these questions were addressed at item 4 above.
6.3 Response time in fixing operation/policy issues
IPIC reported another issue related to the problems with the e-filing interface and OFM: agents are particularly frustrated when they do not receive timely responses to their requests (whether by letter or OFM) concerning filing errors. When a filing date or divisional status is involved, a lack of responsiveness can even result in an application for judicial review because the agent believes action must be taken to preserve the applicant's rights.
IPIC suggested a tighter service standard for responding to requests to fix a filing/national phase entry/divisional submission problem. If a problem is referred to Policy for investigation or if the request is expected to take longer than a couple of weeks to investigate, the applicant should receive some notification that their request is being investigated with an expected timeline—and a name and phone number to call for an update.
C. Piché responded that the Office is improving monitoring of responses to clients by providing more tools for employees. This is allowing team leaders to see the progress on issues by monitoring turnaround times for resolution. Improved monitoring is allowing identification of some inconsistencies in responses and to implement additional training and/or tools where needed. The additional monitoring is also ensuring that periodic updates are provided.
With respect to the turnaround time for resolving issues, she indicated that IT and policy issues can take weeks or months to resolve. The Office deals with these issues as quickly as possible. The option to send an intermediary email to the client as the issue is being processed was put in place to be able to focus on the quality of the responses.
6.4 Workflow for incorrect WIPO Digital Access Service (DAS) codes
IPIC indicated that the Office's workflow for incorrect DAS codes, which does not include sending a confirmatory courtesy letter that the DAS code was verified, is a problem, despite the possible workaround for the agents to check WIPO DAS themselves to verify that the Office has accessed the priority document.
IPIC pointed out that the existence of the courtesy letter indicating that there is a problem retrieving the priority document is, essentially, a statement that the applicant has not complied with subsection 74(1) of the Patent Rules. Even if a notice under subsection 74(4) of the Patent Rules is not sent, someone reviewing the file history years in the future may conclude that subsection 74(1) of the Patent Rules was never complied with, despite the lack of a notice. It has also been found that the DAS codes are being handled inconsistently by the Office—for example, an analyst confirming to an applicant that the submitted DAS code is "fine", even though WIPO DAS shows that the Office had not accessed the priority document. Also, it is unknown if access information in WIPO DAS will be available in the future to confirm that the Office accessed the priority document.
IPIC reiterated that Applicants need positive evidence in the Canadian file history that is readily apparent to the public that the Commissioner agreed that any alleged error in the DAS code was rectified, and indicated that a confirmatory letter in the file history would be ideal.
C. Piché asked for clarification: is IPIC requesting to receive a curtesy letter confirming that the DAS was correct, even in cases where there is no prior correspondence indicating that the DAS code was incorrect? J. Wilson responded no, but confirmation that the error in the DAS code was rectified should be sent when a curtesy letter was previously sent indicating that there was a problem retrieving the priority document – and not only in situations where a notice under subsection 74(4) of the Patent Rules has been sent. C. Piché responded that the Office will investigate the feasibility of adding a courtesy letter confirming access to the priority document after correspondence indicating that there was a problem retrieving the priority document was sent. She also added that the request to capture whether the DAS code was acceptable has been integrated in ITM.
6.5 Retrieval of Chinese priority applications through WIPO DAS
IPIC pointed out that there seems to be a problem with document access of Chinese priority applications; when the Office tries to access the Chinese application, they have to wait for so long from the depositing office to provide the application that the Office gives up and sends a notice under subsection 74(4) of the Patent Rules to the applicant. DAS indicates that CIPO is waiting for a response from the depositing office, and it is unclear whether the fault lies with the Chinese associate not properly making the application available, with the China National Intellectual Property Administration (CNIPA), or with the Office. They asked if the Office could shed any light on this issue.
C. Piché responded that in January, DAS support informed the Office of some issues with retrieval of Chinese applications. To our knowledge, the issue was a broken link with the CNIPA. The issue was reportedly resolved within a few weeks.
6.6 Processing of "unscannable items"
IPIC asked if the Office's new process for electronic filings means that applicants will see an improvement in the quality of drawings published by the Office, and if there any plans to update the "unscannable items" practice. IPIC noted that it seems to be possible to include colour PDFs in CPD, and asked if this applied to Techsource as well. They asked:
- Can CIPO now preserve exactly the same PDF that was submitted and use those as the published drawings, or, at a minimum, convert the PDFs to preserve as much resolution as possible?
- Can CIPO now retain a copy of the original PDFs that are filed and make them available as additional information?
C. Piché responded that for the time being, the Office is maintaining the current processing of documents. However, the request to maintain quality of submitted drawings has been integrated in ITM.
6.7 Transitional "re-allowance" letters
IPIC requested, for applications allowed before October 30, 2019, a confirmation that the Office will always send letters advising that the application was allowed again after reinstatement and examination, so that the applicant has sufficient warning to file divisional applications. They indicated that they would prefer a month's notice.
S. Vasudev responded that for applications that have fallen into abandonment for failure to address a notice of allowance which was sent on or before October 29, 2019, the Office will continue the practice of sending a notification letter of reallowance after reinstatement on those applications. This practice was established under the former Patent Rules and is provided for under the transitional section 78.52 of the Patent Act. The practice will conclude when the last possible eligible case that could be reinstated on August 31, 2021 is then subsequently reallowed.
With respect of a defined time frame in order to provide sufficient warning to file a divisional, he added that the client service standard lists that CIPO will send an acknowledgement of reinstatement of the patent application within 1 month of receipt of a compliant request and payment of the prescribed fee. Following the reinstatement, the application would be returned to examination and then re-allowed. Operational and examination times may vary and the maximum times under the published service and performance standards should not be taken as a guideline. Finally, upon the date of re-allowance, the letter of notification of reallowance will be sent and a grant date will be established in the Office's systems. The grant date is given per an automated schedule of technical preparation of the patent and is presently set at 6 weeks from the next Tuesday beginning on the date of re-allowance.
6.8 Statements of entitlement
IPIC asked if the Office could confirm whether a declaration of legal representative (as phrased under the old Patent Rules) is acceptable as a statement of entitlement under section 54 of the current Patent Rules. If this is the case it would be helpful if the Manual of Patent Office Practice (MOPOP) were updated to indicate this is acceptable.
S. Vasudev responded that the Office does not object to the submission of a statement that the applicant is the legal representative of the inventor under paragraph 54(2)(a) of the Patent Rules. The Office does not intend to modify MOPOP in this regard as MOPOP clearly indicates what is set out in the Patent Rules. If a Notice of Compliance is sent by the Office after a declaration of representative is received, the Office will, if notified, withdraw the Notice.
6.9 Telephone log
IPIC asked: Does the Office maintains a log of telephone calls (incoming/outgoing)? What information is recorded? How can this information be accessed for a given application/patent?
C. Piché responded that the CSC maintains a Client Contact Database for phone calls.
She added that the Office maintains a log in excel format of incoming telephone calls for several of the Operations teams. Information that is recorded includes the name, phone number, file number, and a few words about what the call was about. The information is used to capture that a call came in to the general phone line and to make sure calls are returned. This information is not easily accessed which is why the Office is trying to transition away from phone calls toward the OFM, in preparation for a transition to new systems when they become available.
6.10 PCT regular mail sent to wrong agent
IPIC reported that there have been some examples of PCT International mailing the wrong packages to the wrong agents.
C. Piché responded that this was a manual processing error, and that employees were reminded of the importance of attention to details. She added that the Office hopes that the use of Canada Post e-post will prevent this issue in the future.
7. Examination
7.1 Citation of webpages in reports
IPIC indicated that occasionally, examiners will cite webpages as prior art. Leaving aside their reliability as prior art references, sometimes it is difficult to locate the reference because the examiner did not provide a proper hyperlink. IPIC believes that if the examiners are to be permitted to cite references of this nature, they require training to ensure they are providing enough information to the applicant to be able to locate the same document. The following examples were provided: 2943197, Report dated April 29, 2021; 2897832, report dated May 3, 202.
S. Meunier responded that examiners have been trained to provide sufficient information to allow clients to identify and reach the documents cited, including when webpages are cited. He added that the citation of websites is sometimes necessary for information that may not have a more formal publication, particularly in arts that are not well represented by such publications. This does not prevent difficulties arising from e.g. clerical errors or broken links. In such cases, he indicated that the client should reach out to the examiner for clarification. With respect to the first example ('197), the provided website in the report had moved or been removed since the report was drafted. However, through the use of the Wayback machine it should be possible to see what the website contained before it was removed. With respect to the second example ('832), the website citation contained an inadvertent space in the address; once the space was removed the address functioned. Both of these problems could have been solved through contacting the examiner.
S. Meunier added that earlier today, section heads were asked to remind their examiners to ensure any cited website was properly identified, for example by making the address into an actual link in the report and testing it to confirm that it works.
7.2 Citation of webpages in applications and Order of drawings
IPIC asked for an update on the following outstanding issues: the citation of webpages in application descriptions and drawings presented out of order.
S. Meunier responded that there is no decision yet with respect to these two issues. The Office has been overloaded on getting the public consultation on the Practice Notice ready, and as such there has not been enough time to move these issues forward. Position papers need to be prepared and brought to the internal practice committee. This should happen before the next 2PC meeting.
7.3 Examiner interviews by Teams or videoconferencing
IPIC indicated that agents have had positive experiences with videoconferences with examiners of other patent offices, and that it is also very helpful to be able to share screens and email documents to ensure that all participants in an interview are looking at the same thing. They asked if the Office could institute a policy for videoconferences and email communications.
S. Meunier responded that examiners have the discretion to perform videoconferences using the department-approved tool of MS Teams. The use of this tool will depend on the examiner and their particular situation. It could be a substitute to in-person interviews and in certain cases much more useful than a phone call, as screens can be shared so that all participants on the videoconference are looking at the same document.
He added that as discussed in previous 2PC meetings, the emailing of documents to examiners is something that cannot be currently supported because CIPO is under an obligation to store all such communications to the prosecution record. The Office however cannot prevent clients from submitting any document through the regular correspondence pathways to be able to put them in front of the examiner.
7.4 Double patenting
IPIC asked for clarifications on the approach taken by examiners to potential overlap (provisional double-patenting) during examination, in the case where there are two (or more) co-pending applications. They asked:
- Is it correct that examiners are to wait until a patent issues before raising overlap?
- What applications does an examiner review when they commence examination?
- For example, is the inventor search or First-to-File (FTF) search expected to catch any previously-filed, co-pending applications, and if so, will the examiner consider them even if examination has not been requested in those other cases?
- Is any subsequent search done to look for later filings by the same inventors/applicants?
- Does the examiner proactively consider PCT applications that have not yet entered Canada with the same inventors/applicants?
- At what points during examination is an examiner likely to be able to identify overlap, besides the initial search?
- Do examiners conduct a further search or review at the approval stage for potential overlap issues—or could they?
S. Meunier responded that double-patenting (whether same invention or obviousness-type) is only a defect in an application once there is a patent. Any potential double-patenting between two co-pending applications is not a defect. Therefore a defect of double-patenting will only be identified in an examiner's report once there is a patent issued.
He added that as per section 18.06.03 of the MOPOP entitled 'Co-pending applications': "Where two applications belonging to the same applicant define inventions that are not patentably distinct from one another, the examiner will inform the applicant that a potential double-patenting issue exists. Preferably, this is done in reports on both applications (where a report is warranted), in order to ensure the applicant is fully aware of the potential problem." It does not matter if examination was requested or not on the co-pending application found; the potential double patenting will be identified in the examined application. Where there are no defects in an application, the application will be allowed even if there is a case of potential double-patenting: the Office has no authority to issue an examiner's report solely on the basis of something that is not a defect.
With respect to searches, S. Meunier responded that the conditions on searches and the type of search differ depending on many variables: searches can be deferred for a number of reasons for the first report and there are top-up searches that can occur later in examination. In terms of generalities:
- For every application that proceeds to allowance, a FTF search will be performed at least once.
- A FTF search is required to be performed at allowance except when any previous FTF searches were performed late enough to catch late-entering PCT national applications (i.e. if the FTF search was performed after 45.5 months from the filing date).
- There is no necessity for examiners to search for subsequent applications, though the FTF search parameters cover co-pending applications filed up to a year after the filing date of the application under examination.
- Examiners do not proactively consider PCT applications that have not entered national phase for any potential double-patenting issues.
He added that potential or actual double-patenting could be identified at any point during examination, and that this could depend on when a search is performed, the presence of relevant information in foreign prosecution, or the work of another examiner working on a co-pending application. The search record at the end of each report should give an indication of all the performed searches.
8. New Practice – Subject Matter
IPIC members shared their first impression of the recent practice on Patentable Subject-Matter under the Patent Act (https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04860.html). Discussed topics included the impact of the practice, recent Commissioner's decisions (CD), how examiners apply the practice, computer-implemented inventions, the role of purposive construction, and physicality of elements within claims.
J. McLean informed IPIC that the Office is currently revising multiple chapters of the MOPOP to integrate the new practice. Consultations on the revised chapters should start before the end of the year, and IPIC will be able to submit comments on the proposed changes.
9. 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 November 16, 2021, at 13:00, likely via videoconference – to be confirmed.
The meeting adjourned at 3:40 PM.