- Mr. Mesmin Pierre, Canadian Intellectual Property Office (CIPO)
- Mme Jennifer Jannuska, Intellectual Property Institute of Canada (IPIC)
1. Opening Remarks
Mr. Mesmin Pierre began by welcoming the members of the committee. Mr. Pierre announced the items on the agenda.
2. Prior Art
A question was raised with respect to CIPO's position on combination of prior art references. CIPO asked whether the question related to 1) different components of an article being cited using multiple prior art sources or 2) the Office's relatively new approach of including multiple citations rather than only the "strongest" one, which was CIPO's practice in the past. Participants indicated being interested in knowing about both aspects of the question.
Concerning the first scenario of citing multiple prior art sources for different component parts, CIPO indicated it needed more time to consider whether this is allowed, and if so, how that would work under the legislation.
Concerning the second scenario, CIPO explained that to provide a complete citation and to avoid piecemeal examination, the Office would cite all relevant prior art references.
Action Item: CIPO has agreed to give further considering to the issue outlined in the first scenario and to follow-up in writing.
3. Technical Aspect of Registration
A concern was raised with respect to the font in the Notice of Registration being difficult to read. CIPO is not aware of any systemic issues affecting the font in the Notice of Registration but invited committee members to provide a specific example by way of a file number so that the Office can investigate further and take appropriate action.
A question was raised with respect to the discrepancy between the issue date found on the first page of the report and the registration date found on the second page of the report, which may be misleading to stakeholders in terms of exclusivity and renewal. CIPO clarified that the issue date is the date on which the notice is printed or generated therefore it is common that it will differ from the registration date, which is the date the Office registers the industrial design in the official register and grants exclusive rights to the applicant. Notwithstanding, concerns remained as the issue date could be confounded with the registration date.
Action Item: Given the Committee's concerns, CIPO decided to remove the issue date on the Notice of Registration.
a. Withdrawal of Applications
A question was raised with respect to whether CIPO tracks why an applicant may choose to withdraw their application. CIPO confirmed that it does not track reasons for the withdrawal of an application, only the volume of withdrawals.
Action Item: CIPO will follow-up with statistics on the volume of withdrawals.
b. Notices of publication
There have been reports of receiving Notices of Publication 5 months after publication. CIPO is aware that there was a printing issue and advised that the problem has since been resolved. The Office confirmed that it is currently issuing notices for November 2021 and should clear up any backlog within the next two months.
5. CPATA & Appointment of Agent
CIPO was asked whether the new College of Patent Agents and Trademark Agents will have an impact on the industrial design practice. CIPO confirmed that the College of Patent Agents and Trademark Agents had no impact on industrial designs. Additionally, there is no authority in the Industrial Design Act (the Act) or Industrial Design Regulations (the Regulations) on the matter. The current process remains the same and CIPO will continue to accept correspondence from firms, individual agents, etc.
6. Patent Appeal Board Review
Further to public consultations, a question was raised with respect to whether CIPO will publish the decisions on refused industrial designs applications. CIPO advised that there is no implementation date for the change to the refusal and review process of ID examination decisions. The pilot project that began on , is still ongoing. Reviews are currently assigned to a subject matter expert of the Trademarks and Industrial Designs Branch rather than to the Patent Appeal Board, but we have yet to receive a request for review since the implementation of the pilot project.
There is currently no plan to publish review decisions given that volumes are incredibly low. CIPO advised that the content of post-coming into force files, including any review decision, is eventually made available to the public in accordance with section 8.3 of the Act and stakeholders can request a copy of the file in order to consult the review decision.
Action Item: CIPO to include a follow-up on the pilot project on the agenda for the next IDPC.
7. Order of Appearance of Drawings
A request was made for an update regarding the ability to re-order drawings online. CIPO indicated that if the client files an application through the e-amendment application for industrial designs, they should be able to submit drawings in their preferred order. The issue arises if the client is submitting through general correspondence. While there were previous issues with general correspondence concerning the re-ordering of drawings, those have been resolved for some time now. Members are invited to submit specific examples by way of file numbers in order for the Office to properly investigate if there are any outstanding issues.
Participants clarified that they would like the ability to re-order drawings after they have already been uploaded. With the current functionality, the drawings cannot be moved or re-ordered without having to delete them, then re-submitting them in the proper order.
Action Item: CIPO to look into including functionality to re-order drawings as part of the enhancement to e-services project.
8. Figure References
A question was raised with respect to whether CIPO is planning to import figure numbering in applications. CIPO advised that the two interfaces for processing domestic and Hague applications do not match. The Office is currently looking into how to add the individual figure references on the drawings themselves, however, it is not an easy fix and will require some time to implement.
Members questioned whether this disconnect between the drawings and the description could lead to an objection. CIPO indicated that while having the figure reference on drawings is recommended by the Office, it is not mandatory. The simple fact that drawings are not numbered will not necessarily result in an objection. With that said, if the scope of the design is unclear, taking into account the name of the finished article, the content of the description and the representation of the design, it could lead to an objection under paragraph 14(a) of the Regulations.
9. Introduction of Automated Search
Mr. Richard York provided an update on automated searches to improve timeliness in examination. The Office will terminate its previous contract in the spring of 2022 and will begin a new contract with a new service provider, which will provide an accurate automated search, allowing a more comprehensive search to be completed. CIPO will monitor the number of citations used and re-assess after 6-12 months of use. CIPO also confirmed that it would no longer rely on a separate search team and that the examiner will now proceed with the search themselves which may add a few minutes of work for the examiner but may reduce time to a first action.
Action Item: CIPO to provide an update on the new search tool after 6 to 12 months of its use.
Mr. Richard York shared the industrial designs statistics as of . Considering the strict timeline of 12 months to issue a refusal on Hague Applications, CIPO indicated that it needed to shift some of its resources, but that it is now hiring additional examiners to address the issue.
Participants questioned the service standard of 21 months for the examination of an application. CIPO indicated that this was a corporate decision impacted by many factors including the pandemic, the amalgamation of the Trademarks Branch with the Copyright and Industrial Designs Branch, our current capacity and work tools. The Office is in the process of recruiting industrial design examiners to be able to reduce the turnaround times and, eventually, the service standards. A cohort of 8-10 examiners will start at the end of February 2022 and will be operational by the next fiscal year.
Participants indicated that they would want to obtain, if possible, information on the turnaround time for subsequent office actions and on the typical turnaround time for appointments of agent given that the latter seem to take around 8 to 10 weeks to process, which is way too long in most situations.
Action Item: CIPO to provide statistical information on the turnaround time for subsequent office actions and look at potential solutions to speed-up appointments of agent.
Other items raised by stakeholders:
- Issue where a priority claim cannot be entered when filing a divisional using the online filing system.
- CIPO confirmed that it is normal behaviour. The priority claim cannot be entered because more than six months have passed. When filing online, the system doesn't know that the application is going to be a divisional and that it is entitled to a claim that may be older than six months because it was initially requested when the original application was filed. It gives the timeframe to file priority as if it is a new application that is being filed. It is only when the new application is conformed by CIPO and accepted as a divisional that the priority information from the original application carries over to the divisional. CIPO indicated that priority information could nonetheless be included in the comments section if needed.
- CIPO indicated that it is not necessary to make a request for priority when filing a divisional application. As per section 29 of the Regulations, the priority information from the original file carries over to the divisional by operation of law. If a claim should not be on the divisional, the Office needs to receive a request for the withdrawal of the priority claim at any point before registration.
- Issue where random dates or information appear in the priority section of the notice of filing, in addition to the correct priority information inherited from the original application.
- CIPO has not heard about this issue and asked if participants could provide an example or contact the Office if they find a specific instance.
- Issue where participants have noticed an increase in files which are pending for a long time and for which they have not heard back from the Office. They questioned whether the online system is really the best way to verify the status of their files.
- CIPO indicated that they can contact the examiner on file or the manager. The best approach would be to first contact the Client Service Center, but for any outlier they should not hesitate to contact the examiner or manager.
- Participants asked if there is an interface where they can send general correspondence that is not a response to an office action.
- CIPO confirmed that they can use the general correspondence online application. However it is quite old, therefore not all services are available. For example, it cannot be used to record a transfer and pay the fee required for such a recordal. The general correspondence application itself will not be modernized. Instead, the Office is considering moving everything to another platform as part of the e-service enhancements project.
Action Item: CIPO will send an updated list of industrial design examiners as well as the statistics report in addition to the above-mentioned follow-up items.
The next session will be held in late May or early June.
Mr. Mesmin Pierre thanked all members present.