Archived — Practice Committee Meeting PB/IPIC - Tuesday, February 28th, 2017

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50 Victoria Street, Gatineau, Québec, Phase I
24th floor, Room G


Co-chairs: Agnès Lajoie and John Pivnicki

Members: Miriam Paton, Sue Rancourt (for Peter Wong via teleconference), Jenna Wilson (via teleconference), David Boudreau, Nathalie Tremblay and Scott Vasudev

Absent: Peter Wilcox

Secretary: Sandra Hurley


1. Introduction

A. Lajoie and J. Pivnicki welcomed attendees to the meeting of the Patent Practice Committee (2PC).

a) Introduction of Adam Kingsley

Adam Kingsley was to be a guest at the meeting but unfortunately was unable to attend. Mr. Kingsley is the new Executive Director of IPIC. Some of the important priorities that Adam has set include: the preparation of a new 3 year strategic plan for IPIC; improving IPIC operations and increasing value for IPIC membership.

Adam's coordinates are Tel: (613) 234-0516 and e-mail:

2. Update on PB projects

a) Legislative Update

S. Vasudev provided an update of PB legislative projects.

  • Bill C-30, an Act to implement the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union and its Member States, passed third reading in the House of Commons on February 14, 2017. C-30 is currently before the Senate of Canada. Preliminary work on related changes to the Patent Rules, including with respect to the Certificates of Supplementary Protection regime contained in CETA, are progressing well.
  • Patent Branch continues to make progress on the Patent Rules package associated with Bills C-43 and C-59. Preliminary work on organizing pre-consultations on a draft Rules package has begun. Patent Branch is expecting to commence pre-consultations on a reasonably complete draft Rules package in June or July 2017. The estimated coming-into-force date for the Rules package is currently projected to be in early 2019 but the Departmental Forward Regulatory Agenda should be consulted for future updates.

b) MOPOP Update

S. Vasudev provided an update on the MOPOP and associated consultations.

  • Patent Branch published a MOPOP update in January 2017 that revised the section of Chapter 17 relating to Antibodies.  The new section takes into account the advancement of the antibody field and its impact on examination practice.
  • Patent Branch is planning to publish an update to MOPOP in late March or early April that will incorporate a number of the recent Practice Notices such as the change to CIPO's office hours and the process for issuance of patents as well as to address item 3j on the agenda of this meeting.
  • Patent Branch is planning to conduct a combined 5 week consultation beginning in early April, 2017 on two parts of MOPOP: a draft chapter 12 on “Subject-matter and Utility” and, a section of chapter 17 relating to medical kits.  The Office is very interested in hearing the opinion of the IP community for this consultation.

c) Group B+ working group

S. Vasudev provided an update on the Group B+ working group.

  • The Sub-group of the Group B+ continues to focus their patent law harmonization efforts on the following issues: non-prejudicial disclosures / grace period, conflicting applications, prior user rights and options for implementation.
    • The work of four work streams, tasked with investigating each of these topics, will be used in part to create a formal consultation document.
    • A group known as the industry Trilateral (IPO, AIPLA, Business Europe, JIPA, epi and JPAA) is investigating these issues in tandem.  
    • To help further streamline the consultation document a Users' Symposium will be held in Munich, Germany on June 20, 2017 to study the work of the Industry Trilateral and to engage other non-IT3 industry groups on these issues.
  • CIPO is in the process of forming a Canadian Working Group on substantive patent law harmonization. The Working Group will initially study the issues before the Sub-group and the work of the Industry Trilateral in order to prepare for an effective Canadian representation at the Users' Symposium in Munich. Subsequent to the Users' Symposium participation in the Canadian Working Group would be an ongoing opportunity to be involved in discussions on substantive patent law harmonization.

d) Examiners' Interview Services

A. Lajoie discussed progress on the Examiners' Interview Services project.

  • The Patent Examination Interview Service involves examiner-initiated telephone interviews in situations where advancing prosecution is likely, such as when there are only a few minor defects remaining in an application.
  • A pre-pilot of this service was conducted over July and August with 22 examiners. The full pilot was conducted from September to December with a total of 74 examiners from across all four divisions in Patent Branch. In January 2017, agents who had been contacted during the pilot were surveyed to determine their level of satisfaction with the Interview Service.
  • 249 examiner-initiated interviews were conducted over the course of the pilot. 93% of agents contacted agreed to submit a voluntary amendment to correct identified defects.
  • A phone interview led to an allowance in 79% of cases. Pendency was reduced by an average of 2 to 6 months in three of the four divisions when compared to non-pilot applications during the same time period.
  • 94% of agents indicated that they were satisfied or very satisfied with their experience in the pilot.
  • Implementation across the entire Patent Branch will take place in April, 2017.
  • M. Paton noted that it was her understanding that examiners were not permitted to provide opinions in an interview context. She wondered if that would become more flexible. A. Lajoie responded that the Office is seeking improved channels of communication with clients, and that the examiner-initiated telephone interview service is a first step towards that improvement. J. Pivnicki added that it seems for minor defects, examiners at CIPO will sometimes provide an indication of what amendments they would consider as corrective for those defects.
  • J. Wilson noted that there was documentation of these examiner-initiated telephone interviews. She wondered if there is any documentation of in-person interviews. A. Lajoie noted that those in-person interviews are applicant-initiated as opposed to examiner-initiated. At this time, these applicant-initiated interviews are not documented, but these can be followed by a response to an examiner's report or a voluntary amendment.

3. PB Topics

a) Terms of Reference

A “Terms of Reference” document was attached to the meeting agenda confirming and detailing the proposed purpose and structures of the 2PC meetings. A. Lajoie asked if there were any comments or suggestions on the document, which could be reviewed on an annual and as needed basis.

  • J. Pivnicki and M. Paton indicated that IPIC would prefer to expand 2PC discussions beyond operational issues to more regulatory, legislative and practice-related issues, particularly ones where the Office has taken a position on practice matters and an interpretation of the jurisprudence that contrasts the position and interpretation generally shared by IPIC members. A. Lajoie noted that updates are provided at the meeting on regulatory, legislative and MOPOP-related issues, and further there are other mechanisms for IPIC members to provide feedback on such issues, such as consultations, webinars, blogs and the IPIC annual general meeting. The Office strives to be as productive and as clear as possible in examination and in articulating its position.

b) Agent Renewal

  • D. Boudreau advised that the period for agent renewal is from January 1, 2017 to March 31, 2017. On January 2, 2017, the Office published a communication in this regard through ListServ and on January 4, 2017, this information was published on the CIPO website. Agents were also informed on January 2, 2017 that the Office is no longer using the Lotus Notes web form for the payment of agent registration. That payment is now done through digital correspondence and instructions were provided on the website. D. Boudreau wondered if there was any feedback on how agent registration was now proceeding.
  • As an aside, J. Wilson indicated that when she has submitted feedback to the Office via the online feedback mechanism, the Office has neglected to respond. With regards to agent renewal, she noted that the wording of the notice provided on the CIPO website seemed to indicate that renewal must be done online, which is incorrect as the renewal can be done by regular mail or by filing with a regional office. D. Boudreau responded that he would follow up on the issue of not receiving a response to her feedback via the online feedback mechanism and on the wording of the online notice.

c) Prior Art for international applications

  • As a result of two papers (PCT/MIA/24/8 [Korean Intellectual Property Office] and PCT/MIA/24/8 ADD [International Bureau]) presented at the most recent Meeting of International Authorities Under the PCT, CIPO is considering modifying its practice related to the delivery of documents cited in International Search Reports (ISR) and in International Preliminary Reports on Patentability (IPRP).
  • According to PCT Rules 44.3 and 71.2, the applicant (or a designated or elected Office) can request a copy of the citations in an ISR or IPRP within seven years from the international filing date (and the International Authority (IA) can charge a fee for doing so if they wish).
  • CIPO's Annexes D and E of the PCT Applicant's Guide, International Phase, reflect the Rule wording:
    • “The Authority does not require that the applicant presenting the request pay the cost of preparing and mailing the first copy of any documents cited, however, for any additional copy there is a charge of CAD 1.00 per page”
  • However, in actuality, CIPO sends a free copy of all citations [patent documents and non-patent literature (NPL)] on a CD along with the transmission of the ISR to the applicant. The Office does not automatically transmit new documents cited in the IPRP during Chapter II processing.
  • In the period since CIPO became an International Authority (July 26, 2004) the ease of obtaining patent documents has increased considerably. The same cannot be said of all NPL.
  • In their paper, the International Bureau (IB) informed International Authorities that they offer a secure, centralized service for making copies of citations available to applicants and designated Offices. The IB invited International Authorities to consider transmitting copies of cited non-patent literature to them so that copies can be held securely and made available when required by the Treaty in a single, centralized manner independent of which International Searching or Preliminary Examining Authority (ISA or IPEA) cited a document. CIPO would like to use the IB's service, but cannot do so without PCT Regulation changes.
  • Thus, given the wording in the relevant PCT Rules, the wide availability of patent documents, the pending use of the IB's secure services, not to mention the potential savings on: the cost of the CDs; HR costs; physical mailing costs; and reducing the potential for lost mail, CIPO would like to propose the following for the near-term:
    • effective the date of posting a notice, CIPO will no longer provide a copy of patent documents on the CDs it transmits with the ISR [which potentially means no CD will accompany the report];
    • NPL will continue to be burned and sent; and
    • the notice referred to above and the PCT Applicant's Guide will instruct applicants of the means by which they can request a copy of patent documents if they are in need of them.
  • In the long-term CIPO would like to use the services of the IB which would mean CIPO would no longer burn any CDs.
  • CIPO is very much interested in hearing from the Agent community regarding their use of the documents on the CDs and comments on the Office's proposal.
  • J. Pivnicki and J. Wilson wondered if non-applicants and Canadian agents are able to request a copy from the IB of the NPL cited against an application. S. Vasudev indicated he would find out whether that was contemplated by the IB. There may be copyright issues. CIPO is not trying to reduce what is provided to agents and applicants, but rather to find more efficient ways of providing the literature.
  • J. Wilson noted that sometimes after many years have passed, an NPL document becomes relevant to a patent application and must be consulted. With respect to the Office's long term plan to use the services of the IB, if there is a time limit on the availability of the NPL in the centralized IB repository, the document may no longer be easily available.
  • A. Lajoie responded that this is a good question that the Office will convey to the IB, to get clarification on the future plans.

d) Turnaround times and service standards

  • A. Lajoie introduced this item pertaining to the Office's turnaround times and service standards. At the end of January, 2017, all examination first actions were completed, on average, within 10.5 months of the Request for Examination (RE) date. For patents granted in the month of January, grant took place, on average, after 34 months from the RE date. The Office is proud of these results.
  • N. Tremblay added that the service standard for the next fiscal year for receipt of a first action will be 14 months from RE date, in all disciplines, 90% of the time. For subsequent actions, the service standards for turnaround times from the date of applicant response for the various disciplines are (90% of the time):
    • Biotechnology: within 9 months;
    • Electrical: within 8 months;
    • Mechanical: within 5 months; and
    • Chemical (Organic and General): within 5 months.
  • D. Boudreau presented the service standards for Patent Operations for the next fiscal year:
    • For nationally filed applications and PCT national entry applications, the mailing of the filing certificate and of the notice of national entry, respectively, will be within 3 weeks of the receipt of the application, 90% of the time;
    • For mailing of registration certificates: within 3 weeks, 90% of the time;
    • For mailing of acknowledgement of RE made after filing: within 3 weeks of receipt of the request for examination upon receipt of the applicable fee, 90% of the time; and
    • For issuance of a granted patent: within 8 weeks of payment of final fee, 90% of the time, for applications in good standing. Of note, the actual grant process has been reduced from 10 weeks to 8 weeks to 6 weeks from when the final fee has been applied.
  • M. Paton asked how quickly clients need to request a refund of a final fee. D. Boudreau responded that such a request would need to be made within a day or two of payment.

e) Extensions of Time

S. Vasudev presented this item pertaining to extensions of time.

  • Sections 26(1) and 27 of the Patent Rules grants the Commissioner the authority to extend time limits for actions, requisitions, reinstatements and appeals ‘if the Commissioner is satisfied that the circumstances justify the extension'.
  • Patent Branch is seeking consistency in its current practice for extensions of time and to improve alignment with the other product lines at CIPO. Specifically, the Office is planning the following:
    • Greater scrutiny of the justification provided for the extension of time;
    • One extension of time of no more than 6 months per action unless the applicant can demonstrate exceptional circumstances; and
    • Extensions of time for the reinstatement period will only be considered if the applicant can demonstrate exceptional circumstances.
  • Patent Branch will publish a Practice Notice and update MOPOP to reflect the above changes.  Implementation of this change would come into effect 1 month following the publication of the Practice Notice.
  • The Office would appreciate comments from the user community on the proposed change of practice.
  • J. Wilson suggested that, to avoid any issues with cases that are already in an extension of time period, implementation of the change should be 3 months following the publication of the Practice Notice.

4. IPIC Topics

a) New member of the IPIC side meetings with CIPO.

  • IPIC wishes to advise CIPO that Peter Wong of Parlee McLaws (Edmonton) has agreed to be the New IPIC member in 2PC meetings with CIPO (via teleconference). Peter was unavailable for this meeting and his colleague and fellow 2PC IPIC member Sue Rancourt replaced him via teleconference. It is hoped that this will provide IPIC with better representation of Western Canada at the 2PC meetings.

b) Undelivered mail returned to CIPO (re-addressed and/or incorrectly addressed mail)

  • This item was submitted by J. Wilson. She had learned that personnel in the mailroom at CIPO were, of their own initiative, re-addressing outgoing correspondence to the addresses where the correspondence was thought to go, and (at times) contrary to the recipient's instructions. This appeared to have happened multiple times in January. She wondered if CIPO could advise when the situation of readdressing mail by CIPO staff began. Further, IPIC asked what CIPO's standard policy is with regard to undelivered/returned Mail, and who an IPIC member might contact for further information concerning mail matters.
  • D. Boudreau responded that, to CIPO's knowledge, this situation happened 5 or 6 times. He indicated that the re-addressing concerned correspondence that was sent by Purolator, although Ms. Wilson had understood that the mail was regular Canada Post mail. D. Boudreau noted that each time, the mail came back to the office before a new sticker was placed on it. It appears that the mailroom clerk contacted the firm (Dimock Stratton LLP) and was asked to send the mail to the new address since they had just merged. This information was validated by looking up the webpage The confusion was caused by a wrong address from the merging of the two firms. Also, the mailroom clerk that contacted the firm by phone was apparently provided with a wrong address to send to.
  • CIPO's procedure regarding undelivered and returned mail is the following :
    1. The employee scans the undelivered/returned correspondence and enters it into the Techsource system.
    2. The employee validates the address by looking it up in Techsource.
    3. The employee re-sends the correspondence by registered mail (if time sensitive then a new date will be given).
    4. If the correspondence comes back again, then the employee scans it one more time and adds it to Techsource.
    5. The document is stored in our files and no more actions are taken.
  • D. Boudreau indicated that he will follow up in ensuring that the above procedure is well-followed, and properly documented in the form of a flow-chart process map and associated work instructions.
  • From now until to June 2nd, 2017, the contact person regarding mail matters is Andrée Patry, and starting June 5th, 2017, the contact person will be Christian Gervais.

c) Update on e-filing subcommittee of 2PC

Janice Kelland and IPIC e-Filing subcommittee brought this issue forward.

  • Ms. Kelland had given a summary of the progress of e-filing at CIPO. After a very upbeat meeting with CIPO in February 2016, it seemed that there had been few developments. Recently there was a phone consultation, where members of the IPIC e-filing subcommittee were asked for comments. The consultation gave the IPIC members the impression that e-filing still had many hurdles. IPIC asked that CIPO provide comments on the next steps forward for e-filing, and possibly an expected date for implementation. Adam Kingsley had suggested that Mr. Vikesh Srivastava, at Health Canada (Associate Director, Business Informatics Division) may be a resource that could be called upon by CIPO, for methods assuring data security and user end tracking. Peter Wong had noted that in the USPTO there is the Electronic Business Center staffed by experts who are knowledgeable and helpful. He suggested that a similar group should be established at CIPO with e-filing implementation.
  • D. Boudreau responded that in early March, clients will notice a change to the look and feel of the online General Correspondence and e-Filing forms for Patents as well as Trademarks, Copyrights and Industrial Design. These updates will be announced on CIPO's website.
  • The look and feel updates are required in order to comply with the Government of Canada Web Standards and they were fully carried out by the ISED IT team.
  • These changes are not directly related to the Patent Office's project to improve Patent e-Filing, and as such they do not address the needs that were identified through consultations last year. This project had a significant amount of work done on the requirements over the past year but has been on hold due to resources being reallocated to the Patent legislative project (PLT) that will be completed in early 2019.
  • Clients may also notice in March that the General Correspondence and the e-Filing will look different from each other. Due to time constraints, the General Correspondence was not fully upgraded to the latest version of the Government of Canada look and feel. Both of these forms will undergo further upgrades over the coming months and years.
  • Should clients have any difficulties or questions in using the new forms, they may contact the CIPO Client Service Centre, who will be happy to assist them.
  • M. Paton noted that even if the project is on hold, it would be helpful to get a sense of what the IT group has in mind for the project, particularly with respect to the infrastructure and architecture of the system, as the architecture of the current system has deficiencies.

d) Transferring existing ISED accounts to new firms

  • J. Wilson had brought forward this item pertaining to the difficulties in establishing a new agent firm and deposit account with CIPO and in transferring an existing ISED user account over to a new firm.  It was noted that many individuals at CIPO and at Finance must carry out individual tasks in a particular order for the process to work. IPIC asked that CIPO provide a list of steps and contact information that explains all the steps that are required when an ISED user wants to associate their account with a new firm. IPIC suggested that the Office consider establishing a contact(s) at CIPO for this procedure. The contact(s) could oversee the entire process and help an agent's transition. IPIC further suggested that this may be a good case for a CIPO LEAN process initiative.
  • D. Boudreau answered that the Office appreciates the recommendations to improve the procedures with respect to transferring ISED accounts to new firms, and acknowledges that it may be cumbersome to transact with different sections of CIPO (Patent Branch-MF & Patent Agent Register, ISED account, and Finance) when patent agent firms are being acquired, merged or dissolved. He added that the goal of the Office is to:
    • Ensure compliance with the requirements of the Patent Rules for the Patent Agent Register;
    • Ensure the security of the ISED user accounts and that they are used only by authorized individuals; and
    • Ensure the security of the financial information that may be tied to the ISED user accounts.
  • The Office will explore possible improvements to the processes. In the meantime, the Patent Branch provides the following list of contacts for each process:

e) Clear direction on Rule 24 and who may sign a Rule 20 revocation/appointment

  • This item had been submitted by J. Wilson. She had noted that there is no published guidance on Rule 24 or what qualifies as “establishing” to the Commissioner who is a successor, or what process should be followed in situations such as i.e. a Heenan Blaikie or Dimock Stratton situation. The Patent Branch, upon hearing about these situations, attempts to learn about the patent applications that are affected and is interested that applicants continue to be represented. IPIC suggests that CIPO and IPIC, develop a process for an orderly transition within the scope of the current Rules.
  • S. Vasudev responded that the intent of Rule 24 was to allow a smooth transition of files when a single agent was succeeded by another single agent. The registration and appointment of patent agent firms makes it easier for agents to represent clients by allowing agents to manage applications collectively. CIPO agrees that it isn't clear how Rule 24 applies when patent firms dissolve and there are multiple successors.
  • CIPO believes it is important that the appointment of agent on each file be properly documented to avoid any future potential loss of rights for applicants/patentees.  Administratively, the Office needs to ensure that the proper party is communicating with the Office for the purposes of prosecuting or maintaining an application.
  • CIPO would also like to note that due to technical limitations, it cannot identify all the applications/patents where a particular patent agent has either been appointed or is the associated patent agent on a file.  It is the responsibility of the successors to identify all patent applications and patents where the withdrawing patent agent has been appointed.
  • CIPO agrees that there is a lack of guidance with respect to this section and would appreciate IPIC's suggestions to ensure a smooth transition when there are multiple successors. 
  • With regards to Rule 20 and who may sign the revocation / appointment of agent, CIPO notes that Rule 20(3) clearly identifies that the applicant and/or that patent agent may sign.  Note that the would-be patent agent may not sign in place of the applicant.

At this point in the meeting, items 5 b) and 5a) on the agenda under "Varia" were discussed.

f) Requisitions and electronic deadlines

Kay Palmer had submitted this item.

  • Her firm very recently had instances where two (2) requisitions issued for an application. In both cases, the office actions were identical except for the date on the office action. In one of the cases, the first office action had a 6 month deadline and the second had a 3 month deadline.
  • It appears that issues continue in expediting requisitions at CIPO. An update from CIPO is requested on Requisition processing procedures.
  • D. Boudreau responded that the Patent Office has also noticed some errors related to office action deadlines. It appears that in most cases the examiner has not selected the correct deadline for a special order. The Office has taken measures to ensure the accurate deadlines are selected by examiners, by :
    • Reminding Patent Examiners of the procedure
    • Adding a QC step performed by the personnel of the Outgoing Correspondence Unit.
  • The Office is unsure what has occurred in instances where two office actions, identical except for the date, are issued for a single application. Clients are asked to provide application numbers to enable further investigation. Clients are also encouraged to use the online feedback mechanism to report any issues such as these.

g) Application marked administratively “DEAD”

Jenna Wilson and Peter Wong brought forward this issue.

  • In a particular application, events unfolded as follows:
    1. CIPO believes that an Office Letter with a requisition was transmitted, but no such correspondence appears to have been sent;
    2. The Application is first deemed abandoned, then irrevocably abandoned; status updated to "dead" in TechSource;
    3. Agent discovers dead status and cause, submits correspondence requesting correction with evidence; and
    4. CIPO receives and dockets letter; however, because the application is marked dead, the task to respond to the letter is automatically deleted. IPIC believes that this is the most worrisome aspect of this situation.
  • IPIC would like to understand the procedure for “DEAD” applications, the process for correcting “dead” status, and particularly, how correspondence for such applications is handled. IPIC believes that ALL correspondence concerning ANY application or patent should be docketed.
  • IPIC notes that US patent procedure provides for a petition to revive an abandoned application for unintentional delay in responding to an office action, that may serve as a template for a process to address a deemed "death" of a Canadian application.
  • IPIC also suggests that CIPO review the MPEP, 711.03(c): I. A. Petition to Withdraw Holding of Abandonment Based on Failure to Receive Office Action:

S. Vasudev responded to this item.

  • CIPO regrets any errors as a result of lost correspondence.  The Office is working to identify and minimize these occurrences. Most instances of lost mail are caught during the abandonment stage when the courtesy notice of abandonment is received. Few patent applications proceed to a ‘dead' status.
  • All correspondence received with respect to patent applications and patents is scanned and tasked to the appropriate group, regardless of file status (including DEAD files). The Office's system does delete tasks when a patent application goes beyond the period of reinstatement.  This is a reasonable tool that allows the Office to concentrate its efforts on patent applications that remain active. However, the correspondence is not deleted and remains on file.
  • If the patent application is either abandoned or beyond the period of reinstatement (DEAD), the applicant can submit an affidavit stating that they never received the requisition that triggered the abandonment. The Office will review and return the application to good standing. The applicant should continue paying maintenance fees during this time as the Commissioner has no authority to extend timelines for the payment of fees.
  • It would appear that the issue of automatically deleting tasks is only a problem when the affidavit and request to return to good standing is received close to the end of the reinstatement period. Agents are invited to contact the Client Service Centre in these rare cases so that the Office can perform a follow-up.
  • With respect to IPIC's suggestion that a designated group be formed at CIPO to handle these types of situations (as with the Office of Petitions in the U.S.), A. Lajoie noted that all correspondence to the Patent Branch is addressed to the Commissioner. She noted however that the Office will take note of and look into the suggestion.

h) Refunds for excess fees process streamlining

This item was brought forward by Adrian Zahl.

  • He noted that, at present, when a fee is overpaid, IPIC members receive a notice from CIPO which invites them to request a refund. Members send a refund request letter to CIPO and then monitor their deposit account to ensure that the refund is actually paid. Only then can the client be refunded. The monitoring process entails a lot of effort by IPIC members (and likely by CIPO). IPIC suggests that CIPO improve the refund practice by advising the agent:
    1. when the deposit was (will be) made; and
    2. which application/patent number is associated with the refund.

D. Boudreau responded to this item.

  • Once a month, CIPO's Finance provides to the client a statement indicating all activities on their deposit account. The report includes the information requested above.
  • The Office could improve the refund practice by making slight changes to the existing process. The Office could modify the process mapping PB-2A-PS-26 by issuing confirmation letters to the client after the receipt of the automated email from Finance (informing the employee that the refund has been done). The automated email includes the date the deposit was made.
  • The volume of refunds since April 2016 is approximatively 700. The suggested modified process would add an average of 2.25 minutes per refund. (700 x 2.25 = 1575 min. / year = 26.25 hours/ year = .5 hour /week).

i) Possible new service at CIPO

J. Wilson had made a suggestion for a possible new service at CIPO:

  • CIPO could generate a spreadsheet listing the status of every single active patent or application (i.e., patents in force, and applications that are not dead) for which that agent is the listed authorized correspondent, together with the agent's reference number, current status and suspension status of the application (e.g., “reported” and “in grace” = OA mailed, deadline for response passed but is still within the mailroom processing window). The agent can use it to cross-reference against their own database to confirm the status of their cases and investigate cases that are not on the list (one would not include “dead”, “expired”, or “lapsed” because that list would be very long, but if the agent has a patent application that does not appear on the list, the agent knows to investigate).
  • IPIC would like CIPO to consider whether this status spreadsheet may become a service that the Office would consider supplying upon the request of an agent and (likely) for a fee.
  • A. Lajoie responded that this request is both pertinent and encouraging in that it aligns directly with CIPO's efforts to provide significantly greater client access to their IP portfolio of products and services. The Government of Canada believes it is important to provide Canadians with access to the data that is produced, collected, and used by departments and agencies across the federal government. It is equally important that the data is made available through a single and searchable window. As CIPO continues its IT Modernization Program, the Office is working towards the ability for clients to self-serve by providing them access to all their patent related information in one place. Unfortunately, the Office is not there yet.
  • While feasibly possible, creating such information on an ad hoc basis invites a greater likelihood of risks associated with consolidating data from both agent and CIPO's operational systems. Invariably, discrepancies are a natural outcome of consolidation exercises. The Office believes that due to existing operational lags, communications using current processes will likely create an undue administrative burden (time consuming) for both CIPO and the agents by spending time to correct minor discrepancies.
  • For the time being, perhaps, agents would consider receiving this information on a specific date on a yearly basis.

j) Inconsistency in divisional assignment and MOPOP

Louis-Pierre Gravelle submitted this item.

  • He noted that CIPO has stopped bringing forward assignments for divisional application. He asked that CIPO advise when this change occurred and the reasoning behind this change. IPIC also requests clarification on assignment procedure for divisional applications. IPIC prefers that assignments be brought forward as described in Chapter 14.10 of the MOPOP.
  • D. Boudreau responded that the change to the process followed amendments to the Patent Rules that came into force on June 2, 2007 and another set of amendments that came into force on October 1, 2010. On June 2, 2007, section 37 of the Patent Rules was repealed thereby eliminating the requirement to register a document showing the transfer that had occurred from the inventor(s) to the applicant(s).  An applicant would only be required to submit a declaration of entitlement. On October 1, 2010 completion requirements were amended to indicate that the declaration of entitlement was no longer a completion requirement.
  • In a Technical Questions and Answers piece published by CIPO shortly before October 1, 2010 – the Office addressed the process of “bring forwards” as follows:
    • Can applicants request "BFs" (Bring Forwards) of the chain of title for divisional applications?

      No. The Office will no longer maintain a "BF" system as there is no need to re-register assignment documents. Applicants that still request a "BF", however, will receive a registration certificate which will contain a unique registration number, as the chain of title now commences with the applicant/latest owner, instead of the inventor(s).

    • Will divisional applications be handled differently after the Rules are amended?

      No. As is customary, divisional applications still need to be filed by the owner of the original/parent application. That said, instead of the entire chain of title being automatically brought forward from the original/parent to the divisional, only the latest owner of the original/parent application will appear in the chain of title of the divisional application.

  • While the process might be different from what is reflected in MOPOP presently, the intent has remained the same in that (as indicated above) “Applicants that still request a "BF" will receive a registration certificate which will contain a unique registration number, as the chain of title now commences with the applicant/latest owner, instead of the inventor(s).” Since the inventors do not appear anymore in the chain of title, CIPO does not have the ability to process them as before.
  • When the Office receives a divisional application with a request to bring forward assignment(s) and the fee(s), the Office does not requisition the applicant to provide a copy of the assignment(s). The Office takes the assignment(s) registered in the Parent application and registers them by giving new registration numbers.
  • CIPO will look into amending the MOPOP to remove the inconsistency in this practice.

5. Varia

Items 5b) and 5a) were moved to follow item 4f) on the agenda.

a) CIPO website (IPIC)

J. Pivnicki had asked when IPIC members can expect the CIPO website to move to and what the new address would be.

  • N. Tremblay responded that the goal is for the website and applications to migrate by the end of 2017. The migration dates for apps might vary, as they must each be updated individually. Some are going live shortly and others will be released throughout the year. The address will still be active and the Office's main alias.
  • The address will be:
    • This page is already live, but currently does not link to CIPO's homepage.
  • The Office is also using this opportunity to review and update some of its content and site structure (e.g. patent fees)
  • The Office hopes that the end product will be a more user-friendly site that will provide better resources to support the community.

b) Unity Review Board (CIPO)

At the previous 2PC meeting of October 25, 2016, the Office had indicated that it would follow up on a question J. Wilson had asked regarding whether there is an actual Unity Review Board (URB) that reviews disputes between the applicant and examiner regarding unity of invention and, if so, how the review takes place.

  • N. Tremblay responded that an URB may be formed in cases where the examiner has maintained that there is a unity defect for (at least) two requisitions, and the examiner considers that the applicant's latest response and/or amendment still fails to overcome the unity defect. The examiner's section head and director then review the file. If either the section head or director does not agree with the unity defect, the file is returned to the examiner for further prosecution. If the section head and director agree that there is a unity defect, the director will convene an ad-hoc committee called an URB that consists of three members chosen by the director. The URB reviews the application, the examiner's report and the applicant's responses and will arrive at one of three outcomes:
    1. If the URB does not agree that there is a unity defect, the application is returned to the examiner for further prosecution;
    2. If the URB agrees that there is a unity defect, but determines that further clarification of the reasoning or unity groups is required, the examiner will prepare a further requisition with that clarification; and
    3. If the URB agrees that there is a unity defect and finds that the proposed reasoning and groupings are clearly expressed, a notice of direction is prepared. That notice is reviewed by the section head, the Program Manager of Examination Practice, the director and the Assistant Commissioner of Patents. The notice is then forwarded to the Commissioner of Patents for approval and signature, and then the notice is sent to the applicant.
  • In the case of outcome 3), if the applicant amends the application to overcome the unity defect, the examiner then creates a letter confirming the successful limitation of groups and the application returns to regular examination. If the defect is not overcome, the application will be forwarded to the Patent Appeal Board (PAB) for unity assessment. If the PAB agrees that the unity defect identified in the notice of direction is not overcome, a recommendation of refusal may be made to the Commissioner of Patents.

c) Proposed information bulletin in response to suggestion at IPIC AGM

  • D. Boudreau presented a proposed visual sample of an information-type bulletin for the agent community that could be presented by the Patent Branch on a quarterly basis on the CIPO website. The types of information that could be presented therein include examiner recruitment, innovation strategies, PPH, statistics etc. D. Boudreau asked if this would meet IPIC's request at the IPIC AGM regarding providing such information and what sort of categories of information would be of interest to IPIC members. The Office is open to suggestions in this regard.
  • M. Paton responded that this would need to be brought back to the committee members for their feedback. She added that a question-answer type section may be appropriate.

6. Next meeting and closing remarks

  • The next 2PC meeting has been scheduled for Tuesday, June 13th, 2017 at 1PM, at Place du Portage, Phase 1, room 24-G.
  • J. Pivnicki agreed to have a list of proposed topics sent to CIPO by May 23rd, 2017.

The meeting adjourned at 3:10 PM.