Thursday, December 12, 2013
Chair: Christine Genge, Smart & Biggar/Fetherstonhaugh LLP
Attendees
CIPO
- Mesmin Pierre, JLC-ID Co-chair (Director)
- Carla Giannetti (A/Manager, Business Operations)
- Micheline Vincent (Project Manager, IT Projects)
- Brittany Stief (Policy Analyst)
- Tracey Fitzpatrick (Program Officer)
CIPO Observers
- Stephanie Houle (A/Supervisor, Examination)
- Kathleen Bracci (Program Officer)
- Connie Beauregard (Planning Analyst)
- Bruce Richardson (Policy Analyst)
IP Profession
- Christine Genge, JLC-ID Co-Chair (Smart & Biggar/Fetherstonhaugh LLP)
- Clark Holden (Osler, Hoskin & Harcourt LLP) via teleconference
- Jean Lee (Ledgley Law) via teleconference
- Cameron Funnell (Oyen Wiggs Green & Mutala) via teleconference
- Jean-Charles Gregoire (Marks & Clerk Canada)
- Stephen J. Perry, Vice-Chair & Ex-Officio (Perry + Currier Inc./ Currier + Kao LLP) via teleconference
- Dan Raymond (G. Ronald Bell & Associates)
- Taiji Yoshino (Nelligan O’Brien Payne)
- Grant W. Lynds (Gowlings) via teleconference
- Alain Provost (ROBIC, LLP) via teleconference
- Sean Xiao-He Zhang (Dale & Lessmann LLP) via teleconference
- Jennifer Jannuska (Deeth Williams Wall LLP) via teleconference
Absents
- Courtney Daogoo
- Kent Fincham
- James E. Gastle (Gastles)
- Curtis B. Behmann (Borden Ladner Gervais LLP)
- Peter R. Everitt (Ridout & Maybee LLP)
- Kimberley Ann Lachaine (Kirby, Eades, Gale, Baker)
- James E. Longwell (Gowlings)
- Lawrence Loumes (Norton Rose Fulbright Canada LLP / S.E.N.C.R.L., s.r.l.)
- Michel Sofia (Bereskin & Parr LLP)
1. Welcome and Introductory Remarks
(C. Genge)
Welcome to all.
2. Introduction Remarks
(M. Pierre)
Progress to date since April 2013
- Global inventory is at 6300 files.
- 3900 applications are awaiting a first action.
- 4600 applications were filed this year, which is on par with our forecasts.
Service Standards
- Filing to conformed – 2.9 weeks.
- Filing to first action – 8.3 months. This number has seen an increase as a result of changes in our process but we will see it decline soon.
- Filing to registration – 12.5 months.
Our Performance Improvement Plan is to reduce the time between filing and registration to 7.7 months by the end of the fiscal year 2016-17.
We had many complex files that had been pending for over 30 months. We have addressed them.
The process and procedures may need to be addressed to put better systems in place in order to address the old file backlog.
A model has been developed to work at arriving at this objective.
The Service Standards may be reviewed and adjusted as progress is made.
The Office would like to know what information is relevant in terms of Service Standards. Input from the agent community could be sought.
Human Resources Updates
- Francine Bouthillier has taken an assignment with the Enterprise Solutions Branch. Her replacement will be named shortly.
- Lynne Pelletier is scheduled to return to the role of Manager of Business Operations in January.
- A new CR-04 processing clerk began this week.
- The Office is working on the Modern IP Framework Pillar, and is looking to increase our capacity to support that area.
3. IT Updates & Demo
(M. Vincent)
Updates
Further to a request for recommended programs to convert PDF files to TIFF, the Office is aware of three options that are available on the web. The names will be emailed to members in the next week. (Information was sent to members on December 12, 2013.)
The Office hopes to soon have the ability to accept PDF files, thus eliminating the need to convert drawings.
The Office will be working on a feature to allow clients to file using XML uploading in the near future.
It is now possible to see images as part of the submission review.
A report is now run weekly on Fridays, to ensure that all maintenance is visible on the web.
Modifications to Accelerated Examination and Delay of Registration processes should be ready in the new fiscal year.
Regarding any Delays of Registration being cancelled in the past – this was human error. A new process is being put in place where this action can be carried out only by a system administrator.
Regarding a comment that it is taking approximately 30 seconds to load an image, members are asked to send examples of such occurrences to Micheline Vincent (micheline.vincent@canada.ca).
Regarding drawing quality, the Office was unaware of any problems.
C. Genge commented that the issue appears to occur when computer-generated drawings and photos are scanned by the Office.
M. Vincent stated that the Office would look into the issue of photographs.
M. Pierre asked how frequently the issue occurs.
C. Genge replied that this is a long-standing issue that causes additional expenses to clients by requiring them to have grayscale images converted to line drawings.
M. Pierre responded that the Office would look into the scanning issues and come up with a solution.
Updates to electronic application form
CIPO has spent much of the past year focused on corporate initiatives. Improvements were made to the online application on July 31 and again on December 4. The goal is to have a form that meets the client needs. The Office has tried to capture all of the requests in the new online form. Any questions regarding electronic filing should be directed to Micheline Vincent (micheline.vincent@canada.ca).
JC Gregoire asked when the forms will time out.
M. Vincent replied that they would time out after 30 minutes of inactivity.
D. Raymond asked if there was a maximum number of templates.
M. Vincent replied that there is no maximum number of templates.
C. Genge asked if the confirmation letter had changed.
M. Vincent replied that it is much like the existing filing certificate.
JC Gregoire asked if there were plans to allow for amendments online.
M. Vincent responded that this is definitely part of the overall plan.
T. Yoshino asked if it is possible to resave a template in a different name.
M. Vincent responded that it may be possible to create a duplicate. This request will be added to the wish list. The next updates will be released early in the upcoming fiscal year. Any comments or requests should be submitted as soon as possible.
JC Gregoire asked if the review stage involved document conversion.
M. Vincent replied that images would be displayed for approval prior to completing step three of the application process.
4. Policy Updates
(B. Stief)
Hague System for the International Registration of Industrial Designs
- Our Office plans to continue communicating with the U.S. and other international property offices (IPOs) about their experience with the Hague implementation.
- If it is the intent to join the Hague System, the Office could seize that opportunity to amend existing legislation and regulations accordingly. This would allow the Office to comply with Hague requirements, but also improve elements of the national system to ensure that processes are in line with the international registration ones.
- The Office will try to keep amendments as flexible as possible to ensure the ability to adapt to any future changes.
- The Office has had some preliminary discussions with World Intellectual Property Organization (WIPO) with the intention of gaining a better understanding of the Hague System.
- There have also been preliminary discussions with staff members at the United States Patent and Trademark Office (USPTO) about their experience.
- The Office does not yet have a mandate to join the Hague System, and as such, at this stage is mainly carrying out research and discussions internally, so that it may be better informed.
- As the process moves forward, it is the Office’s intention to keep the JLC members up to date, and in terms of the kinds of changes our Office will consider (e.g., the various Declarations that we could make to WIPO as a Hague Member), input from JLC members could be sought.
M. Pierre explained that there is a need for CIPO to be informed of lessons learned and best practices from those IPOs that are already part of the system.
C. Genge asked if there are any plans as to how the Actwill be modernized while implementing the Hague Agreement.
M. Pierre responded that there is a need to align national laws with the new system and modernize where possible.
C. Genge would like to take this opportunity to review the Actas a whole. We do not want to lose the opportunity by focusing only on the Hague.
M. Pierre agreed but reminded members that it is necessary to work within the mandate that will be given by the Government.
Electronic Icons/Graphical User Interfaces
The Office indicated that it will be carrying out research on this topic to determine how other IPOs treat graphical user interfaces (GUIs). The Office also noted that the JLC requested this topic be put on the agenda for this meeting.
Due to limited resources at this time, the Office has not been able to carry out research on this matter; however we intend to work more on this issue in the near future. The Office is conscious of the evolution of industrial design (ID), and as such, hopes to align itself with practices of other IPOs in this area.
M. Pierre invited members to send the Office any information they may have in this area. He emphasized that the goal is to have a modern system. The Office could start with the areas that will have a large impact, and then move on to the smaller issues.
K. Bracci asked what the actual issue is.
C. Genge replied that the concern is electronic icons that are animated. The U.S. protects these with snapshots intended to show transitions. Other countries protect actual animation. She will look into which countries protect animation and follow up.
Delay of Registration
The Office previously sought feedback from members on a proposed change Industrial Design Office Practice regarding delays of registration. The initial proposal was to reduce the delay period to two months (commencing on the date of allowance) and to remove the two-month grace period within which applicants may file divisionals further to an amendment to the parent.
Taking into account the position of the Office, and that of the JLC members, the decision has been made to amend the Office Practice (and IT systems) related to delay of registration to reflect the following:
- Delay of registration begins on the date of allowance.
- Any subsequent delay request would begin upon the expiry of the initial delay.
- A confirmation of the request for delay of registration would be sent by our Office upon receipt of the request.
- At allowance, a notice stating that the delay has begun will be sent (but this would not include a list of associated applications as was initially proposed).
- The delay would be for a period of up to four months, and clients would have the flexibility to choose a reduced period (e.g., two months).
- The two-month Parent BF practice would continue, giving applicants time to file divisional applications.
C. Giannetti explained that the Delay of Registration changes will take place as soon as possible in the new fiscal year, which begins in April 2014. Any subsequent requests for delays received between now and then will be pre-set for the delays to begin once the first one expires.
C. Genge asked if subsequent delays will be automatic.
C. Giannetti replied that this would be the case, but that the practice would be monitored.
C. Genge asked if there would be a consultation.
M. Pierre responded that the comments of JLC members were taken into account. The public will be informed via the electronic email subscription service.
5. Operations Updates
(C. Giannetti)
LEAN update
The pilot project began in May and ran for four months. The Office continues to improve its processes. The goal is to implement a second LEAN project to streamline processes during the winter/spring of 2014.
Statistics
The Office would like to know what statistics are meaningful to the agent community. Are there any that are not currently provided that would be useful? Members are asked to please provide comments to carla.giannetti@canada.ca.
JC Gregoire commented that the grant rate would be an interesting statistic to know.
D. Raymond asked what percentage of files are submitted electronically to determine if the rate is improving.
Members are reminded that in cases where there is an assignment filed on an application, the amended application needs to reflect the new owner.
It is not uncommon that many applications are registered concurrently in a group. When a file with an abandoned status is a part of such a group, it will hold the group from registering until that file becomes inactive (when a file is abandoned it remains in that state for six months, after which it becomes inactive if it has not been reinstated). It is possible to withdraw an abandoned file that would allow the batch to register at an earlier date, provided that the other files in the group are in an allowable state.
C. Genge explained that it would be helpful to know when files are associated.
C. Giannetti replied that agents and applicants are welcome to contact the examiner to confirm this information.
6. IPIC Items
(C. Genge)
All items were covered earlier in the meeting.
7. Round Table
(All)
C. Genge asked to have the information on the management team included when minutes are sent out.
JC Gregoire expressed his thanks for moving the old files forward in the process.
8. Closing Remarks
(C. Genge)
Everyone is thanked for their input. It may be useful to have the next meeting earlier in the spring if many changes will take place early in the new fiscal year.