Patent Practice Committee Meeting PB/IPIC - Tuesday, November 16, 2021

Tuesday, November 16, 2021, 1:00-3:00PM

By videoconference

Attendees

Co-chairs: Virginie Ethier and Jenna Wilson

Members: Scott Vasudev, Jeffrey Orser, Serge Meunier, Dominique Lambert, Jeff Leuschner, Jean-Charles Grégoire, Vanessa Komarnicki,

Guests: Patrick Cyr, Clyphendie Pierre-Louis, Kelly Murphy

Secretary: Marie-Claude Gagnon

Items

1. Introduction

Members shortly introduced themselves, and V. Ethier welcomed attendees to the meeting of the Patent Practice Committee (2PC). Agenda is discussed and approved.

V. Ethier indicates that the Commissioner of patents has not been appointed yet, but that the appointment is expected to come soon. For now, acting commissioner Konstantinos Georgaras remains in function.

2. Approval of minutes

The minutes of the 2PC meeting of June 8, 2021 are available online. J. Wilson indicates that the last bullet point of section 5.2, was not clear, and asked that in the future file-specific information be omitted from the minutes.

3. CIPO update on ISED journey to Government of Canada Authentication Service

C. Pierre-Louis provided a short presentation on CIPO's Journey to GC Authentication Services. GCKey and verified.me will be implemented by the end of this fiscal year to all of CIPO's online services, to address recent and pressing concerns around cybersecurity. A same username and password will eventually be used across all government of Canada services. Components to be implemented include, in addition, verified organizations and relationships and trusted entitlement to allow association of designations, memberships and roles to a profile.

K. Murphy provided information on the impact of the transition to the new Authentication Services on the users.

  • Transfer to the GC Canada approved Identity Management (IDM) platform: this element is already implemented in the NER online solution and will be implemented November 27 for the other CIPO online applications. Impacts of this transition include a new login screen, the requirement for unique use of an email address so that users cannot share an email address anymore, and a single sign on/sign off for all CIPO applications.
  • Mandatory Multi-Factor Authentication: this element should be implemented around January-February 2022, and will require authentication via email, text, or Google authenticator.
  • Integration with GCkey or verified.me: this element should be implemented in February 2022. As a result, the ISED username will not longer be applied; the username will be the same for all government applications. Verified organizations and delegation of authority are being considered. Sharing of credentials will not be allowed; the Office is currently investigating options allowing for client needs to be met via other means.

J. Wilson asked for confirmation that all users will need individual ISED accounts, and if CIPO will manage the relation between users and firms. C. Pierre-Louis confirmed.

J. Wilson asked if users needed to do anything else to prepare besides ensuring that they had a unique email address associated with their account. C. Pierre-Louis responded that this was the only preparation required.

D. Lambert indicated that some users were not able to generate their own account because the proposed selections of profiles did not apply to them. J. Orser responded that the account generation interface includes legacy elements designed before Agent College came into force, and that the IT team is working on an update to the proposed selections to be implemented as soon as possible.

J. Wilson asked for confirmation that everyone doing business with CIPO online will need an account, including for example annuity services interacting with CIPO only to pay maintenance fees. C. Pierre-Louis confirmed.

4. CIPO Updates

4.1 Due Care

S. Vasudev indicated that the current process for due care reinstatement request is that when the request is not compliant, the Office sends a notice of intent to refuse offering the applicant an opportunity to reply, and then a decision is made following the reply, if any. The Office has received 77 requests for due care reinstatement up to date: this is more than expected.  The first final determination were sent a few days ago and others will be sent soon. A table of decisions should be published on the CIPO website shortly.

He indicated that the current process needs to be revised in light of the volume of received requests. A further update will be provided at the next meeting of this committee.

He also indicated that there is a need for improved awareness of clients as to what the Office is expecting in an attempt to demonstrate due care, because now a high proportion of the requests received do not meet the bar in terms of required information.

J. Wilson asked if there was a plan to fast track cases where no responses are filed following the notice of intent to refuse. S. Vasudev responded that there was.

J. Wilson asked if a response filed after the one-month deadline established by the notice of intent to refuse but before the case is considered would be accepted and reviewed. S. Vasudev responded that it would not be equitable or fair to consider such a response, in particular since in the future the Office may be able to process these requests faster.

J. Wilson pointed out some operational issues with cases awaiting a decision on a due care reinstatement request. For example, some fees appeared are made of record on CPD and as such appear to have been applied, and the application is indicated as being in good standing even when a notice of intent to refuse has been sent. The notice of intent to refuse is available on the file, but the status on CPD is not accurate. The information officers also provide incorrect information, which seems to indicate that the information in TechSource is incorrect. J. Leuschner and D. Lambert mentioned instances of a notice of reinstatement received even when the decision on due care reinstatement was not rendered, because the fees were applied. J. Wilson also indicated that when an application is dead, the tasks in TechSource seem to disappear; in one case the task for due care reinstatement was lost because the application became dead. S. Vasudev indicated that he will investigate these issues and get back.

4.2 Website in description of patent application

S. Vasudev indicated that the Office sees benefit to examiners and third parties when relevant websites are cited in the description of patent applications. However, there is a concern with the way that content can change in websites over time. He asked if, in an effort to provide certainty over the content of websites, the Office were to require that citations of websites included a retrieval date, would that be simple for patent agents to comply with? And would agents likely comply by adding the date or by deleting the reference to the website?

J. Wilson indicated that she did not think the proposed requirement to add a retrieval date would work. She added that a lot of applications originate from a foreign application, and that information may have long been lost by the time the Canadian case is examined. The Courts would presume that the content of a website that could be relied on would be the content as of the Canadian filing date.

S. Vasudev asked how the other patent offices are dealing with this issue. J. Wilson responded that for the USPTO, the date of retrieval is required when filing an Information Disclosure Statement (IDS), but that this is different from a reference being mentioned in a specification. The USPTO does not request retrieval dates to be added to the specification.

S. Meunier indicated that the proposed requirement stems from a WIPO international standard and asked for suggestions on how this issue could be addressed.

J. Wilson asked why the Office considered a website citation without a date to be a defect. S. Meunier responded that website information changes over time and that accurate information is important. Retrievability is a concern; examiners need to be able to retrieve a document mentioned in the specification. If it is not important for the document to be retrieved, then removing the reference to the document should not be a problem.

J. Wilson responded that retrievability is not an issue that is unique to websites; for example, a book may be out of print. The risk of adding a reference to a specification is the Applicant's choice. If the examiner does not need the website to evaluate the content of the description, it should not matter if it can be retrieved or not. The consideration of the impact of the retrievability of the website can be left for the Courts.

S. Meunier responded that the retrieval date is required to distinguish which version of a website is being relied on, similarly to versions or publication date of a book. D. Lambert suggested that the default date to be considered could be the Canadian filing date.

S. Meunier and S. Vasudev will take these points under consideration and get back.

4.3 Withdrawal from allowance – returning to examination without amendment

S. Vasudev indicated that the Office has been receiving requests to withdraw an application from allowance under section 86(17) of the Patent Rules where no amendments are ever submitted. These requests do not appear to be about extending examination but rather delaying grant. He indicated that the flexibility allowed by section 86(17) of the Patent Rules is important for the purpose of extending examination when the applicant is not fully satisfied with the allowable claims, but that this process is not meant to delay grant of allowable claims.

He added that the section 86(17) requests filed without amendments have been processed up to now following the regular order of receipt, but that if applicants continue to file such requests without amendments, the Office may consider expediting the examination and re-allowance of the unamended applications.

J. Wilson asked what the proportion of requests section 86(17) of the Patent Rules without amendments was. S. Meunier indicated that the number was relatively small but still more than was expected. Some agents have even said to examiners calling to enquire about such cases that the examiner should proceed with re-allowance, and the agent would file another request under section 86(17) of the Patent Rules, if/when necessary.

J. Wilson added that a survey was conducted by IPIC, and the findings were that delays in filing amendment is often caused by double patenting overlap concerns. For example, the applicant needs to figure out whether or not to file a divisional application, or which claims to add to trigger a unity defect; or concurrent Canadian applications are handled by different examiners and the applicant needs to coordinate these applications to avoid double patenting, for example in light of amendments filed. She added that terminal disclaimers would solve this problem, among others. She concluded that there is usually a reason behind the delay, i.e., it is not just a delay for the purpose of delay.

S. Meunier asked if the delay could be because the applicant is waiting on the results of foreign prosecution. D. Lambert responded that this would be rare as the foreign prosecution in other jurisdictions (e.g., U.S.) is usually over by the time the Canadian application is allowed.

J. Wilson suggested that the Office provide a guideline on when an amendment is expected after a request under section 86(17) of the Patent Rules is filed to help with this issue.

5. National Entry Request (NER) online solution demo

M-C. Gagnon demonstrated the latest version of the NER online solution. The content of the different tabs (Details, Parties, Options, Documents, Application confirmation) was shown, and a national entry request was created and submitted in a test environment. She indicated that the solution would be live to all clients November 17, 2021, and that the URL of the solution would be published on that date on CIPO's website, sent by email to the clients on the Office's mailing list, and published on social media. She also indicated that invitations to client training sessions will be included in the email.

J. Wilson asked what the basis of the language attestation present in the solution was. M-C. Gagnon responded that she would verify and get back.

Update after meeting: the attestation was originally included because when translations are required, they must be provided to obtain the national entry date, and the solution provides the Acknowledgement Receipt including the national entry date directly upon submission. However, validations on the presence of translations when required have been added after the attestation was put in place, and it has become redundant; it will be removed in a future maintenance release of the solution.

6. Operations

6.1 Quality of online file history documents

IPIC indicates that the quality of electronic documents accessible online seems to vary depending on who is processing the incoming correspondence. They asked the following questions.

6.1.1: Is the print-then-scan process still being used?

IPIC provided a particular example where comparison between the claim document electronically submitted by the agent and the claim document retrieved on CPD revealed that the document appeared to have been printed and scanned.

J. Orser responded that the Incoming Correspondence Unit (ICU) no longer prints and scans the submissions; the only items that are scanned by default are those that are received by mail. The particular example provided was an exception, as it was part of a submission including a drawing page submitted in color. Color images are not scannable and are kept in paper form at CIPO. In a case with a color page, the entire amendment is printed, the color image is removed, a sheet indicating that the image was unscannable is inserted in its place, and the amendment is rescanned.

6.1.2: Is it still necessary for the Office to convert documents to images?

IPIC provided another more typical example showing that the quality of the page degrades with processing. Typically, the PDF letters and amendments submitted by agents have searchable text with embedded font subsets. However, by the time the documents are in the file history, the text has been converted to images.

J. Orser responded that incoming documents are converted to images in our current system by design, but that within the framework of the IT Modernization initiative more updated storage methods and file types are being considered.

6.1.3: Should correspondence instructions be updated to include instructions concerning accepted fonts, or embedding full font sets (if that will prevent corrupted text)?

IPIC remarked that after CIPO employees started working from home in 2020, it appeared that some people were using computers that were not equipped with standard font sets, resulting in corrupted text. They provided an example of a corrupted page.

J. Orser responded that the IT group of the Office is aware of this intermittent issue and it is listed in their prioritized backlog of maintenance fixes.

J. Wilson asked if embedding full font sets could be a potential mitigation, as people who file at the USPTO are used to have to do that. J. Orser responded that he will check and get back.

6.2 Date-stamps on pages in file histories

IPIC remarked that the date stamp applied to submitted pages varies according to the submission method and/or who is adding the page to the file history:

  • Pages submitted by General Correspondence have a stamp including language-dependent text, the submitted date, no Canadian application number, and in Arial font.
  • PCT pages retrieved by PCT National occasionally have a stamp without language-dependent text, including the Canadian application number and submitted date, and in Courier (or nearly illegible) font.
  • Pages printed then scanned in have a stamp located on the bottom left-hand corner, without language-dependent text, including the Canadian application number and submitted date, and in Courier font.

They asked if it would be possible to have some consistency, and preferably, the Canadian application number included on all pages.

J. Orser responded that date stamps do vary slightly due to technical limitations.

  • Pages submitted online by General Correspondence are date stamped by the Incoming Correspondence Unit. They cannot include the application number because they are stamped in large batches.
  • PCT National retrieved documents use a different technical system and as such the stamping is slightly different (CA number + date).
  • The new NER online solution will have date stamping located in the bottom left to avoid text overlap problems issues (CA number + date).
  • PCT pages retrieved from WIPO will show any stamps present upon National Entry.

He added that it would be helpful for the Office to understand how agents are using the stamps and why the lack of consistency is a problem; for example, is there a legibility issue or is the date stamp automatically read by their system? This would help the Office take agent needs into account for the future system. The Office would welcome comments from IPIC regarding this issue.J. Wilson provided, as example of potential use, when one is providing opinion on multiple similar third-party patents – the stamping helps sort which set of claims go with each patent. She added that the stamping is also useful to verify that the patent is granted with the correct pages.

6.3 Varying quality in case history printouts

IPIC has noted that recently, the case history reports provided in file histories range from easier to harder to read depending on which computer was used to generate the document (fixed-width vs proportional-width fonts) and provided examples to show this difference.

J. Orser explained that the case history reports used to be sent directly from TechSource to one of the Office printers, but that case history reports are now accessible electronically in .TXT format to Document Dissemination Officers. However, when preparing the documents for electronic submission to clients, the conversion to .PDF creates formatting issues. He indicated that the format will be reviewed, improved and standardized, and that changes will be implemented no later than Monday, November 22, 2021.

6.4 Varying delay in processing appointments of agent

IPIC noted that agents have experienced various delays in having appointments of agent processed, ranging from 3 weeks to months; they have also been advised to wait about 4-6 weeks. They asked what the current priority for appointments of agent processing is and if there had been any delay caused by procedures under the amended Patent Rules.J. Orser answered that the objective is to process appointments of agents within 15 days, but that there is currently a backlog on appointment of agent processing. The section responsible for this processing is working overtime to reduce the number of outstanding tasks, and new employees have been trained. He indicated that there were no delays caused by the procedures under the amended Patent Rules, but that the current delays are rather mainly caused by other priority tasks being performed by the same section such as, for example, tasks related to the Service Fees Act (SFA), and also by IT problems which were not specific to appointment of agent processing.

6.5 Error rate in filing certificates and similar documents

IPIC indicated that a lot of minor errors are occurring in filing certificates, etc.: applicant name missing "Inc." at the end or omitting the period at the end of "Inc."; applicant name duplicated; errors that resemble copy-paste errors. They also noted multiple errors in Request for examination processing, such as the request correspondence being on file but the fee not being processed and as a result, a late fee notice being sent. These errors seem to have increased in recent months; one agent firm dealt with six such errors in one week earlier this month. They asked what the cause for such errors was, and if there was an issue with training or quality control (QC).

J. Orser responded that new employees were being trained to process new applications as well as performing QC, and that reminders were given to employees to pay particular attention to fields with frequent errors.

IPIC members pointed out that Sept. 10 and Sept. 20 were identified as days with a high number of such errors. J. Orser responded that he would check for these days and get back.

6.6 Availability of electronic certified copies and electronic certificates of correction

IPIC requested for electronic certified copies and electronic certificates of correction to be implemented in the foreseeable future.J. Orser responded that the Office would consider this improvement for IT modernization, as providing electronic certified copies and electronic certificates of correction has not been prioritized for introduction in legacy systems.

6.7 Maintenance fees under section 112(5) of the Patent Rules

IPIC asked, for patents that issue with an outstanding application maintenance fee, exactly at what time the Admin Status and the maintenance fee payment tool are updated with the correct fee amount to pay for the first maintenance fee due after grant. They asked if the fee amount is only updated after the grace period for processing mail received on the grant date has passed and indicated that it is confusing for patentees if it is not updated immediately at grant. Agents want to be able to advise the patentee of the amount due on the next anniversary, and it is confusing if the Admin Status and the maintenance fee payment tool show a different amount.

J. Orser responded that the Office understands this is a long-standing pain point for clients, and that an enhancement is currently being worked on which should be released this fiscal year, i.e., before the end of March 2022. This enhancement will display the current status of the patent or application on the CPD. He indicated that currently, however, the required fees are only updated after a grace period after grant to allow the client more time to pay the outstanding maintenance fee and late fee before they move into the next state, where the outstanding maintenance fee, late fee and next maintenance fee all rolled into one.

6.8 Software updates

IPIC remarked that incidents earlier this year concerning the new application e-filing interface highlighted the fact that users are generally not made aware of problems with online filing tools, or when they are corrected. They asked what CIPO's policy was regarding advising users of reported and/or confirmed problems with its online tools.

They also noted that the various tools have version numbers, but that there is no version history to indicate what was corrected. They commented that it is conventional for software publishers to make version histories available to users so they know when software was updated, and generally what changes have been made, and asked if CIPO will do the same.

J. Orser responded that with respect to a log of changes, the Office has not kept one until now because individual tickets are tracked within the JIRA system. However, the IT team has taken note of this suggestion and will take it into consideration. J. Wilson added that the community needs to have confidence in the Office's specialized tools and tracking of updates help reassure agents that a problem was solved, which would increase the agent's trust of these tools.

6.9 Transmission of PCT correspondence

IPIC asked how the Office determines the mode of correspondence for its own notifications, and when to notify the applicant that correspondence is available. They provided an example of how correspondence was transmitted to or obtained by the agent in a PCT application where CIPO is Receiving office/International Search Authority (RO/ISA):

IPIC indicated that the communications from the International Bureau (IB) were consistently issued in the same manner, with a notification to the agent by email.

J. Orser responded that by default, the Office sends all outgoing PCT international correspondence (i.e., all RO, ISA and IPEA forms) via Canada Post regular post. If an applicant prefers to receive electronic correspondence via Canada Post epost Connect, they must complete the consent form available at Letter-consent-Applicant-Agent-allow-CIPO-International-Work-En.pdf. Once an agent or firm completes the consent form, all future outgoing PCT correspondence from the Office will be sent via Canada Post epost connect. This service is free of charge.

He added that depending on when a consent form is filled out by an agent or firm, a change in the method of correspondence may occur during the International phase for a particular application. He also indicated that the Office does not use ePCT as an official method of correspondence, however applicants can always find copies of the forms which have been sent by mail or epost on that platform. No notifications are sent to applicants when documents are posted to ePCT.

He concluded that for the particular example provided, it appears that an error occurred with the sending of the RO102, 105 and 106. If the applicant can provide the application number, the Office can investigate the issue and respond to the applicant directly.Update after the meeting:  the application number was provided and the Office has investigated, rectified the issue and responded to the application's representative directly.

7. Examination

7.1 Inconsistent treatment of potential unity objections

IPIC reported that some examiners seem to provide warnings of unity defects. They provided the following examples of such warnings:

"Applicant should note that at present there is no common linking feature between claims […] and claims […]. Without amendment to the claims, a defect under Section 36 may be cited in a subsequent office action"."If these claims relate to different products, methods, or apparatuses, however, then these claims would not be in compliance with section 36 of the Patent Act. The claims have to be amended in view of the above; otherwise, a formal lack of unity of invention defect under section 36 of the Patent Act may be raised in the next office action."

IPIC indicated that such warnings are not optimal; examiners are aware that applicants require unity objections for Consolboard protection, but this habit requires the applicant to "waste" an office action in order to get a unity defect before proceeding with a divisional application.

S. Meunier responded that examiners recognize the effects of the identification of unity defects including both Consolboardprotection and the increased costs of filing and prosecution of a divisional application. For that reason, examiners take care in not identifying lack of unity in situations where there is another underlying defect at play. The PCT guidelines are clear on this: the identification of unity should not be applied in too technical of a fashion. That guideline is part of the basis for the extensive examples in MOPOP, clarifying the practice on unity.

He indicated that in the two particular examples provided, the examiners were probably of the opinion that unity was not the primary defect but rather could be one depending on how the applicant addressed the primary defect. These are accordingly examples of not applying unity in too technical a manner. In providing the warning that a lack of unity might be relevant depending on the response to the primary defect, the examiners were providing a service beyond that required in communicating expectations and allowing the agent and applicant to understand the full situation and plan accordingly.

He added that while a lack of unity defect in the first report is to be desired, it cannot always be achieved. Many factors can affect whether this is possible including amendments to the claims, lack of clarity in the claims or lack of understanding of the claims by the examiner, and prior art found after the first report. In many cases, a lack of unity is not materialized because there is actually no "any other invention", and as such the warning would not be considered to "waste" an office action in order to get a unity defect; it would actually save the applicant the cost of an unnecessary divisional application.

He concluded by indicating that in the first example provided, the warning was located before the defect section of the report and as such was clearly not an identified defect. In the second example however, the examiner could have been clearer in the identification of all the defects related to unity, ambiguity and/or scope, and will be contacted to relay this information.J. Wilson added that the Office should expect the agent community to become more sensitive to actions by examiners that seem to increase the number of office action, including warning of potential defects not identified as defects, in light of the published draft amendments to the Patent Rules. She argued that if the applicant contests all of the defects in the report, then the unity defect would need to be raised; when the issue is something that would be raised as a defect if no amendment is filed, it should be raised upfront.

S. Meunier responded that the applicant is in the best position to know what their invention is, and that if the claims are not clear enough for the examiner to determine if there are multiple inventions, then the applicant should know their invention and be able to determine if multiple inventions are present or not; the warning provided by the examiner directs them to consider this issue.

7.2 Discretion in identifying "indefinite" claims

IPIC indicated that some examiners are raising inappropriate indefiniteness objections, such as alleging indefiniteness because the word "Claim" was capitalized ("The system according to Claim 1"), or because the applicant submitted a claim set "which contains the independent claims from both the US and EP corresponding patents", thereby creating "an air of uncertainty as to what exactly the applicant wishes to claim". They reminded that the scope of defects under section 27(4) of the Patent Act was raised in a previous meeting and that their understanding was that the latter is inappropriate, particularly when there is also a conciseness objection and/or a unity issue. As such, they asked if there had been a change in guidance, and asked what guidance is given to examiners in determining whether a claim has sufficient "clarity" in terms of wording or formatting choices.

S. Meunier responded as stated in MOPOP chapter 16.02, during examination "the language of the claims may be amended so as to remove ambiguity and maximize their usefulness in serving their public notice function of defining the extent of the monopoly sought." Examiners are therefore given discretion in how they apply this direction. This discretion is used broadly by examiners especially in earlier reports where the presence of other defects means the addition of another defect will not delay prosecution. Though in some cases the errors present in the application could have instead been noted as opportunities for correction/improvement in the report, the outcome is likely not different: an improvement in the quality of the language of the patent.

He confirmed that the scope of defects under section 27(4) of the Patent Act was discussed in a previous meeting (February 2018) and that there had been no change in guidance since then. Examiners are directed to MOPOP chapter 16.03 for the topic on clarity, and again that guidance has not changed, perhaps except for this addition: "A claim is not indefinite simply because it is broad, but rather where the precise limits of the claim are uncertain." This addition was meant to partly clarify the issue raised in the second example, and he confirmed that the fact that claims from both the US and EP corresponding patents are present in the application does not make the claims indefinite, and this is clear from current practice. He also indicated that the capitalization of the word 'Claim' is not indefinite, and that for both examples identified, the examiners will be reminded of the practice.

8. Administrative Policy

8.1 Service Fees Act (SFA) refunds

8.1.1: Timing of payment

The deadline for CIPO to pay out remissions for this fiscal year is July in the following fiscal year. IPIC indicated that this is a problem for agents who must be able to return trust funds to clients, since the delay increases the chance that the client relationship may have been terminated in the meantime and the agent may not have current contact information for the client. They asked if there were plans to start issuing more timely payments. J. Orser provided the following information:

  • The plan is to remit money regularly. However, it takes a minimum of 3 months from the late service delivery date to the remission payment. The missed service standards for March 2022 eligible for remissions will be remitted at the end of June 2022. This means that unfortunately, not all remissions will be issued within the same fiscal year due to 1-month refusal period and administrative process.
  • The first remissions have been delayed while the Office was clarifying the process and financial requirements.
  • The Office needs the collaboration of the agents to be able to process remissions, as remission issuances require that the appointed agent on record/default correspondent create an Integrated Financial and Materiel System (IFMS) profile and ideally sign up for direct deposit.
  • The Office invites patent firms who received letters of remission to create their IFMS profile (1 IFMS profile per Business number (BN)) and sign up for direct deposit, if they don't have one already. The information to do so will be added to the minutes of the meeting.
  • Clients who deal with CIPO on multiple files will be able to get remissions once their IFMS profile is created
  • The Office will start issuing the remissions first by catching up on the first months and then remissions should be issued monthly.

Update after meeting: IFMS profile and direct deposit

8.1.2: Who receives payment

IPIC asked for confirmation that the payments will be remitted to the payer. They asked if, in a case where a filing service filed an application with an appointment of agent, and a SFA refund was due for the application fee, the refund would be issued to the filing service and not the agent, to the correspondence address provided by the filing service at the time of filing.

J. Orser responded that CIPO will not remit money to the payer. The Office is sending letters of remission and remissions to the appointed agent on record/default correspondent, at the time of the remission, who is duly authorized to act on behalf of the client/applicant as per its policy (https://www.ic.gc.ca/eic/site/icgc.nsf/eng/07680.html) and program annex (https://www.ic.gc.ca/eic/site/icgc.nsf/eng/07681.html). He clarified that for example, if there is an agent, the remission letter and remission would be sent to the agent. If there is no agent, the remission letter and remission would be sent to the applicant or, if there are multiple applicants, the first applicant named.

He added that in cases of a fee paid by a third party not acting on behalf of the applicant or rightsholder, them the remission letter and remission would be sent to the third party. The appointed agent on record will not receive a copy but the information will be on file. For example, a person or entity who paid to request examination of a patent application for which they are not the applicant or the patent agent would receive the letter of remission and the remission.

J. Leuschner proposed an example where a patent has been issued for 10 years, and the agent has to remain on the file, but the applicant is using annuity company to pay the fee – what is the agent supposed to do with a remission for a client they have not had contact with for 10 years? He indicated that the refund should be to the annuity company, since they are the ones paying and in contact with the applicant. D. Lambert added that the remission should be able to go back to the applicant and as such should be provided to the party in contact with the applicant.

8.2 Prioritizing investigation of unsent correspondence

IPIC indicated that agents have been experiencing variable and undue delay in having the Office correct abandonments/expiries due to the Office failing to send (or to correctly send) notices. For example, in one case, an agent requested correction of two deemed abandonments in two applications due to non-receipt of notices of allowance (purportedly sent on the same day); the requests were submitted on the same day and both were accompanied by the agent's affidavit, but one correction took two weeks longer. In another case, a correction of deemed expiry for unsent correspondence submitted via the Online Feedback Mechanism (OFM) took three months or more.

They added that corrections of deemed abandonments and expiries need to be prioritized to ensure that CIPO records accurately reflect the status of the application or patent and do no mislead the public into thinking the invention fell into the public domain. They asked how this task is prioritized, and if there is different handling (different personnel, prioritization, speed of investigation) if the request is made via OFM when compared to a formal request with an affidavit. They also asked if, when an applicant/patentee submits a formal request for correction of an erroneous abandonment/expiry due to non-receipt of correspondence from the Office and does not submit an OFM, the error would still be tracked for QA.

J. Orser responded that the Office has been experiencing IT issues impacting its ability to send correspondence, but that the source of the error has been identified and corrections have been initiated. He added that the Office has implemented more monitoring of correspondence to prevent lost correspondence, and a process to identify days when IT issues occurred and proactively send missed correspondence, redating where required.

He also indicated that if several missing correspondences are detected by OFM for a particular day, a broader investigation is triggered; and that if an IT issue for a particular day in the past is identified, all missing correspondence are identified, policy is notified, and corrective action is taken for all missing correspondence. This monitoring and correction process has however taken some time to implement, and this may be the reason for an extended delay in correcting some issues submitted by OFM.He added that the Office takes these corrections very seriously and is working to address all issues as they are identified, but that however at this time, deemed abandonments and expiries are not prioritized over other missing correspondence.

J. Wilson asked if OFM was prioritized over general correspondence, and if there was a difference in processing between the two channels of submission. J. Orser responded that there is no prioritization of one channel over another, but a submission made via general correspondence will be part of the file while a submission made via OFM will not be. OFM submissions are however easier to cross-check to determine if there is a known issue for a particular day and is beneficial to take corrective action quickly even in files not yet flagged by clients when a generalized problem is detected.

J. Wilson asked for the average turnaround time for submissions made via general correspondence. J. Orser responded that he did not have particular number to provide at this time, but that the requests submitted with an affidavit are processed in the order they are received.

8.3 Inconsistent publication of protest/submission of prior art letters on the Canadian Patent Database (CPD)

IPIC asked for confirmation of the policy for publication of protest letters on the CPD, as it seems that sometimes the protest letters are not made available online; instead, the applicant receives a letter notifying them that a protest was received and advising them to view the protest in the search room or by placing an order for the file history. IPIC indicated that they expected the protest letters to be made available online, but not the prior art documents, and that applicants should not be expected to pay a fee to obtain protest (or prior art) documents from their own file history that CIPO chose not to forward, nor should they be expected to send someone to Gatineau to pay for a copy. They asked if they could be assured that the document order fees will be waived. They also asked why a different policy was followed for re-examinations.

J. Orser responded that the policy is that any protest or filing of prior art will become part of the laid-open application file and will therefore be made available to the public, including any correspondence sent in regard to the filing of prior art or protests. However, after review of the Office's processes, it appears that there has been an inconsistency in how this policy has been applied due to the fact that incoming correspondence was identified with an incorrect tab in TechSource which did not allow it to be uploaded and published on the CPD. For future submissions, this information will be available to the public when the application is laid open.

He added that unfortunately, the Office is not able to identify past protests and prior art that were processed incorrectly and accordingly not open to the public on the CPD. If a client believes there is a protest or prior art that should be available on an application, they should provide a request using the online General Correspondence form or OFM to have this corrected at no charge.

J. Wilson indicated that applicants should be able to get a copy of the prior art in their file history at no fee – since the protest was filed by 3rd party, they need to have access to the documents. S. Vasudev indicated that he would get back on this point.J. Wilson also asked why prior art submitted with re-examination is available online, if prior art for protests remains unpublished because of copyright concerns. S. Vasudev indicated that re-examination is administered by the Patent Appeal Board (PAB) so their policy may differ, but that he would verify and get back.

9. Roundtable, Next meeting and closing remarks

J-C. Grégoire requested a copy of the slides presented by C. Pierre-Louis.

J-C. Grégoire asked if the recent change of outgoing email server for the Office is expected to eliminate the existing spikes in volume of outgoing correspondence. J. Orser responded that existing spikes in volume were due to re-send of missed correspondence, and the new server should reduce the instances of correspondence requiring to be re-sent.

J-C. Grégoire asked what value was added by the NER online solution, as opposed to a national entry request submitted via general correspondence. M-C. Gagnon responded that the NER online solution provides the Canadian application number, national entry date and Acknowledgement Receipt automatically upon submission. Also, the NER online solution provides a detailed proof of the submission, increased guidance as to the required content, as well as the possibility to leave a draft in the system and continue working on it at any time in a seamless manner.

J. Wilson asked if it would be possible to discuss the proposed changes to the Patent Rules. S. Vasudev responded that the caretaker period around the elections had prevented some discussions on the comments received by IPIC during the consultation period. The Office is open to a meeting for IPIC to explain their submission in more details, and to allow the Office to ask questions for clarifications, but that since the consultation period is over, the Office will not be able to respond to the submission,J. Wilson asked what the timing for the Part 2 publication of the Patent Rules in the Canada Gazette was. S. Vasudev was not in a position to provide a date.

D. Lambert asked if there would be more than 30 days between the Part 2 Publication and the coming into force date, so that the community can adapt to the changes in the Patent Rules before they come into force. S. Vasudev responded that IPIC's request for more time had been heard, but that at the moment he was not in a position to comment on this point.

J. Wilson asked if it would be possible to have an indication of the scope of the potential changes between Part 1 and Part 2 publications. S. Vasudev responded it was not.

S. Meunier asked if, for requests to withdraw an application from allowance under section 86(17) of the Patent Rules, it would be helpful for the Office to allow the agents to indicate the reason why an amendment is not being concurrently filed and to consider this reason, particularly if this is something controlled by the Office – for example, if amendment is delayed until a requisition is sent on another Canadian application. J. Wilson responded that this could help, although eventually some cases may need to be re-allowed if the event that the agent is waiting for is not happening soon enough.

The next Patent Practice Committee meeting will take place on February 22, 2022 at 13:00, likely via videoconference – to be confirmed.

The meeting adjourned at 4:35 PM.

 

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