Thursday, November 1, 2012
- L.-P. Gravelle
- H. Auerbeck
- A. Brett
- I. Clark
- K. Lachaine
- K. Ledwell
- J. Pivnicki
- H. Probert
- J. Raackman
- J. Wilson
- A. Lajoie
- D. Campbell
- C. Gervais
- L. Giardina
- M. Gillen
- J. Hurkmans
- K. Murphy
- A. Patry
- S. Périard
- N. Tremblay
- S. Vasudev
- S. Hurley
Via Conference Call
- Y. Bismilla
- A. Ionescu
- C. Ledgley
- D. Nauman
- M. Paton
- S. Paul
- N. Pellemans
- S. Rancourt
- K. Sechley
- H. Sue
- D. Eisler
- H. Hurley
- I. Robert
1. Approval of Minutes of the Meeting of June 14, 2012
The minutes of the JLC meeting of June 14, 2012 were approved.
2. Business Arising
4h List of Patent Agents on CIPO's website
(from the meeting of June 14, 2012)
This item pertained to a question raised at the last meeting by N. Pellemans regarding whether a full list of registered patent agents could be provided on CIPO's website, with in-house patent agents provided in a second list. A. Lajoie had consulted with CIPO's legal department and the Office is unable to post such lists on the website as the Patent Act is worded to allow for the reservation of privacy information, which includes the names of patent agents. Registered patent agents who wish to have their names posted on the website would need to provide a specific statement instructing the Office to do so. This issue is to be placed on a list of potential changes to the Patent Act, which would require a change in legislation.
3. Ongoing Items
3a Corporate Feedback Mechanism report
The JLC was provided with an electronic copy of a report titled "Online Feedback Mechanism". The report provided an overview of the patent-related feedback received via the Online Feedback Mechanism on CIPO's external website for the period April 1, 2011-September 30, 2012. A. Lajoie observed that the number of feedback transactions is low and encouraged IPIC members of the JLC to use the online feedback mechanism as it is very efficient in its turnaround time.
Data from the Client Service Centre (CSC) was also provided electronically to the JLC. The CSC has received over 5000 patent-related enquiries during Q1-Q2 of 2012/13, most of which are telephone calls from the public and from firms. Six percent of the patent-related enquiries is transferred from the CSC to the Patent Branch, most of these enquiries being related to specific applications, reports or letters from the Office. When an enquiry is to be made regarding a specific case or report, for the sake of efficiency, clients are urged to contact the Patent Branch or the person who wrote the report or letter directly.
L.-P. Gravelle asked if there was any way to find out if CSC requests are coming from agents or from clients directly. A. Lajoie indicated that she would ask the CSC if they could provide information regarding the origin of transferred phone calls.
3b Service standards
An electronic copy of Patent Branch's "Service Commitment Results 2012-2013", "Production Volume Statistics 2012-2013" and "Inventory of applications awaiting a first substantive Office action" for April, 2012-September 30, 2012 was provided to the members of the JLC. A late correction was made to the Results portion of the table and was provided to members attending the meeting. This correction will be provided electronically to conference call attendees.
L. Giardina observed that Patent Examination is in most cases meeting or surpassing its service standards. For applications awaiting a first Office Action, the Office continues to make headway on the inventory and is getting closer to achieving 100% of these applications awaiting a first Office Action for 18 months or less. Capacity is still being built in the Electrical division, with the hiring in September of 9 new examiners.
J. Wilson asked if the results presented exclude statistics relating to special orders and PPH which have a separate service commitment. L. Giardina responded that such statistics are not included. However, the turnaround time is strict for those applications being between 30-45 days depending on whether it is a Special Order, PPH or green application. D. Campbell explained that, because these statistics reflect a snapshot of the inventory that has been waiting for a first action, every expedited 1st action in fact makes it more challenging to meet the 1st action service standard. A. Lajoie added that the Office would like to provide clients with more precise and meaningful service standards in the next fiscal year, with firm time commitments.
K. Ledwell expressed appreciation for the additional data that the Office has provided on production volume statistics and service commitment results. He noted that, in Q2, the number was only 53% for issuance within 8 weeks upon receipt of an application meeting entry requirements of a confirmation date of national entry for PCT applications. The inventory was within one week of its turnaround time. S. Périard acknowledged this result and indicated that, at the end of October, Patent Operations was back on track for issuing this confirmation date within 8 weeks for 97% of applications. She added that 98% of Canadian-filed applications were issued a Canadian filing certificate within 4 weeks upon receipt of an application that meets filing requirements. For issuing an ownership certificate within 6 weeks of receipt of the request and fees, the Office is at 90%.
3c Regulations Update
S. Vasudev provided the JLC with an update on Regulations and the Rules amending the Patent Rules. Proposed amendments to the Patent Rules regarding Final Action procedures and Re-examination proceedings were pre-published in Canada Gazette Part I on September 29, 2012, and interested parties had 30 days to submit comments. Proposed amendments to the Patent Rules and Trade-marks Regulations regarding Patent and Trademark agent exams were also pre-published in Canada Gazette Part I on September 29, 2012 with the same 30-day period to submit comments. This pre-publication represented the final opportunity to review and comment on the proposed amendments prior to their enactment and publication in Canada Gazette Part II. The consultation on Canada Gazette Part I was conducted in parallel with the consultation on the revised Chapter 21 of MOPOP.
The majority of the elements of Patent Rules Package 2 now entitled "Simplification of administrative requirements" was the subject of an informal consultation in 2009. As a refresher, in this package, the Office is exploring the possibility of the following amendments:
- Removing the electronic sequence listing from the excess page fee calculation upon allowance.
- Shortening the period for requesting examination from 5 years to 3 years.
- Permitting instructions received from a non-appointed agent to be given retroactive effect if the agent is appointed within 3 months of a notice sent by the Office to the agent.
- The concept of a "common representative", thereby allowing the Office to communicate with one of the applicants where an agent has not yet been appointed as required.
- Amending who can pay maintenance fees and reinstate for missed maintenance fee payments to include any applicants, in addition to the authorized correspondent.
3d Section 8 Update
S. Vasudev also provided a Section 8 update.
As has been discussed in previous JLC meetings, Section 8 requests have been experiencing prolonged delays while the Office revises the processes for reviewing Section 8 requests with the aim of improving both efficiency and consistency. The majority of the revision has been completed and the Office is now focussing resources on reducing the inventory of Section 8 requests. In the past four weeks, the inventory of Section 8 requests has been reduced by approximately 25% (262). There remains significant work to be done, but working under the new processes, the Office's objective is to reach a 6-month turnaround by the next JLC meeting. Section 8 requests are analysed in the order of the date the requests are made. However, matters of urgency such as impending deadlines will be considered if brought to Mr. Vasudev's attention.
3f MOPOP Update
S. Vasudev provided a MOPOP update.
The action plan to undertake further revisions of the MOPOP chapters continues to be impacted by resource pressures and priority placed by the Office on finalizing guidance post-FCA Amazon.com. All comments that have been received have been considered and the Commissioner has engaged in some informal consultations with patent agents. The Office is finalizing the guidance and testing it in all disciplines and hopes to communicate this guidance in the next few weeks, bearing in mind possible delays due to translation.
Concerning the modernization of MOPOP chapters, some of the ongoing and planned initiatives are:
- A public consultation on MOPOP Chapter 21: Final Action and Post-Rejection Practice is ongoing until November 23, 2012. The Office looks forward to receiving IPIC's comments on this proposed practice.
- MOPOP Chapter 14: Unity of Invention has been finalized and the Office intends to release this chapter shortly after finalizing the post-FCA Amazon.com guidelines.
- The Office hopes to conduct public consultations in early 2013 on Chapter 15: Novelty, Obviousness and Double-Patenting and Chapter 7: Request for Priority.
- Chapter 17: Biotechnology remains in the pre-internal consultation drafting stage and consultation on this chapter in 2013 is anticipated.
A. Brett asked if the Amazon.com guidelines that will be issued will be in draft or the final guidelines. S. Vasudev responded that they will be the final guidelines.
3g PPH Update
K. Murphy provided a PPH update. The JLC was provided with an electronic copy of PPH-related statistics including number of PPH requests and examination statistics as of September 30, 2012. The number of PPH requests is increasing all the time and is 2,896 as of September 30, 2012. The grant rate and first action allowance rate for both PPH and PCT-PPH applications are significantly higher than the grant rate and first action allowance rate for non PPH as well as special order applications. In addition, for PPH applications, the average pendency to first action and to final decision is substantially accelerated. Statistics for all PPH agreements can be found at the PPH Portal maintained by the Japanese Patent Office. A two-year PPH pilot agreement with the Israel Patent Office began November 1, 2012, and starting January 31, 2012, a two-year PCT-PPH pilot with the USPTO will begin based on work done by the USPTO as the ISA/IPEA. This will be for applications that will have entered the national phase on or after January 31, 2012. An agreement in principle has been reached between the Heads of Office for CIPO with the State Intellectual Property Office of the People's Republic of China (SIPO) for a pilot PPH agreement. In addition, an agreement in principle between the Heads of Office to expand the PPH requirements with the Korean Intellectual Property Office (KIPO) so that the application under examination and the application used as the basis of the PPH request must share only the same earliest date (the Mottainai principle). CIPO will be expanding its requirements in a similar fashion for the PPH agreement with the German Patent and Trademark Office (DPMA).
I. Clark wondered if, in view of the PCT-PPH expansion to the US as the ISA, the trend will continue with other ISAs. K. Murphy responded that it is hoped that such an expansion will occur. The pilots permit the Office to see how the workflow is impacted. If positive results in terms of quicker grant rates and being able to manage the workload are seen, then expansion will be pursued. L.-P. Gravelle asked if there is any possibility of having a PPH agreement with the EPO. K. Murphy answered that the EPO is not interested at this time in a PPH agreement with CIPO. J. Pivnicki observed that an examiner's report on a PPH application had indicated that the deadline for response was six months. K. Murphy affirmed that the deadline for responses to PPH applications is indeed six months, while the deadline for responses to special orders and green applications is 3 months. In addition, if a PPH application is abandoned, it will still continue to be a PPH application.
K. Murphy also provided a PCT update. The International Bureau at WIPO has informed the Office that requests for recording of a change under PCT Rule 92bis.1 cannot be accepted after the deadline of 30 months from the priority date has passed. Such requests will be refused, and any changes after the 30-month deadline must be done with each of the Designated or Elected Offices during the national phase. The CIPO Receiving Office would also like to remind applicants to only file a single copy of a PCT application, either by paper or by fax but not both. Otherwise, two applications are filed with two different application numbers for the same subject matter. One of the applications ends up being withdrawn and an associated $300 fee is incurred. If clients have concerns regarding whether a PCT application properly made it through the system, they should contact the PCT International division instead of submitting a second application.
4a Search records and results on the consultation
J. Hurkmans provided an update on the pilot project for the recording of examiners' searches. The pilot was conducted from June 1, 2012 through to August 31, 2012 and involved 5 sections, one from each discipline, including 40 examiners and 8 section heads. In that time, over 2,200 search records were created, and the time required to populate each search record was also recorded. Following the pilot, the Office conducted surveys with examiners, section heads, Vancouver Group members as well as the JLC and also conducted focus sessions with senior examiners and section heads on using the search records for quality improvement and for coaching. In addition, there was an investigation into the technical background behind converting the records and attaching them in TechSource. Most were generally pleased with the results of the pilot. Some concerns were expressed over the time required to populate the search forms, over the presence of some redundant data entry when incorporating files into the existing system and over the training and cultural changes necessary to begin providing quality feedback to examination staff in terms of coaching. The Quality Working Group is investigating the results of the pilot as well as these concerns and is preparing a detailed report with recommendations for further action to be presented to management within the next two weeks. Further updates will be provided in the future.
D. Nauman asked if this means that the Office will be moving forward and making search records a part of regular Office Actions. A. Lajoie responded that the results of the pilot and the information that has been collected are important to management. Management will consider and need to understand all of the implications and the impact in terms of time and cost before making a final decision. D. Campbell added that JLC members filling out the search records survey should be sure that the provision of search records would be a service of value, as hidden costs will be incurred.
K. Ledwell indicated that he would generally like examiners to record what they looked at in terms of databases, and whether they considered the IDS, for example. The recording process could be made efficient and could be as simple as just checking certain boxes. H. Sue agreed that clients would like to know, in general terms, what references and databases have been considered. He added that he found the survey questions difficult to answer. Where the survey asked if the records were useful, the answer would be yes if the forms were completed but no for forms where particular fields and checkboxes were left blank. J. Hurkmans indicated that examiners were to fill out the search records at every point during the examination process, and at certain times in the process, the examiners may have only relied on the results of an earlier search. This meant that some of the forms were mostly blank while others were densely populated. It is the Quality Working Group's intention to provide a general form for recording searches that will be useful in all instances so that, for example, when not much searching is performed, only a brief indication is required.
4b PCT International Phase Mail
Y. Bismilla had submitted this item indicating that it would be preferable if the Office did not staple together different pieces of PCT international phase mail which have different deadlines. Otherwise, some deadlines may be inadvertently missed. S. Périard indicated that the Office will no longer staple together mail that has different deadlines, with the exception of ISR reports and diskettes.
4c Unauthorized and Fraudulent requests for fees
Y. Bismilla had asked if CIPO could include a notice on the patent website regarding unauthorized and fraudulent requests for fees from third-party "publishing" companies regarding PCT applications. S. Vasudev responded that the Office was unaware that this was an issue for patent applicants in Canada, but if informed to the contrary it is a relatively quick fix and the Office would have no issue posting a notice similar to what is already posted on the Trademark section of the web site. A. Lajoie indicated that this should be completed by the next JLC meeting.
4d Notices of National Entry
K. Lachaine had asked if anything could be done to ensure that all priority information shows on notices of national phase entry and filing certificates when many priority claims are made. S. Périard responded that she would ask the Office's IT specialists and A. Lajoie added that this will be on the list of requirements for IT improvements.
4e Translation Abstract
K. Lachaine had asked if there was a reason why CIPO uses the WIPO abstract on national phase entry applications where the applicant has filed a translated abstract. S. Périard has now reminded staff to use the abstract that the applicant has submitted.
4f Rule 84
A. Zahl had submitted this item pertaining to Office Actions in which the examiner has objected to claims as lacking compliance with Rule 84 of the Patent Rules, in that the claims lack support because they are not limited to a specific embodiment that has been described in the specification. He indicated that, as he read Rule 84, it requires that the claims be supported independently of any document, without imposing a general requirement for support in the disclosure as a whole. He asked if examiners could refer to the specific document that they have in mind when they cite Rule 84 or, alternatively, if they intend to object based on a lack of sound prediction, to frame the objection in these terms and provide specifics.
M. Gillen answered that examiners will use Rule 84, for lack of support, whether or not applicants are claiming something that is in a document to which the description refers. Sometimes examiners will, along with a Rule 84 objection, also invoke subsection 27(3) of the Patent Act where the specification is missing a description of what is being claimed. Where the claimed subject matter appears in the description in a broad sense, but the utility of the claimed subject matter cannot be soundly predicted over the full scope of the claim, examiners will make an objection under Rule 84 and also under Section 2 of the Patent Act for lack of support for the utility of the claimed subject matter.
J. Wilson had noted objections in examiner's reports under Rule 84 for claiming more broadly than what has been provided in the specific examples in the description. M. Gillen responded that if an examiner considers a claim to be too broad, an objection under Rule 84 will be made and it is then up to the applicants to amend the claim so it is not too broad or to argue why the scope of the claim is appropriate. A. Brett indicated that such objections were also being seen in the electrical engineering discipline, where the examiner states that the claim is lacking features of the specific example, which are essential features. This is the case even where there is a statement of invention that supports the broad claim, and there is nothing in the text of the specification stating that those features are essential. He opined that, in such cases, perhaps the objection is improper in the first place and that the issue is sometimes confused with enablement. I. Clark thought that perhaps Mr. Zahl had wanted improved clarity where an objection was being made under Rule 84 for a lack of sound prediction.
J. Wilson wondered if, in cases where an objection to a claim is potentially covered by both a Rule and a section of the Act, examiners are told to cite both the Rule and the section of the Act or to pick just one. M. Gillen answered that, typically, in a first report, where there are many claims and a number of issues, applicants may only see an objection under Rule 84. In subsequent actions, when the claims are not amended and there is more arguing back and forth, objections under subsection 27(3) of the Patent Act may be seen in addition to the objections under Rule 84. Certainly, both issues should be dealt with in a Final Action.
K. Ledwell opined that the MOPOP is the best mechanism for clarification of how the Office treats and interprets different issues. When there is a specific issue like this one, and a number of Office actions with this type of objection is seen, he wondered if CIPO would make the process more efficient by issuing clarification and ground rules such as in a practice memo or if specific points should simply be put in the minutes of this meeting.
A. Lajoie concluded that this item will appear in the "Business Arising" section of the agenda for the next JLC meeting after obtaining some clarification from Mr. Zahl on the issue and after taking all of the discussion into consideration, so that the best type of action can be taken to ensure consistency.
4g Requirements for sequence listings
A. Ionescu had noted that a Canadian patent (2,489,016) had issued having the last text page of the description as page 20, followed immediately by the claims pages that began at page 44. Pages 21-43 had consisted of the sequence listing pages which had been removed. He wondered why the pages were removed, in view of the transitional provisions in Rule 111, which permitted the retaining of the paper copy of the sequence listing in applications filed before the coming info force of the new rule. He also wanted to know why the discontinuity in page numbering had not been caught before issuance of the patent and whether it could be corrected.
S. Vasudev explained that an amendment to the Patent Rules with respect to the format of the sequence listings entered into force on June 2, 2007. The amendment brought the Canadian format for sequence listings in line with the PCT standard by specifically referencing the PCT standard in the amended Rules. The amendment to Rule 111(1) specified that "...the description shall contain, in respect of that sequence, a sequence listing in electronic form, and both the sequence listing and the electronic form shall comply with the PCT sequence listing standard." The intent was to require that the sequence listing be present only in an electronic form. Therefore, in respect of a sequence listing submitted in accordance with the amended Rule 111(1), it is not permissible for a paper copy to also be part of the application. Applicants are requisitioned to withdraw any paper copy of a sequence listing for which a compliant electronic sequence listing has been made of record.
As per the transition provisions, in respect of applications filed before June 2, 2007, the applicant may substitute the requirements of old sections 111 to 131 of the Patent Rules as they immediately read before the coming into force of the amended Rules for the requirements of section 111 of the Patent Rules. Applicants were advised to clearly indicate the choice of Rules to apply in a covering letter and to comply accordingly.
With respect to the specific patent identified by Mr. Ionescu, Mr. Vasudev indicated that it would appear that this case is a "one of", not indicative of a systemic, general problem to the Office's knowledge. He added that he would be happy to discuss the specific case with Mr. Ionescu off-line.
4h Mutual Exploitation
A. Ionescu had asked what the Office's current position with respect to statements by Examiners in Office Actions pointing to claims issued in applicant's corresponding U.S. patents and noting that claims of similar scope would overcome the prior art objections in Canada. L. Giardina responded that most patent offices have realized that, in order to reduce backlogs, rather than re-doing the same work many times, they can recognize each other's work. Where claims that have issued in another Office would overcome the objections the examiners have made, examiners are encouraged to clearly state this in the Office action in order to speed up prosecution.
A. Ionescu noted that it is consistently the same examiners making these statements, and that the statements are usually directed to the U.S. issued claims and not to the E.P.O. issued claims. He expressed concerns that these statements were being made in Official actions without considering that there are differences in the laws in Canada and the U.S.
A. Lajoie responded that the Office is not only trying to write reports more quickly but also to reduce the pendency time, by reducing the number of unnecessary examination reports. The statements are in the spirit of suggesting a faster way to arrive at an agreement and eventually the disposal of the application. J. Raackman observed that CIPO is not the only Office that makes such statements in examiners' reports.
4i PCT Applications - Informal telephone communications
J. Pivnicki had submitted several questions pertaining to informal telephone communications which are conducted during the international phase for PCT applications. K. Murphy provided a summary of CIPO's practice in this regard. As a courtesy to the applicant and to minimize the number of written opinions, the examiner phones the applicant's agent (or directly the inventor in the case of a private inventor not represented by an agent), to let them know that international phase examination has started, and to confirm with the agent the basis on which the examination will start, whether it is based on amendments under Article 19 and/or Article 34 or on the application as filed, and to discuss any issues with the file and/or possible amendments that could be made to the claims. If the agent wishes, a conference call can be arranged with the examiner to include the applicant as well. The authorized correspondent for the file must be party to the phone call. This practice is not new, and has been in place since 2004. E-mail is not an appropriate means for the communication, and this will be reviewed with examiners to ensure that only phone calls are used.
If a response from the applicant is indicated during the phone call, deadlines should be discussed during the phone call so that they are mutually agreeable, and within the required deadlines of the PCT. If the examiner and/or the agent wish to have a follow-up communication, this can be arranged with the agreement of the two parties. The number of communications is limited by the practical considerations of the PCT deadlines: the time limit for completing the IPRP of 28 months from the date of first filing or the priority date is not flexible.
The identity of the party is confirmed by requesting the party on the telephone to identify themselves and by using the contact information provided as part of the PCT file. Having the agent call in to verify identity is not standard practice; this will be reviewed with examiners.
Any communication between an examiner and the applicant during the IPEA procedure, by telephone or by personal interview, requires the examiner to fill out an IPEA/428 form (Note on Informal Communication with the Applicant). The examiner will describe particulars, identify matters discussed and agreements reached, and indicate whether a response is due from the applicant or whether the examiner wishes to establish the IPRP. If the applicant requests a copy of the examiner's record or if a response from the applicant is required, the examiner also fills out an IPEA/429 (Notification Concerning Informal Communication with the Applicant) and both the IPEA/428 and IPEA/429 are sent to the applicant. If a response from the applicant is required, deadlines should be agreed upon during the informal communication, prior to sending out the IPEA/429 (with this deadline indicated on the form). The notification normally carries a time limit of one month for the applicant to respond, but this may be extended if time allows. The IPEA 428/429 forms are a record of the discussion, and if another report (such as a Written Opinion of the IPEA) is being prepared, there should be no other due date on the forms or stemming from the discussion.
Any amendments made in response to such communications must be sent through the proper channels. If the applicant is going to send in any amendments by fax, they must be faxed to the CIPO mail room so that they are properly received and entered into the system. Should the agent or applicant request an IPRP immediately, well before the time limit to complete the IPRP, examiners may proceed with the IPRP only if the agent or applicant makes such a request in writing to the mail room or to the Office fax.
4j Divisional and Sequence listings - US Practices
E. Taylor had asked if CIPO had issued a briefing note to examiners telling them how to apply new approaches to divisionals and sequence listings and, if such a note had been issued, if clients could see what it says. He also noted that the U.S. is considering changing its own format requirements for sequence listings. He wondered if CIPO was aware of this and would be making the same changes.
D. Campbell referred to the previous JLC meeting where S. Vasudev had explained that sequence listings were a completion requirement. No briefing note had been issued to examiners on this subject, as examiners are not responsible for completion requirements. With respect to divisionals, at the last JLC meeting, L. Giardina had responded to an inquiry regarding courtesy letters informing the applicant that their divisional application may not be entitled to divisional status because the claims of the divisional application are not directed to an invention that differs from that claimed in the parent application. As L. Giardina had expressed, examiners are encouraged, for the sake of efficiency, to examine divisional and corresponding parent applications at the same time. Consequently, if there is a question about divisional status of the application, it would be in an examiner's report as a requisition, and not in a courtesy letter.
With respect to format changes to sequence listings in the U.S., our Rules are aligned with PCT requirements for sequence listings. If the USPTO changes any of their sequence listing requirements such that they are not aligned with PCT requirements, different formats from that used by the USPTO may be required.
A. Ionescu asked if it is only in the case of voluntary divisionals where the divisional and parent applications would be examined at the same time. D. Campbell responded that he was referring to any kind of divisional application. If an examiner's requisition identifies a unity problem in the parent application, this keeps the applicant risk-free from a double-patenting rejection, whereas in the case of voluntary divisionals, applicants are open to that risk. J. Wilson asked whether examination of a parent application will be held up waiting to see if examination of the divisional application is requested. D. Campbell answered that, generally speaking, examination of the parent application is not held up.
4k Unscannable drawings
D. Nauman had submitted this item asking for clarification on CIPO's policy and procedure for dealing with unscannable drawings (a) during prosecution, (b) at issuance and (c) if the patent issues with a notice about unscannable drawings.
S. Périard explained that, during prosecution, unscannable drawings are kept on site, and a blank page indicating that the drawings are unscannable is inserted in the Drawings tab on TechSource. At issuance, the page indicating that the drawings are unscannable is removed from the grant, and a photocopy is included with the granted patent. The original drawings are kept on site. However, the page indicating that the drawings are unscannable remains in TechSource and on the website.
K. Lachaine wanted to know why examiners do not alert applicants to the problem during prosecution so that they may provide better drawings, such as an electronic copy. Letters patent have issued with the page indicating the drawings are unscannable included in the granted patent. D. Nauman explained that he had been told that it is not necessarily a defect of the drawings themselves but rather a problem with the system and computer and their ability to incorporate certain figures. A. Lajoie affirmed that it is not a defect that can be raised by the examiner in a requisition but rather limitations of the old scanning process used to capture the drawings. In principle, when examiners see that there is an unscannable drawing, they will complete examination considering the paper file. In many cases, because of the nature of the invention, the provision by the applicant of new drawings would not resolve the issue. A. Lajoie added that perhaps an additional communication could be provided by the Patent Operations section to inform the applicant that the application contains drawings which are not scannable due to limitations of the system. She indicated that the Office will follow-up on this issue.
D. Nauman indicated that the bigger issue is that patents issue which include pages stating that pages of the Drawings are unscannable. He wondered what applicants should do when this occurs. S. Périard responded that this would be an Office error that can be corrected under Section 8. A. Lajoie added that in this type situation, the Office initiates the Section 8 and no fee is required to amend the granted patent. S. Vasudev confirmed that in cases where the Office is in error in granting the patent, there is greater flexibility with respect to Section 8 corrections.
C. Ledgley supported the position that agents should know that Drawings are unscannable in view of new technology permitting submission of the Drawings electronically, which can avoid the need to have scanning and provide the corresponding Figures. D. Nauman indicated that even documents that are submitted to the Office electronically are printed and scanned. A. Lajoie responded that the Office's priority is to re-visit our processes and quality control measures in order to prevent this type of situation from happening.
M. Paton wondered what the best procedure would be in the PCT national phase for submitting better quality drawings or photographs to CIPO such that they remain as non-scannable items. This would ensure that the examiner looks at the good quality drawings or photographs during examination in order to best understand the invention. A. Lajoie answered that such a submission would be a voluntary amendment and S. Périard added that colour drawings cannot be scanned, and examiners will automatically look at the original, unscannable drawings. D. Campbell indicated that photographs will also always be unscannable and applicants should be receiving the original submitted photographs back as part of the granted patent. Coloured Drawings may not be compliant with the Rules, which require Drawings to be in black and white.
4l Deposit account information for file histories
D. Nauman had noted delays in the turnaround for file histories since staff in the reproductions section at CIPO are apparently now required to ask the finance department to confirm that funds are available in the deposit account. S. Périard had consulted with the Information Branch and as of the end of September, they have had full view and accessibility to deposit accounts from agents. The 3-day turnaround in providing file histories is now being respected.
4m Corrected documents
D. Nauman had submitted this item concerning cases where documents such as Office Actions (OAs) and Notices of Allowance (NOAs) contain an error. In such cases, clients call CIPO, and CIPO forwards the corrected document. The OAs and NOAs do not have a new issue date and there is a delay in the time that they are received. He wondered if the delay was in the mailing portion of the process and, if so, if it would be possible for CIPO to email corrected documents so that they are received sooner. S. Périard has been informed that within a week the corrections are made and sent back to clients. She suggested that if there is any greater delay, clients should submit comments through the client feedback system.
4n Backlog of S.2 cases
J. Wilson had asked how CIPO is planning to handle the significant backlog of Section 2 cases in view of Amazon.com. N. Tremblay responded that once examiners are trained in the new guidelines, some of them will work almost full-time on this backlog. The training of the 9 new examiners and participation in projects will be for examiners not involved in Section 2 cases. Also, N. Tremblay will keep an eye on the progression of these cases, and art will be re-distributed amongst examiners as needed.
4o Open Data and Digital Access Service
J. Wilson had asked if CIPO will provide patent data through the Government of Canada's "Open Data" pilot program and, if so, what kind of data it will provide. S. Vasudev provided background on the CG Open Data project. The project is a catalogue of federal government data sets that are available for users, developers and data suppliers to find, evaluate, access, visualize and reuse federal government data. It is currently in a pilot phase and is the first step in providing access to reusable government data. The participating departments will continue to add data sets to the data catalogue throughout the pilot stage to increase the amount of information available to users. The pilot will gather information on usage and demand, and feedback received during the pilot will be used in support of the enhancement of the Portal Service following the pilot. Industry Canada is part of the pilot and is offering at this stage access to data such as National Broadband Coverage data. CIPO has not been asked to participate, presumably because CIPO already makes its data available through its website.
J. Wilson had also asked if there were plans to make priority documents available for retrieval by the International Bureau using their Digital Access Service. K. Murphy responded that CIPO is in preliminary discussions with WIPO regarding the use of the Digital Access Service for Canadian Priority Documents, however these discussions are at the initial stages. The Office is still identifying how many files this would affect, what type of IT infrastructure is needed at CIPO for this to be implemented, and what costs could be associated with this service.
4p Rule 84/Rule 87
J. Wilson had submitted this item concerning examination practice notice "PN2011-01-Practice for Applying Rule 87 to Improper Independent Claims". She wanted clarification on the application in examiners' reports of Rule 87 to multiple independent claims and of Rule 84 to sets of claims versus individual claims. A particular examiner's objection had been cited which indicated that claims were non-compliant with Section 84 as there were three independent product claims, with each claim defining the product of the subject application by means of a combination of different features. Consequently, the examiner had stated that it was not clear what the inventive concept of the claimed subject matter is.
S. Vasudev re-circulated a copy of the Practice Notice and the notice is to be made available electronically to members of the JLC attending the meeting via teleconference call. He indicated that the Practice Notice mainly discusses defects under subsection 87(1) of the Patent Rules with respect to multiple independent claims, but the second last paragraph does comment on objections based on Rule 84. An objection under Rule 84 is generally applied by an examiner where: 1) there are multiple independent claims belonging to the same category of invention in an application, and these claims are based on different essential elements and 2) this results in a lack of clarity as to, for example, the nature of the invention, whether there is a unity defect or the identification of the inventive concept for the purposes of evaluating obviousness. Thus, it is not unexpected that an examiner may identify a defect under Rule 84 without making a unity objection where the presence of these multiple independent claims creates confusion or a lack of clarity.
J. Wilson wondered how there can be a lack of clarity as to whether or not there is a unity of invention defect when each individual claim is clear. D. Campbell agreed that in the case of the particular objection cited by Ms. Wilson, it was difficult to see how a unity objection could not have been raised. He asked that she provide him with the specifics of the case off-line.
5. Other Business
H. Probert asked a question concerning the right to special order status for accelerated prosecution, where the time-line is under the new Rules. Amended subsection 28(2) of the Patent Rules indicates that special order status is not granted or is lost in case of abandonment. She felt that this created an anomaly where, if the application was abandoned on or before April 30, 2011 and then re-instated, it can be subsequently granted special order status. However, if abandonment has occurred after April 30, 2011, even if reinstatement occurs before a request for accelerated examination has been made and even if new circumstances would justify the grant of special order status, the Office takes the position that special order status cannot be granted in such a case simply because of the way the Rule is worded.
S. Vasudev confirmed that the Office interpretation of amended subsection 28(2) of the Patent Rules has been correctly described by Ms. Probert and this was always the intention of the Office. On this specific subject, the Regulatory Impact Analysis Statement (RIAS) published on March 3, 2011 in Canada Gazette - Part II states the following:
A new subsection 28(2) will be added to provide that the Commissioner will not advance an application for examination out of its routine order and will return to its routine order any application that has been advanced for examination if the Commissioner must extend the time fixed for doing anything or if the application has at any time been deemed abandoned in accordance with subsection 73(1) and (2) of the Patent Act. This passage demonstrates that the Office always had the intention of applying the new section as it is currently being applied. While it is always possible to come upon cases where the application of the rule in this manner may seem harsh, as a general rule, the Office wanted to ensure Special Order status is only granted to those applications where the applicant has demonstrated a definitive desire to proceed without delay from the outset of prosecution.
H. Probert responded that this does not take into account that accelerated examination can be requested at any stage in the prosecution of the application. This would take into account fresh circumstances that did not apply at the outset of prosecution but that apply now. Further, she considered that the only possible interpretation of the amended Rule as it is now worded is that if an application is abandoned for any reason prior to May, 2011, but it is properly reinstated before that date, grant of special order status can still be obtained on a fresh request.
S. Vasudev indicated that the phrase "if after April 30, 2011" applies to the granting of special order status and not necessarily to the abandonment. Certainly the intent of the Office was that if an application had gone abandoned at any time during its prosecution, even prior to a request for accelerated examination, advanced examination would not be allowed. Mr. Vasudev indicated that the Office will look into the language of the Rule to determine if it is open to interpretation.
D. Nauman asked that, when looking into this issue, the Office prepare an analysis about late entries which technically are for abandonment reasons. S. Vasudev responded that this would be considered as well. A. Lajoie concluded this item indicating that the Office will follow-up on this issue at the next JLC meeting.
6. Issues Covered in Previous JLC Meetings
No issues covered in previous JLC meetings were discussed at this juncture.
7. Specific Enquiries
No specific enquiries were discussed at this juncture.
8. Delayed to Next Meeting
No items were delayed to the next meeting.
9. Date of Next Meeting
The next JLC meeting will take place on Thursday, February 28, 2013 [at 1:00 PM in Room D, 24th floor, Place du Portage, Phase I, 50 rue Victoria, Gatineau, QC, K1A 0C9].
The meeting adjourned at 3:10 PM.