Thursday, February 28, 2013
- M. Paton
- H. Auerbeck
- A. Brett
- I. Clark
- D. Lambert
- S. Paul
- H. Probert
- E. Taylor
- A. Zahl
- A. Lajoie
- D. Campbell
- G. Côté
- C. Gervais
- M. Gillen
- K. Murphy
- A. Patry
- S. Hurley
Via Conference Call
- M. Arnoldo
- Y. Bismilla
- L.-P. Gravelle
- C. Ledgley
- D. Nauman
- N. Pellemans
- S. Rancourt
- K. Sechley
- H. Sue
- P. Wang
- J. Wilson
- S. Zhang
- I. Gagné
- R. Gardner
1. Approval of Minutes of the Meeting of November 1, 2012
The minutes of the JLC meeting of November 1, 2012 were approved.
2. Business Arising
3a) Corporate feedback mechanism
This item pertained to a question raised at the previous JLC meeting by L.-P. Gravelle regarding the distribution of phone calls received by the CIPO Client Service Centre (CSC), in terms of the proportion of calls coming from agents and the subject matter of the phone calls. A. Lajoie indicated that after some research with the Information Branch, the only information that can be provided is that in a sample of 5,000 CSC phone calls, about 20% of those are from patent agents. A popular query type is questions related to the filing process, and 27% of queries are quick status requests. L.-P. Gravelle asked if there is any interest on the part of CIPO to drill down on those statistics. A. Lajoie responded that, at the moment, the Office does not have the tools to achieve this. However, it is hoped that when the CSC has a more sophisticated system for keeping a record of phone calls, the Office will be able to produce such statistics.
4c) Update on unauthorized and fraudulent requests for fees
This item pertained to a question that had been raised by Y. Bismilla regarding whether CIPO could include a notice on the patent website regarding unauthorized and fraudulent requests for fees from third-party companies regarding PCT applications. K. Murphy indicated that a notice has been prepared alerting applicants to unauthorized requests for fees for PCT applications. The notice is to be posted on CIPO's main web page with a link to the WIPO web page. The WIPO web page has further details, including many examples of the types of unauthorized fraudulent documents that have been seen.
4k) Unscannable drawings
A. Lajoie had indicated at the previous JLC meeting that the Office would follow-up on whether the Patent Operations section would issue a communication to inform applicants that their applications contain drawings which are not scannable due to limitations of the system. G. Côté responded that due to the way in which the Office is set up operationally, this is not feasible in every case at this time. However, in cases where the application contains photographs or coloured drawings, the Formalities section will now be issuing a notice indicating that such photographs and coloured drawings are never scannable due to limitations of the system
5) Other Business: Special Order status
This item pertained to the right to special order status for accelerated prosecution, where the time-line is subject to the new Rules. There had been discussion at the previous JLC meeting regarding whether applications which have gone abandoned on or before April 30, 2011 and which are subsequently re-instated could be granted special order status. Additionally, it was asked whether special order status may be granted in cases where abandonment has occurred after April 30, 2011, however reinstatement has occurred before a request for accelerated examination is made and new circumstances would justify the grant of special order status.
K. Murphy responded that, where an extension of time is requested or an application has been abandoned after April 30, 2011, the application is not entitled to special order status. This applies whether or not the abandonment has occurred prior to a request for accelerated examination. The Office understands that this may be seen as restrictive, however this is the law as it currently stands. It was the intent at the time of drafting of the new Rules 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. Clients are directed to the Regulatory Impact Analysis Statement (RIAS) published on March 3, 2011 in Canada Gazette - Part II.
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-December 29, 2012. A. Lajoie noted that most feedback items relate to the application process and issues with mail. She also observed that the volume of feedback transactions is low and encouraged IPIC members of the JLC to use the online feedback mechanism, which enables efficient follow-up and monitoring of any trends.
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-December 31, 2012 was provided to the members of the JLC. H. Sue had C. Ledgley noted that they did not receive this copy, and A. Lajoie indicated that it would be re-sent following the meeting.
A. Lajoie observed that, on the examination side, all standards for the percentages of inventory of applications with a request for examination waiting for a first substantive office action are being met. In addition, all standards are being met for the provision of a subsequent office action to an application following receipt of a client response. The next fiscal year will see a re-formulation of standards with revised targets, with a view to improvement and reduction of pendency as a key priority.
On the patent operations side, G. Côté noted that all standards are being exceeded for issuance of a filing date and issuance of a confirmation date for national entry. There are slight delays in the issuance of ownership registration, however the Office is catching up.
3c) Regulations Update
K. Murphy provided the JLC with an update on Regulations and the Rules amending the Patent Rules. In terms of the regulations amending the Patent Rules and Trade-marks Regulations regarding Patent and Trademark agent examinations, the Office has had to prepare updated documentation due to new Treasury Board requirements. However, publication of the regulations in Canada Gazette Part II is still expected to take place in the late summer or early fall.
Progress is being made on the approval and associated IT modifications to implement the Patent Rules Package 2 for the "Simplification of Administrative Requirements". It is likely be published in the near future.
This Rules package includes:
- 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; and
- Amending who can pay maintenance fees and reinstate for missed maintenance fee payments to
3d) Section 8 Update
K. Murphy provided a Section 8 update.
The work on processing the inventory of Section 8 requests continues. The Office is not quite at a pendency of 6 months, however significant progress is being made: 280 Section 8 requests have been completed since the previous JLC meeting of November 1, 2012.
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 Scott Vasudev's attention.
H. Sue inquired as to the turnaround time for Section 8 requests, as he has one case that has been waiting for 16 months. K. Murphy responded that the turnaround time is about 12 months, however the goal is a turnaround time of 6 months. The inventory has been dropping by about 25% every four months. A. Lajoie added that Scott Vasudev should be contacted regarding the specific case that has been waiting as many as 16 months.
3e) MOPOP Update
K. Murphy provided a MOPOP update.
The Patent Branch is facing resource pressures and has continued to make the finalization of post-FCA Amazon.com guidance an office priority. As a result, the revision of the MOPOP chapters has been experiencing some unfortunate delays.
A review of the feedback received during the public consultation on MOPOP Chapter 21 – Final Actions and Post-Rejection Practice is complete. The Office is in the process of finalizing the chapter and would like to release the revised chapter this spring.
MOPOP Chapter 14 - Unity of Invention has been finalized and the Office intends to release the chapter soon after finalizing the post-FCA Amazon.com guidelines.
The Office hopes to conduct public consultations in the spring of 2013 for MOPOP Chapter 15 - Novelty, Obviousness and Double-patenting, and Chapter 7 – Request for Priority.
MOPOP Chapter 17 - Biotechnology remains in the pre-internal consultation drafting stage and consultation on this chapter in late 2013 is anticipated.
3f) 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 February 28, 2013. There continues to be good participation in PPH agreements, with the numbers of participants increasing all the time. PPH agreements are of continued benefit to both applicants and the Office in terms of examination efficiency and fewer Office Actions being required. Clients are encouraged to refer to the PPH Portal maintained by the JPO at http://www.jpo.go.jp/ppph-portal/index.htm for statistics on all PPH agreements.
At CIPO, two new PPH agreements have started recently:
- A two-year PPH pilot with the Israel Patent Office which started November 1, 2012; and
- A two year PCT-PPH pilot with the USPTO that started January 31, 2013. This is based on work done by the USPTO as ISA/IPEA and is for applications that have entered the national phase on or after January 31, 2013.
There has been an agreement in principle between the Heads of Office with the State Intellectual Property office for the People's Republic of China (SIPO) for a pilot PPH project. In addition, K. Murphy along with Eugene Derenyi of Fogler, Rubinoff LLP will be hosting an IPIC webinar on PPH on April 4, 2013 from 1-2 pm. The webinar, which will be moderated by L.-P. Gravelle, is entitled: "Rolling down the Patent Prosecution Highway: What you need to know for a smooth ride".
4. New Business
This item pertained to revised practice guidance following the FCA decision regarding the Amazon.com, Inc. patent for a one-click online shopping feature. A. Lajoie indicated that such guidance is not in place yet. However, the Commissioner of Patents has approved the practice guidance for examination of patent applications subsequent to the decision and, in March, Patent Notices will be published clarifying the Office's position with respect to examination practice. All internal and external feedback in response to the April, 2012 public consultation on the proposed practice guidance has been considered. The guidance that will be published in March will focus on practice guidelines for analysing patent applications and on clarifying examination practice with respect to computer-implemented inventions. Subsequently, practice guidance will be published relating to medical use and diagnostic method claims. M. Arnoldo asked when guidelines on claims pertaining to dosage regimens would be published. A. Lajoie responded that the Office hopes to have such guidelines published in the next two months. M. Paton noted that mention had been made in the past of a special group that is to be charged with cases where the Amazon.com decision is applicable, in order to ensure consistency. She wondered if this was still the case. N. Tremblay responded that there are indeed a few examiners who are more expert in such cases.
4b) OPS practice tips
This item is to be a recurring item at JLC meetings to share operational tips that will help both the Office and clients.
The following tips were shared by G. Côté:
- In some cases, clients are sending in duplicate documents, such as the same document via the electronic system or by paper as well as by fax. Such duplicate documents are not necessarily received the same day and will follow two different paths, creating a lot of work and requiring reimbursements. Clients are asked to avoid sending in duplicates, especially in the context of international files;
- In the submission of a Section 8 request, it is not necessary for clients to return the grant;
- Clients are asked to take note of a practice notice that was published October 12, 2012 regarding corrections to applicants' names; and
- As previously mentioned, photographs and coloured drawings are always considered unscannable due to system limitations.
A. Zahl asked whether the unscannability of photographs also applied to data in the form of charts, graphs, photomicrographs and reproductions of gel electrophoresis results, for example, which cannot be put in the form of a drawing.
G. Côté responded that the system has difficulties when the spacing between lines is too small. D. Campbell added that graphs and charts are put into a drawings tab in TechSource, however they tend to fall into a grey area. Photocopied photographs are also scanned into a drawings tab when possible. Such grey-scale scanned images are not legitimately drawings though, as they are not made with clear, black lines as prescribed by Rule 82. If a Rule 82 objection is made to a photograph (or photocopy thereof), Applicants may respond arguing that the photograph is not a drawing in accordance with Rule 82. Photographs and photocopies thereof, whether in colour or not, need to comply with Rule 83. Whether an image is scannable into TechSource and whether it is compliant with the Rules are two different things.
M. Paton suggested that, in cases where PCT publication has reduced the quality of a photograph, it would be in the best interest of the Applicant and the Examiner to submit a better copy, such as an original of the photograph as a voluntary amendment. Such a submission may not be scannable, but at least the Examiner is looking at the best quality image.
4c) Name that includes non-English/French character
This item was submitted by L.-P. Gravelle and pertained to cases where, for example, an Applicant's name includes a diacritical character such as an umlaut or a bar. He noted that CIPO's IT system does not appear to permit such characters, however there is no indication on CIPO's website as to the transformations that occur, if any, when letters having various diacritical marks appear. He added that clients often ask that their names be entered correctly. G. Côté responded that CIPO's current IT system is, unfortunately, unable to handle such diacritical marks. Further, due to the lack of a clear standard, the transformations that are performed on the letters, such as the conversion of an ü to "ue", may vary depending on the analyst. She asked if JLC members had any recommendations as to a standard fashion in which diacritical marks should be treated. She recommended that the diacritics simply be ignored in all circumstances for the sake of consistency. H. Probert noted that, in German, it is standard in publications to replace the umlaut with "e", however, this is not the case in other Nordic languages. She suggested, therefore, that the replacement of umlaut with "e" only occur in the case of German names and words and not in the case of other languages. A. Lajoie added that it is hoped that this issue, which has been around for a number of years, can be fixed with an updated system. She asked that IPIC members of the JLC submit recommendations over the next month as to the best strategy for dealing with these characters in the meantime so that the Office can be consistent. L.-P. Gravelle affirmed that he would ask clients for their feedback.
4d) Excess page fees for sequence listings provided electronically (e.g. on CD)
G. Silver had submitted this item requesting an update regarding how/if electronic sequence listings are counted toward the excess page fee. She opined that excess page fees should not be paid for something that is never printed.
K. Murphy directed the JLC to the minutes of the JLC meeting of February 16, 2011, where the following is explained:
- With package #2 of the Rules amending the Rules, the Office plans to eliminate electronic sequence listings from any excess page fee calculations, however for the time being the law still requires the inclusion of electronic sequence listings in the calculation of extra page fees. Currently, the Office uses Microsoft Notepad and a font size of 10 point to count extra sequence listing pages, however testing of a font size of 8 point is being considered. The sequence listing is copied to Microsoft Notepad, and the document is printed out to determine the number of pages.
4e) Representative drawings
Y. Bismilla had submitted this item noting that statements have been appearing in Office Actions for PCT national phase applications to the effect that the applicant should take the opportunity to select a representative drawing. G. Côté noted that, correspondence containing such statements is not issued on the operations side. The Patent Operations section looks at the WIPO publication to determine if a Figure has been selected to be published with the abstract. If a drawing is selected, it is placed in a "Representative Drawing" tab in Techsource. If no drawing is selected, a Representative Drawing field is marked as N/A. N. Tremblay added that it is not a common practice to have such statements in Examiners' reports and it appears that, in these cases, these statements have been made simply as a courtesy. If the Operations section has marked the Representative drawing field as "N/A", the examiner will generally choose an appropriate drawing to be the "Representative drawing" for the application.
4f) Indefiniteness objections
A. Brett had submitted this item pertaining to objections under subsection 27(4) of the Patent Act appearing in Office Actions indicating that it is unclear who or what is performing a method step or steps. He asked for CIPO's position on such objections. N. Tremblay responded that, indeed, there is no requirement that "who" or "what" is performing the steps be recited in the claims. After discussion with the Examiners in question, such objections should no longer be seen, and clients are asked to contact the Examiner's section heads if these objections continue to appear in Office Actions.
4g) Improper combination of objections on different grounds
- Rule 84/Section 27(3)/Sound prediction
- Lack of utility/overbreadth/insufficiency
D. Nauman and S. Rancourt had each submitted this item.
D. Nauman had opined that Examiners are improperly combining Rule 84, Section 27(3) and sound prediction issues into a single objection. He argued that: a) Rule 84 is a technical requirement that merely requires the language of the claim to be present in the description, b) section 27(3) is the sufficiency and enablement requirement, not whether the invention works or whether the language of the claims is found in the specification, and c) sound prediction is part of utility, which is found in section 2 of the Patent Act, thus making it improper for examiners to be challenging a patent application based on lack of disclosure of a sound line of reasoning. He wondered if it would be possible for examiners to specify with which of the specific Rules or provisions they are finding fault in the application. He also asked if each objection could be clarified separately where there is a problem with more than one of the Rules or provisions.
S. Rancourt had also noted that examiners' objections for lack of utility are often cited under Rule 84, with no mention of section 2. In addition, the text of subsection 27(3) has been used by examiners as a basis for objections under Rule 84. She indicated that it would be helpful if examiners could be reminded to clearly distinguish the reasons for an over-breadth objection under Rule 84, from the reasons for a utility objection pursuant to section 2 of the Patent Act, and from the reasons for an insufficiency objection under 27(3) of the Patent Act.
M. Gillen responded that Rule 84 objections for lack of support and over-breadth are often seen in reports especially in the biotechnology division because Examiners have been trained to make such objections. This is affirmed in MOPOP Chapter 12, as well as in MOPOP Chapter 17. A section in MOPOP Chapter 12 sets out how examiners are to include these kinds of Rule and section indications in their reports. Generally, where examiners feel that a claim is broader in scope than what the description supports, they will make a Rule 84 objection in a first report. If in an Applicant's response, it is argued that the claim is not too broad, Examiners may object to the specification under subsection 27(3) of the Patent Act, in cases where Examiners consider that the claimed subject matter has not been fully described. On top of the issue of subject matter is the issue of whether the scope of a claim is too broad in terms of the utility of the subject matter claimed. An examiner will usually look for support for a sound prediction, namely whether there is a factual basis and a sound line of reasoning and whether these are disclosed in the application. There is ongoing debate on what needs to be disclosed in an application with respect to utility. The Teva case from last fall raises a number of issues regarding utility. In view of the Teva case, the Office may need to look into the current manner in which these objections are framed in examiners' reports. There should be new guidance with respect to framing of objections under the different sections and Rules in the upcoming amended Chapter 17 of MOPOP, as well as in MOPOP Chapter 12 when it is eventually reviewed.
D. Nauman expressed concerns that the current practice means that 3 Office actions are needed and up to a year and a half can pass before a lack of utility objection is made under section 2 and before the real meat of the problem is apparent. S. Rancourt added that, from the perspective of responding to Office Actions, it is not desirable to have to speculate as to the nature of the Examiner's issue with a claim. Objections should be clearly made under Rule 84 or subsection 27(3) of the Patent Act or section 2 of the Patent Act. A. Zahl agreed that it is often difficult to explain to a client that an examiner made an objection under Rule 84 but really the issue is one of sound prediction.
M. Gillen answered that there are two issues: 1) the issue of support for claimed subject matter, which may initially be under Rule 84 followed by subsection 27(3) of the Patent Act and 2) the issue of utility. It may be more proper for Examiners to raise the issue of utility right way and that is something that the Office can look into internally. M. Gillen agreed with Ms. Rancourt that objections should be clearly made under a particular Rule or section of the Act. He referred again to MOPOP chapter 12 which indicates that objections under section 84 of the Patent Rules suggest that the Examiner views the defect in the claim as one of scope remediable through amendment, while section 2 objections are more fundamental and pertain, in most cases, to something that cannot be fixed by amendment. D. Campbell added that the approach in the current MOPOP as it relates to issues of sound prediction was taken to permit identification of a scope problem under Rule 84, instead of jumping right away into identifying a section 2 problem. A Rule 84 objection may be seen where some of a claim's scope has utility and some of it does not. The part that does not have utility is not supported.
4h) Mutual Exploitation
D. Nauman had submitted this item pertaining to cases where a unity of invention defect has been identified in an Examiner's report. In some such cases, a totally revised claim set is submitted in response to the report, which claim set does not necessarily "fit into" one of the identified Groups of inventions. Thus the Applicant does not state in the response that a particular previously-identified Group of inventions has been elected. In these cases, Examiners will still indicate in a subsequent Office Action that the Applicant has elected "Group A", for example, which is not actually representative of the claim set that has been submitted. D. Nauman indicated that this may cause problems down the line with regard to the protection afforded by Consolboard, such as when the Applicant wishes to file a divisional based on the subject matter of Group A as identified in the initial unity objection.
D. Campbell observed that the issue did not appear to be with the word "elected", but wondered if the problem may be that the Applicant is trying to introduce in a divisional a Group of claims that may overlap with the claims of the parent. A. Lajoie noted that now that the issue is better understood, the Office will discuss the issue and provide clarification on its position at the next JLC meeting.
4i) Objections to antibody claims
D. Nauman submitted this item pertaining to claims directed to antibodies. He noted that Examiners often object to any antibody claim which attempts to cover anything the Examiner views as being "less than" the disclosed sequence of an exemplary antibody. These include objections to claims which set forth, for example, 5 of 6 CDR sequences, antibodies which are 95% identical to a reference sequence and antibodies having conservative substitutions. He wondered if it is the Patent Office's position that Applicants should be limited to one exemplary antibody sequence and also if the Office is planning to publish revised guidelines on its examination policies in these subject areas.
M. Gillen responded that it is not the Office's position that Applicants should be limited to one exemplary antibody sequence, however this may have been the position in the case of the particular examples to which Mr. Nauman referred. The matter is a question of support in the application and the state of the art. With regard to applications dealing with humanized antibodies or CDR regions within antibodies, if changes, such as conservative substitutions, are made to a small part of these molecules which is fundamental to the activity of the molecules, it is difficult to soundly predict that such changes will not affect antibody binding and utility. Revised guidance on examination practice with respect to antibodies is planned as part of the ongoing revision of MOPOP Chapter 17. There has been a number of Commissioner's Decisions relating to antibodies since 2009 when the last MOPOP Chapter 17 was published. When preparing the revised guidance, any relevant decisions issued in the Courts or by the Office will be considered. The Office will also look at its practice in terms of what sections of the Act and Rules are to be used when framing sound prediction objections.
D. Nauman expressed concerns that Examiners appear to be summarily dismissing arguments Applicants make about sound prediction, such as with objections to conservative substitutions within antibodies as invariably resulting in a lack of utility. He considered that, particularly in view of the recent Teva decision, there should be more leeway.
M. Gillen responded that Examiners are looking to the application for a factual basis and a sound line of reasoning from which it can be predicted that substitutions of a conservative nature would not affect antibody binding. The Teva decision is very helpful, however the case was not about sound prediction, and the Court did not speak to an enhanced disclosure requirement for sound prediction. I. Clark noted that the term "conservative substitution" can mean chemically conservative or conservative with respect to the function being retained. M. Gillen agreed that there are different definitions of the term "conservative", and the term may not have the same meaning in all applications. He added that in the particular exemplary applications to which D. Nauman had referred, it would appear that the substitutions could be chemically conservative, changes which may have a huge effect on biological activity.
4j) Section 31 of the Patent Act: Correcting declarations of entitlement
D. Nauman had submitted this item pertaining to corrections of declarations of entitlement. He asked that the Office clarify the method for making these corrections where a company is incorrectly listed as being entitled as an applicant.
K. Murphy responded that the Office has outlined the process for correcting errors in the naming of applicants at the time of filing or national entry in a Practice Notice of October 12, 2012 (found on CIPO's webpage). In the situation outlined by Mr. Nauman where the application was filed indicating an incorrect applicant, part 3.2 of the notice should be followed. Simply filing a new declaration of entitlement is not acceptable.
- Part 3.2 of the notice reads as follows:
- A request for correction must be submitted by the authorized correspondent (or the correct applicant if no agent has yet been appointed) and must contain:
- a statement signed by the incorrectly identified applicant to the effect that their name appeared on the petition, request for national entry, or PCT request in error; and
- a statement signed by the correct applicant or the authorized correspondent to the effect that the person or entity now identified as the correct applicant is the inventor or the legal representative of the inventor and that the error arose from inadvertence or mistake without any deceptive intention.
- A request for correction must be submitted by the authorized correspondent (or the correct applicant if no agent has yet been appointed) and must contain:
It should also be noted that amending the Applicant would require submission of a new declaration of entitlement.
D. Nauman noted that the practice notice is cumbersome because it requires multiple statements and affidavits from people who may not have even known that they were erroneously added as an applicant. D. Campbell responded that it is agreed that the process is cumbersome, however it has a legal basis. A change to the process would require a revision of the Patent Act.
S. Paul asked for clarification as to the reason for which Section 31 could not be used in the scenario identified by D. Nauman.
K. Murphy explained that while subsection 31(4) can be used to add an Applicant, subsection 31(3) cannot be used to remove the incorrectly identified Applicant because 31(3) states that "where an application is filed by joint applicants…". In this particular case, at no time was the application filed by "joint applicants". It was simply filed by the incorrect Applicant.
S. Paul noted that the definition of Applicant includes both the inventor(s) and the Applicant. She wondered if by that definition, or in a case where the inventor is explicitly added as a joint Applicant, the inventor and incorrectly identified Applicant could be considered "joint applicants" for the purposes of section 31. Thus, removal of the one incorrectly identified Applicant would qualify as a correction under subsection 31(3).
K. Murphy indicated that the Office would look into this issue offline and follow-up on the issue. A. Lajoie added that it will be necessary to revisit processes for corrections of declarations of entitlement when the Patent Act is eventually modernized.
4k) Section 31 of the Patent Act: Removing non-applicant joint inventor
M. Paton had asked for clarification as to the correct procedure for removing a non-applicant inventor.
K. Murphy responded that to add or remove an inventor the Office simply requires a request from the authorized correspondent stating that they wish to add or remove an inventor. The authorized correspondent has the rights to the application, and therefore no evidence is required to remove an inventor. In cases where a request to add or remove an inventor is submitted to the Office from someone who is not the authorized correspondent, such requests would need to be made under Articles 31(3) and 31(4) of the Patent Act. These would be handled separately by Patent Administrative Policy and will be looked at closely to ensure that the request should be actioned.
4l) Reinstatement in the case of overlapping multiple causes of abandonment
K. Lachaine had submitted this item relating to situations where there are multiple causes of abandonment, with reinstatement deadlines which are not identical. In those cases, she noted that only a single Notice of Reinstatement is issued, and there is no mention in the notice that the first abandonment(s), as well as the latest, has/have been rectified. She wondered if CIPO could implement the following recommendations: 1) in cases where reinstatement is requested when other causes of abandonment are still outstanding, confirm in each case that a specific cause for which reinstatement was requested has been resolved but advise the Applicant that the application remains abandoned for other causes and 2) when multiple causes of abandonment have occurred and overlap in time, indicate specifically all of the causes of abandonment which have been rectified in the ultimate Notice of Reinstatement.
G. Côté responded that at this time, the system cannot recognize one action from another, and therefore implementing the recommendations is not feasible in the current IT environment.
D. Lambert noted that there have been inconsistencies in this regard. Sometimes a Notice of Reinstatement is received when the application is still abandoned for other reasons. At other times, a Notice of Reinstatement is received which does not mention all causes for reinstatement. In such cases, clients are concerned that a reinstatement has been missed as there is only one Notice of Reinstatement, and it does not mention all of the reasons for the reinstatement.
G. Côté indicated that the Notice of Reinstatement should be a single final Notice of Reinstatement sent only when all outstanding issues have been resolved. She asked that specific instances where this is not the case brought to her attention so that clarification and further information can be provided as to what has occurred in those instances. A. Lajoie added that, due to IT limitations, the Reinstatement Notices are not customized but, rather, are "host correspondence" which is not tailored to address specific issues.
4m) Operational problems
M. Paton had submitted numerous issues relating to operational problems. Although all of these issues have been resolved, she wondered if others are experiencing a similar increase in such problems. G. Côté indicated that Ms. Paton's submission raised concerns as to the extent of the issues which may occur with Patent Operations. She proposed that a consultation or working group be formed seeking input on these types of situations, on quality of service and on anything clients would like the Office to offer. Ms. Paton indicated that she would be volunteering to be part of that group. Ms. Côté indicated that she would give it some additional thought and then submit a proposal for the formation of the working group.
4n) Electronic filing
R. Caldwell had submitted this item pertaining to CIPO's electronic filing system. She wondered if CIPO could amend its system to have a specific National Entry system with a drop-down-type menu prompting the Applicant to identify if the national entry is a late entry. She also wondered if there could be a specific drop-down menu or fill-in boxes for at least required fees. In addition, she suggested that CIPO's electronic filing forms have an automatic CIPO fee authorization and reinstatement phrase, something that has been suggested in the past.
A. Lajoie responded that revisiting the e-filing system for patents is a top priority item in the planned IT modernization project. All issues which have been raised and potential improvements which have been suggested in the past will be taken into consideration when the functionality of the system is re-built. The timing of when this is to be completed is uncertain.
L.-P. Gravelle asked that, before coding commences under the IT modernization project, the Office fly by the JLC the main features that they are planning to address with the modernization. A. Lajoie affirmed that it is the Office's intention to have a formal consultation with clients as this project is undertaken. M. Paton added that clients want to feel confident that, when they make submissions using the online forms, and when they submit communications with CIPO using the fax machines, these submissions and communications are received and handled properly. A. Lajoie indicated that the Office shares the same vision and wants to build a reliable system enabling client self-sufficiency and accessibility.
4o) Withdrawal of Notice of Allowance/Refund of Final Fee
D. Nauman had asked for clarification as to CIPO's procedures when an application is amended by Voluntary Amendment at the time the application is reinstated for failure to pay the final fee, and the amendment necessitates a further Office Action. Rule 30(7) and the MOPOP state that a Notice of Allowance must be withdrawn and the Final Fee must be refunded if the Commissioner has reasonable grounds to believe that the application does not comply with the Act or Rules. The issuance of a further Office Action is an indication that the claims do not comply with the Act or Rules. He wondered, therefore, if Applicants must expressly request a refund and withdrawal of the Notice of Allowance in such cases.
D. Campbell responded that the scenario that Mr. Nauman has described is not a withdrawal from allowance as described in Rule 30(7) but, rather, a reinstatement for failure to pay the Final Fee and subject to Rule 30(10). Rule 30(10) states that if an application has been abandoned under paragraph 73(1)(f) of the Act and reinstated, any previous notice that was sent in accordance with subsection (1) or (5) is deemed never to have been sent. If the Final Fee has already been paid and has not been refunded, any further notice sent in accordance with subsection (1) or (5) shall not requisition payment of the Final Fee. Therefore, in the case of a failure to pay the final fee, the Office considers the application never to have been allowed and the final fee is refunded only when this is expressly requested by the Applicant.
M. Paton recalled that at a previous JLC meeting, Mark Eisen expressed concerns that when an application is reinstated by paying the final fee and when a Notice of Allowance is subsequently issued, there is nothing that can be done to stop the grant of the application because the final fee has already been paid. She opined that when a client is in a position where they do not want their application to issue too quickly, requesting a refund of the final fee would be a good idea.
D. Campbell responded that some of the recent changes to Rule 30 were specifically made to try to avoid the situation where an application could go abandoned more than once for failure to pay the final fee. However, the Rule changes may not have accomplished this. If such situations occur more frequently, the Office may take the necessary steps to limit the number of times an application can go abandoned for failure to pay the final fee, as these situations may not be in the public interest.
D. Nauman noted that, in some cases, the Applicant may be unsure of what exact formulation is going to be commercially pursued, and it may eventually be desirable to amend the application to recite the specific formulation in the claims. H. Auerbeck added that, in the US, but not in Canada, it is possible to file continuations-in-part in these situations.
A. Lajoie concluded this item by indicating that, as part of CIPO's strategic and continuous improvement plan, the Office wants to increase certainty and reduce pendency. This is a shared responsibility, and a strategy which slows down the prosecution of an application is not part of CIPO's vision. The Office's strategic plan for 2012-2017 may be found on the CIPO website.
K. Lachaine had submitted this item concerning cases where PPH applications have been filed in Canada where prior art is cited by the Canadian Examiner which has already been cited in the Office upon which the PPH application is relying. K. Murphy responded that the PPH provides a means of leveraging the work done in other Offices. However, an Examiner is not bound under the PPH by the conclusions of the prosecution that has occurred in the Office of Earlier Examination (OEE). Rather, the examiner should exploit the search and examination results of the OEE prosecution as a starting point for examination. As with all other applications, CIPO's Examiners will examine PPH applications in accordance with the Canadian Patent Act and Patent Rules, and the Manual of Patent Office Practice (MOPOP). The Examiner should make objections, including citing prior art, as he/she thinks appropriate. Generally, there are fewer of such prior art citations, however it is still possible for them to occur.
H. Probert noted that in certain cases, it would appear that Examiners are ignoring the prosecution from the OEE instead of indicating why there is any disagreement with that prosecution. K. Murphy responded that Examiners should always give a clear explanation of how they feel the prior art applies to the claims. If there are concerns regarding a specific file, these should be brought to her attention. A. Lajoie added that where there are concerns over a pattern that is being observed, such as in a particular area of technology or with particular names, these may be communicated to the appropriate Section Heads or Division Chiefs.
4q) Large/small entity
L.-P. Gravelle had submitted this item concerning an application in which a small entity declaration had been filed with subsequent fees paid at the small entity rate. Later, large entity top-up payments were made to the fees paid at the small entity rate. He wondered if CIPO would issue written confirmation that the application would be considered a large entity from the start, namely as of the filing date.
A. Lajoie responded that CIPO does not issue additional custom confirmations over and above the usual confirmations which are built into the Office's processes, such as confirmations that top-up payments have been received and that an application is in good standing. She added that with the next iteration of the IT system, clients should be able to see all information about the application online.
4r) Double patenting
L.-P. Gravelle had submitted this item asking whether, in cases where a double-patenting rejection is raised in view of a copending application(s), both/all applications could be assigned to the same Examiner.
A. Lajoie responded that, whenever possible, the Office tries to have those applications examined by the same Examiner. D. Campbell added that examination of applications is auto-routed by the system to a specific Examiner based on IPC codes. As more Examiners have been recruited to reduce pendency and turnaround times, the IPCs to which particular Examiners are assigned have become more focussed. Therefore, it is possible for two closely related applications to be auto-routed to different Examiners. If a double-patenting issue is discovered after time has been spent searching and examining an application, it may not be efficient to hand the application over to another Examiner. However, if a double-patenting issue can be spotted early enough, then it may be more efficient to have all of the co-pending applications examined by the same Examiner.
L.-P. Gravelle asked if, once a double-patenting issue has been raised, the other overlapping applications are flagged to make note of the issue. D. Campbell responded that Examiners are instructed and encouraged to bring a double-patenting issue to the other Examiners' attention. D. Nauman wondered if when an Examiner begins examining an application it is never transferred to another Examiner. D. Campbell answered that no, that is not the case. For example, when an Examiner is on certain types of leave, their cases may be transferred to another Examiner. There is generally good cooperation amongst Examiners and they are striving for efficiency and to meet their specific goals.
5. Other Business
A. Lajoie brought the attention of the JLC to a message that is posted on the CIPO website regarding a series of roundtables which the Office is running with Canadian assignees. In this third round, the Office is visiting Calgary, Toronto and Quebec city. One of the tables is for registered patent agents who service Canadian SMES on a regular basis. This is an opportunity to share our vision and get feedback.
C. Ledgley noted that the front page of CIPO's website did not contain any notification that it would not be possible to pay maintenance fees online between March 1-4, 2013. A. Lajoie indicated that the Operations section was not aware of this and that the Office would follow up on it.
H. Auerbeck added an item at this juncture regarding a divisional application which his company had filed. The filing certificate was received by e-mail directly to his personal e-mail address rather than to the contact address which is the company's central e-mail address for processing patent correspondence. I. Clark noted that he had also received a filing certificate by e-mail. H. Sue indicated that his firm has had this problem for many months, where CIPO correspondence was being sent to a colleague's personal e-mail address.
A. Lajoie responded that the Office would look into its relevant processes and that A. Patry would look into the specific situations that were discussed.
6. Date of Next Meeting
The next JLC meeting will take place on Thursday, June 20th, 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 3:00 PM.