Minutes - Thursday, May 23, 2013
Chair: Mesmin Pierre, Director, Copyright and Industrial Design Branch
- Mesmin Pierre, JLC – ID Co-chair, (Director)
- Carla Giannetti (A/Manager, Business Operations)
- Micheline Vincent (Project Manager, IT Projects)
- Rita Carreau (Manager, Technical Policy)
- Tracey Fitzpatrick (Program Officer)
- Alan Troicuk (Senior Council, Dept of Justice)
- Stephanie Houle (A/Supervisor, Examination)
- Kathleen Bracci (Program Officer)
- Brittany Stief (Policy Analyst)
- Chi Leung Hung (Automated Systems Officer)
- Christine Genge, JLC – ID Co-Chair (Smart & Biggar)
- James Longwell, (Gowling, Lafleur and Henderson)
- Alain Provost (Robic) *via teleconference
- Kent Fincham (MacRae & Co) *via teleconference
- Kimberley Lachaine (Kirby, Eades, Gale, Baker)
- Taiji Yoshino (Nelligan O’Brien Payne) *via teleconference
- Clark Holden (Osler, Hosken & Harcourt, LLP) *via teleconference
- Jean-Charles Gregoire (Marks & Clerk)
- 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)
- Stephen Perry (Perry & Currier)
- Curtis Behmann (Borden, Ladner Gervais)
- Andrei Ionescu (G. Ronald Bell & Associates)
- Ian Paul Goodman (Shapiro Cohen)
- Jennifer Jannuska (Deeth Williams)
- Philip Oliver (MBM)
1. Welcome and Introduction
Welcome to all.
CIPO is working on finding a harmonized approach to have statistics for all business lines regularly posted online. Until then, CID will continue to send monthly emails.
- New files: 439
- Global inventory: 5300
- Waiting for first action: approximately 3000
- Filing to conformed: 2 weeks
- Filing to first action: 8.1 months
- Filing to registration: 10.4 months.
The increase in turnaround time to registration is because of the LEAN initiative. Many old files are being cleared out. It is expected that the curve will begin to come down by the end of October. The target is 9 months from filing to registration by the end of this fiscal year. The ultimate goal is 7.6 months by the end of 2015-2016.
Britany Stief is joining the Office effective Monday, May 27th. She will be taking over on the policy file for Rita Carreau who will be retiring in July.
The Office has hired 3 new processing clerks. They are currently working on formalities, and there has been a significant decrease in the backlog.
The Office currently has approximately 40 staff.
There is a possibility to increase the policy capacity to work on the Hague treaty.
The webinar held in December was well received
The invitation is open to members to present to CID staff, with a goal of engaging them on trends and policy considerations. Please feel free to contact Tracey Fitzpatrick at firstname.lastname@example.org to discuss possibilities.C. Genge noted that the IPIC National meeting will be taking place in Gatineau this year. There will be a presentation on Designs.
There will be a new co-chair at the next meeting as this is the end of the two year cycle.
3. LEAN management
The goal of the LEAN initiative is operational excellence.
LEAN is an improvement methodology that focuses on maximizing value for the customer by reducing waste and non-value added activities within processes in order to increase timeliness, quality and efficiency. It is a continuous process that has been adopted by CIPO as a whole. CID began work on this initiative in the fall of 2012. The first branch Pilot began on May 6th with Examination. Its goal is to clear out all old files, then work on reducing the backlog.
M. Pierre explained that LEAN is an industrial methodology to streamline processes as much as possible, eliminate waste process, and focus on client needs.
J. Longwell asked if the old files had anything in common.
C. Giannetti replied that there were various reasons. The Office is working with the First in First out (FIFO) approach.
C. Genge asked how it happened before.
S. Houle replied that amendments were processed as they were received. Now, they are processed based on the filing date.
M. Pierre commented that the tendency was to address the low hanging fruit. This is no longer the case.
4. IT Updates
Demo of new application
The Office tried to incorporate as many requirements as possible from the ad-hoc meeting in July. The current version is simply a prototype. The changes will be live by July 31st.
It should be noted that if a drawing does not meet the required format standards, the system will convert it. The applicant or agent will be able to view the converted image and will need to approve the converted image. The Office is working to be able to accept PDF drawings, but will not be ready to do so for the July release.
J. Longwell asked if there was any reasonable program to convert PDF to TIFF?
Action: M. Vincent replied that she would speak to the development team and get back to the members.
J. Longwell commented that because the application is still in fields or forms the process is still labour intensive for clients. It would be much quicker to have a freeform application.
M. Vincent replied that would not be available at this time.
C. Genge asked if there are multiple applications being filed, and the only difference is the drawings, is there any way to replicate it?
M. Vincent responded that this would not likely be possible in July, but that it may be possible in the near future.
C. Genge explained that until the online application is as efficient or more so than a paper application, her office would not be using it.
J. Longwell commented that Trademarks have had a similar approach, but that the driver has been the reduced fees for filing online.
C. Hung asked if it would help if the Office were to use XML in the future.
J.Longwell replied that this could be helpful.
C. Genge asked if it is possible to have multiple files open at once.
M. Vincent replied that this is possible. It is also possible to save the work in progress. The form will bring you to the last step completed once you return to the application.
J. Longwell commented that it would be useful if it were possible to pre-populate the agent information with the IC login.
C. Genge asked if the system associated credit cards to the account.
M. Vincent explained that this was not possible for security reasons.
JC Gregoire commented that it would be nice to see the images once uploaded rather than just the file names.
J. Longwell agreed.
M. Pierre responded that the Office would take the comments into consideration and address them as soon as possible.
Oracle 11G update
These changes are strictly internal to DesignPlus and do not affect external clients. There will be an upgrade to DesignPlus in the coming weeks. Once these changes are completed, the Office will then be able to focus its attention on other updates.
It was brought to our attention that there were 9 files that were maintained but that did not show up on the web. One was because the search was done prior to the weekly update (the web is only updated weekly on Thursday nights). The Office has not been able to determine the cause of the others. While the cause is still being investigated, the Office will run a check every Friday morning to ensure this does not happen again.
M. Pierre further explained that the goal is to update the database on a daily basis.
J. Longwell mentioned that there was another incident of missing priority information on a registration certificate.
M. Vincent offered to address this file offline.
5. International Activities
(R. Carreau, A. Troicuk)
The 28th session of the Standing Committee on the Law of Trademarks (SCT) took place last December. The 29th session will be taking placenext week.
The main focus is the draft provisions for the ID law treaty.
There are still issues to work through including providing technical assistance to developingcountries.
The process is getting closer to a diplomatic conference.
Canadian changes are likely required, including for example:
- Article 3, Rules 2 and 3 list a maximum list of requirements in an application. This will likely require changes to our law, for instance to no longer require the name of a representative for service, but rather only an address for service.
- Canada’s requirement for a declaration under paragraph 4(1)(b) of the Industrial Design Act would not appear to be acceptable.
- The drawing requirements will need to be amended.
- The filing date requirements will need to be simplified. The change of ownership requirements will necessitate an overhaul to our assignment process.
C. Genge asked if the full Act would be opened up to make the changes.
M. Pierre replied that this is the intent.
C. Genge asked if CIPO intended to object to any of the changes.
A. Troicuk responded that CIPO sees this as an opportunity modernize to the Industrial Design Act, and looking at best practices internationally.
JC Gregoire noted that there are fewer controversial changes on the ID law treaty than inthe Hague Agreement.
A.Troicuk explained that the Office is hoping to work through both. The ID law treaty ismostly a formalities treaty.
C. Genge asked what the timeline for the Diplomatic Conference is.
A. Troicuk responded that it’s a guess, but that he imagined it may happen after two moreSCT meetings.
M. Pierre explained that the work on the articles and rules is progressing well.
A. Troicuk asked members how they would like to be engaged in this process.
C. Genge responded that this would need to be discussed with IPIC executive.
J. Longwell mentioned that IPIC has had members participate in meetings in the past butnothing recently.
Action: M. Pierre would like to convene a sub–working group in the fall to discuss andreport back to the JLC.
A. Troicuk commented that the Office is open to any discussion that members would like tohave.
The Hague Agreement
Thank–you to members for the comments on the Hague legal analysis. Changes have been reflected in the text. CIPO is now planning on speaking to the USPTO to learn from theirexperience.
M. Pierre explained that it is still very early on. The Office is looking at what the impacts ofjoining The Hague are. There are some policy questions that need to be answered.
Many technical issues have been raised. There have been preliminary discussions with WIPOincluding about whether Canada would be considered to be an examining office within themeaning of that term as defined under the Hague Agreement.
C. Genge commented that this seems quite significant.
R. Carreau explained that it is a matter that the Office will have to look very carefully at,because it does pose a potentially significant impact.
6. Update on Industrial Design Practices
(R. Carreau, C. Giannetti)
Delay of Registration
A draft of the practice notice has been sent out to members.
The Office has looked at many scenarios that needed to be addressed.
The Office is proposing an automatic two month delay upon request beginning on the date of allowance.
The proposal was created with electronic filing in mind.
When a delay request is received, a letter will be sent acknowledging receipt of the request. Once the application is allowed, a confirmation of delay will be sent indicating the start date of the delay and the earliest possible date of registration once the delay expires. The confirmation letter will also list any associated files at the time of allowance (further associations may be added later on but none will be removed).
C. Genge commented that a delay of two months is not helpful for those clients who want to hold publication for reasons other than the filing of a divisional.
J. Longwell asked where the drive for reducing the delay to two months came from. Could it not remain at six months as it currently is?
R. Carreau responded that this would increase the turnaround time, since the delay will now begin at allowance rather than on the day the delay request is received (which is usually at filing) as per the present practice.
C. Genge explained that this reduction in time was not taking into consideration what clients want. The drive should be to satisfy the client. If the first delay were for two months, could the second delay be for six months?
J. Longwell agreed that this seems like a dramatic change.
M. Pierre acknowledged the members’ comments. The issue is the length of time. The Office will look at the notice and try to come to a compromise between flexibility and certainty in the market place.
C. Giannetti expressed that once the new delay of registration practice is in place, there will no longer be a period of two months granted for the purposes of filing divisionals further to an amendment received on a parent application. Divisionals will need to be filed at the same time as the amendment to the parent application or a delay of registration request will be required.
K. Lachaine commented that she would rather rely on the two month BF that presently exists because it allows 20 days for mailing in the event that a further delay is necessary. The new practice does not allow for the 20 days (i.e. the application goes to registration the day the delay expires unless there are other associated files holding it up)
C. Giannetti explained that the best solution is to file delay registration requests online because then there is no delay between the mailroom and CID.
M. Vincent appreciates the feedback. It helps to understand members’ challenges.
JC Gregoire explained that Canada needs to avoid becoming less competitive.
K. Bracci asked what an acceptable delay would be.
C. Genge replied that the initial two months would be fine for divisionals, but may be tight. It would not be acceptable in cases where a delay of publication is required thereby requiring numerous two month requests.
J. Longwell suggested two then six, and an additional six. Any more than that should require very strong justification.
C. Genge asked what the next steps are.
Action: R. Carreau responded that the Office would allow some time for comments. An email containing a timeline will be sent out shortly.
Modifications to the system are needed. The next releases to the system have been scheduled for the fall and winter. These changes will take place during one of these releases.
Update to IDOP re: Divisionals
There was a request to update the IDOP Section 6.7.1 at the June meeting. The updates were completed in April.
A reminder to not use PO Boxes for applicant addresses.
JC Gregoire explained that there are times that this is the only address available.
C. Giannetti responded that agents should simply indicate this in the cover letter.
7. IPIC ID Committee Items
Delays of Registration being cancelled
There are cases where delay of registration requests have been cancelled when they should not have been.
C. Giannetti responded that this was a case of human error. The Office is putting measures in place so that this will not happen in future. These measures will take effect in July. Until then, staff has been reminded to be more careful.
GUI and Electronic Icons
GUI and Electronic Icons is an area that is growing very quickly. How can this be addressed in Canada?
J. Longwell explained that GUI and Electronic Icons were discussed during three presentations at the USPTO Design Day.
Clients are trying to protect the total user experience.
Dynamic GUI’s are more than the sum of their parts. If ID wants to keep up, they are going to need to address this.
R. Carreau responded that the Office is going to need to research how this is being addressed at other offices. There are already plans in place to discuss this subject with the USPTO.
C. Genge would like to see a solution under the current Act.
Action: C. Genge also commented that most presentations are available on the AIPLA website. She will look at giving CID access to the site.
8. Round Table
T. Fitzpatrick noted that CIPO is now on Twitter at @CIPO_Canada and @OPIC_Canada.
9. Closing Remarks
Thank you to everyone for your participation. It has been a very constructive meeting.