Minutes - Thursday, June 7, 2012
Chair: Mesmin Pierre, Copyright and Industrial Design Branch
Attendees
CIPO
- Mesmin Pierre, JLC — ID Co-chair (Director)
- Lynne Pelletier (Manager, Business Operations)
- Francine Bouthillier (Manager, Planning and Resource Management)
- Rita Carreau (Manager, Technical Policy)
- Micheline Vincent (Project Manager, IT Projects)
- Tracey Fitzpatrick (Program Officer)
CIPO Observers
- Kathleen Bracci (Program Officer)
- Carla Giannetti (Supervisor, Examination)
- Adam Racine (A/Supervisor, Processing and Search)
- Suzanne Provencher (Communications Officer)
IP Profession
- Christine Genge, JLC — ID — Co-chair (Smart & Biggar)
- James Longwell, (Gowling, Lafleur and Henderson) * via teleconference
- Alain Provost (Robic) * via teleconference
- Curtis Behmann (Borden, Ladner Gervais)
- Gary Partington (Marks & Clerk) * via teleconference
- Kimberley Lachaine (Kirby, Eades, Gale, Baker)
- Susan Chao (MBM IP Law LLP) * via teleconference
- Taiji Yoshino (Nelligan O'Brien Payne)
- Andrei Ionescu (G. Ronald Bell & Associates)
- Clark Holden (Osler, Hosken & Harcourt, LLP) * via teleconference
- Stephen Perry (Perry & Currier)
Absent
- Ian Paul Goodman (Shapiro Cohen)
- Jennifer Jannuska (Deeth Williams)
- Kent Fincham (MacRae & Co)
- Christopher Hunter (Norton Rose OR S.E.N.C.R.L., s.r.l./LLP)
- Peter Everitt (Ridout & Maybee LLP)
- Michel Sophia (Bereskin & Parr LLP/S.E.N.C.R.L., s.r.l./LLP)
1. Welcome and Introduction
(M. Pierre)
- Welcome to the JLC meeting I have been working in the Federal Government for the past 10 years, most recently with Industry Canada. I have also spent time with Parks Canada and Canadian Heritage.
2. Introductory Remarks
(C. Genge)
- The JLC-ID is a great committee. The communications between the Office and the profession are very helpful.
3. Introductory Remarks
(M. Pierre)
CIPO's Business Strategy
- CIPO's new 5-year Business Strategy will be launched later this month. It outlines the overarching strategic direction of the organization, and sets the foundation for the 2012-2013 Business Plan, which outlines the tangible activities that CIPO will undertake in the first year of the Strategy. The Strategy is based on thorough consultations with staff and stakeholders.
- G. Partington asked if the Business Plan would be made public.
- M. Pierre responded that the Business Plan is only internal, but that the Business Strategy would be made public.
Trends and Statistics
- 2011-2012 brought in 5170 Industrial Design applications.
- There was in an increase of 25% in ID maintenances from the previous fiscal year.
- We have a forecast of 5261 ID applications for 2012-2013.
- The Branch is ahead of its service standards for turn-around times, with an average of 2 weeks to conform an application, 4.5 months to a first action and 9.5 months to registration.
Human Resources
- There are 2 new junior examiners scheduled to begin training in September.
4. Updates on IT Initiatives
(M. Vincent)
Industrial Design e-maintenance
- The Industrial Design e-maintenance feature was launched in December 2011. April and May have shown 21% of maintenance requests being filed electronically. The Branch launched a promotional blitz in April, which included sending letters to approximately 75 frequent filers, an email to subscribers, and published a notice in the IPIC Bulletin. Training was offered to firms in Ottawa, Toronto and Montreal. Stakeholders were asked if they are aware of the mail outs. Or should they be sent to someone specific in the firms?
- A.Ionescu asked what the target is for the percentage being electronically filed.
- M. Vincent responded that the hope is to eventually have all maintenances filed electronically, but that for now, the goal is to simply increase the percentage of e-maintenance users.
- C. Genge responded that members would bring the information back to the firms. Are there plans to deal with the Clearing Houses?
- M. Vincent responded that the Clearing Houses were contacted in the original mail-out, and that CID would be following up with them.
- G. Partington offered to contact CPA, and asked that someone please forward him the document.
- Action: CID will forward the Step-by-Step instructions to pay an ID maintenance online to G. Partington. (Note that this was sent out on June 18th, 2012).
DesignPlus Release
- There was a DesignPlus release earlier this week.
- The date format has changed on the Registration Certificates, Correcting Registration Certificates, Maintenance Confirmation letters and the Filing Certificates.
- Both paper and electronic formats for the Maintenance Confirmation letters are now the same.
- C. Genge asked about the format for Delay of Registration.
- M. Vincent responded that further changes would not take place until 2013. The Enterprise Solutions Branch is beginning an Oracle update later in June, and because of this, it will not be possible to make any further modifications to DesignPlus until after February 2013.
Online Filing
- CIPO has agreed to redesign all online filing applications, beginning with Copyrights and Industrial Designs. The goal is consistency throughout the product line electronic applications. The new applications are to be deployed this fiscal year.
- S. Perry asked if there would be a consultation on desirable features.
- M. Vincent responded that the changes to Copyright would be very basic, and would therefore not be consulted on. Requirements for ID will be gathered shortly. Any comments already received will be considered and added as requirements.
- F. Bouthillier further mentioned that an ad-hoc meeting would be set up in early July.
- Action: CID will set up an ad-hoc meeting of the JLC – ID to discuss the updates to the ID online filing application. (Note that the ad-hoc meeting has been scheduled for July 9th, 2012).
- C. Genge commented that these changes are very important and perhaps an email should be sent out to subscribers for their comments.
- M. Vincent explained that CIPO would also be looking at general correspondence, and a general e-services type of form, which would include paying fees, submission of responses to Office Actions, etc.
- S. Perry asked if there are any plans to look at online files similar to the PAIR system in the US.
- M. Vincent responded that CIPO is aware of interest, but that changes such as this would not take place for some time.
- A. Ionescu asked if there would be an official consultation on the IT Strategy.
- M. Pierre asked if it would be desirable to see the full action plan.
- A. Ionescu responded that he felt a full redesign of the system would benefit from stakeholders' input.
- Action: M. Pierre will bring the request to the CIPO Executive Committee. (Note that following the meeting, M. Pierre confirmed with the Executive Committee that there will be a formal consultation regarding the IT Strategy).
5. Update of Industrial Design Practices
(R. Carreau)
Analysis regarding the Hague Agreement
- CIPO is currently looking at the possibility of acceding to the Hague Agreement. A gap analysis of where CIPO complies and doesn't is ongoing. Based on the analysis done so far, it would seem that no significant changes to the Act will be required, with the exception of changing the term of protection to 15 years. Most changes that would be required are of an administrative nature. A legal analysis has been completed. We have also identified changes that are mandatory versus changes where we have discretion. We are still assessing our options with respect to the discretionary changes. Once the gap analysis is finalized, the next step will be to have further economic research done (by corporate policy and IC policy) on the impact Hague would have on our current system as well as the benefits of acceding to the Hague Agreement.
- S. Perry noted that he looks forward to seeing the legal gap analysis. It appears that the US still has no political will to implement the Hague Agreement, but that Japan is looking at implementing in 2014.
- R. Carreau asked if it was still IPIC's preference to retain a substantive examination system.
- C. Genge confirmed that yes, this was the case.
Accelerated Exam/Priority: Consultation
- Based on the comments CIPO received, FICPI endorses the proposal in its current form. IPIC is in support of the proposal, but would like to go a bit further and recommends that the proposed change also be applied to applications subject to normal examination.
- CIPO does not have the capacity to extend the proposed practice at this time. In order to implement this new practice for all applications, several changes would have to be made to the process and to IT systems. Also, each time a certified copy would be provided, the examiner would have to compare the certified copy of the foreign filing with the Canadian application to validate that it is for the same design and that it supports the claim to priority. In the case of a discrepancy, the Examiner would have to address it in a report. This extra work at the examination stage with the current resources we have would slow down the process, especially given that a large percentage of applications include priority claims. For now, this proposed practice will respond to the complaints we received in the specific situation where a request and fee for accelerated examination was submitted but the client did not feel the application was being examined soon enough. The Office will consider the option of extending the practice sometime in the future should it become feasible to do so.
- C. Genge replied that IPIC would be happy with this, and is just looking at how the proposal could be made even better. (It is noted that after the meeting, the Office verified that the practice for accelerated examination was changed in 2009 to remove the requirement for a justification. Since that time, the Office has accelerated examination for an application upon receipt of the request and prescribed fee. R. Carreau has confirmed this with G. Partington by telephone.)
Notice of Allowance and Delay of Registration
- The comments during the consultation and during discussions at the last JLC meeting have been considered. Two major issues were raised with regard to issuing a courtesy notice of allowance: Concern was expressed about the legal certainty of providing a notice as a courtesy only, and about whether there would be any recourse for an applicant in the case where the Office fails to send the notice. The Office agrees that this is problematic as there are no provisions in the Industrial Design Act requiring a notice of allowance , and therefore no certainty.
- Secondly, there was concern that the proposed practice did not provide enough time between the notice of allowance and registration, i.e. rather than 5 days, it was expressed that one month or even two months would be required in order to get further instructions from an applicant. The Office considers that introducing a significant time delay before registration for all applicants would penalize applicants who do not require the additional time. This is not a direction we want to take, as it is inconsistent with one of CIPO's main objectives to provide the timely grant of IP rights. Given these issues, the decision has been made not to provide a courtesy notice of allowance. However, the Office would still like to implement changes to the delay of registration process. CIPO is still considering providing some flexibility concerning the length of the delay, as well as starting the delay on the date of allowance, and sending out a confirmation of the start of the delay once the application is allowed. It is hoped that this will address the lack of certainty with the current practice (i.e. currently, a delay of registration starts on the date CIPO receives the request). The Office is still in the process of developing the new practice and procedures around this.
- C. Genge asked if there would be further consultations.
- R. Carreau responded that she would contact her as co-chair of the committee to get member's views as to the best approach to receiving input from stakeholders, whether by scheduling an ad hoc meeting or by conducting further consultations.
6. Industrial Design Operations
(L. Pelletier)
Delays in processing corrections
- A quality working group has been implemented for the review of correction requests. It should be noted that the requests for corrections identified by JLC Members prior to the meeting regarding the quality of drawings took more time to process as the Office was trying to find the cause of the problem. All of the correction requests that were outstanding and mentioned in your submissions have now been addressed.
Convention priority
- Subsection 20(1) of the Industrial Design Regulations states that the name of the country, filing date and the filing number of the foreign application are required for the purposes of making a priority convention claim. Agents are reminded to provide the name of the country, as it is sometimes omitted when the priority convention claim is based on an international deposit. The requirements are further specified in section 3.4.2 of the Industrial Design Office Practices (IDOP).
- G. Partington commented that he received a notice of omission after the due date for responding had passed.
- L. Pelletier replied that when there is very little time remaining for the submission of any missing information, processing will make a courtesy call in those circumstances in addition to sending the notice by mail.
7. IPICID Committee Items
Parent ans Divisional Applications
- L. Pelletier explained that when a divisional is filed, it is linked to the parent application in the system and both will proceed to registration on the same day, so a request for association on the part of the applicant in those circumstances is not necessary. Written confirmation of this association is not currently the practice, but upon request, written confirmation will be provided. The Office will amend the standard paragraph related to the filing of divisionals to clarify that the parent and all divisionals will proceed to registration together. The Office will also amend the relevant sections of the IDOP accordingly.
- C. Genge asked if a notice would be sent out should changes to the IDOP occur.
- Action Item: R. Carreau responded that the Office would send an email to subscribers.
- An IPIC member submitted a concern:
- "I have experienced some difficulty getting the ID Office to confirm that divisionals and parents will be held and allowed to proceed to registration on the same day. I make the request in both cases and then get letters back confirming a request for a delay of registration to a specific date. The date provided is different in the two cases, leaving me with the feeling that the Office has misconstrued the request and that they have not cross-referenced the two cases to permit them to proceed to registration together on the same day. I've run into this on more than one occasion"
- L. Pelletier responded that this is an unusual circumstance. It is possible that the delay dates were different because the requests for delay were received on different dates. However, since the applications are associated, they will proceed to registration on the same date.
- C. Genge asked, if, four files were requested to be associated, and then a request for a delay of registration was filed, would it be necessary to pay for four delay requests, or just one.
- L. Pelletier responded that in that particular case, all associated files would benefit from the delay.
- C. Genge asked whether the Office revisits requests for associations submitted by applicants
- L. Pelletier responded that currently, the Office will not disassociate applications when the associations have been made at the applicant's request.
- C. Behmann asked, in the case of a parent application with divisional, when a delay has been requested on the parent, would it be necessary to request a delay on the divisional too?
- L. Pelletier responded that the divisional would benefit from the delay request on the parent.
Priority information on a Registration Certificate
- L. Pelletier explained that if a priority claim is valid, the priority information will appear on the filing certificate and on the covering letter in the registration package. If the Canadian filing date is beyond 6 months of the priority filing date, a notice of refusal will be sent and the information will not be reflected on the filing certificate. If the request is within 6 months of the priority date and information is missing, a notice of omission will be sent with the filing certificate. The filing certificate will reflect the priority information as filed. Missing information will be entered as "unknown". The notice of omission will now be stapled on top of the filing certificate if there is no objection to this.
- J. Longwell explained that there have been cases where the filing certificate contained the priority information, but the registration did not contain the information. He has sent an inquiry to CIPO, but has not heard back yet.
- L. Pelletier asked if a notice of omission was received.
- J. Longwell responded that there was no notice of omission received.
- L. Pelletier explained that it was likely a training issue. A second step may have been missed in the process.
- Action Item: The Office will look at training procedures and consider making changes to the system. Should there be any further questions on this subject; agents are invited to contact Lynne Pelletier (819-997-4426), Adam Racine (819-934-9276) or Carla Giannetti (819-997-4376).
Q&A on Parliament Hill
- R. Carreau asked S. Perry if he could comment on the Q&A session he attended on Parliament Hill to discuss CETA.
- S. Perry responded that Senator Joseph Day organized the Q&A session with Parliamentarians (a dozen or so senators and MPs) to learn about the IP implications of CETA. Very little on the subject of ID was discussed. He spoke briefly at the session on the subject of Hague and its implications, and expressed the view that Canada should retain the substantive examination of ID.
8. Round Table
(M. Pierre)
- K. Lachaine noted an improvement in the number of corrections needed. Those that are needed are being responded to more quickly.
- C. Genge asked if all ID documents are destroyed as they are in patents.
- F. Bouthillier responded that they are archived and destroyed based on retention guidelines.
- M. Pierre further explained that the ultimate goal is to be fully digital once CIPO implements its IT renewed infrastructure in the future.
- A. Ionescu asked if there are any plans to accept colour as a feature.
- R. Carreau responded that if it's an issue for clients, they are asked to send in written submissions, including rationale. Thus far, there has not been much demand.
- G. Partington mentioned that he has brought up the issue in the past but there has not been much support amongst the profession.
- C. Genge said that she would bring it up internally among IPIC members.
- S. Perry asked if there was any movement in the SCT regarding harmonization.
- R. Carreau responded that the International Bureau is redrafting the provisions following discussions. The new draft is to be brought forward at the next meeting in September.
- C. Behmann mentioned that AIPPI has sent out an ID questionnaire to various countries. He will bring the results to the table at the next meeting.
- F. Bouthillier reminded members that World Industrial Design Day is taking place on Friday, June 29th. ICSID has chosen "What is Industrial Design?" as the theme this year. An email will be sent out to subscribers. There will be information and articles on the CIPO website in the coming weeks.
9. Closing Remarks
(M. Pierre)
- CID will follow up on the noted action items.
- The next meeting will be scheduled by mid-December.