Archived — Joint Liaison Committee Meeting #129

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Thursday, June 20, 2013



  • L.-P. Gravelle
  • A. Brett
  • I. Clark
  • K. Lachaine
  • M. Paton
  • S. Paul
  • J. Pivnicki
  • H. Probert
  • J. Raakman
  • G. Silver
  • J. Wilson
  • A. Zahl

Patent Office

  • A. Lajoie
  • M.-A. Bertrand
  • D. Campbell
  • G. Côté
  • L. Giardina
  • M. Gillen
  • J. Hurkmans
  • E. Lafontaine
  • A. Patry
  • I. Robert
  • S. Vasudev
  • S. Hurley

Via Conference Call

  • D. Andrade
  • M.-A. Arnoldo
  • B. Athwal
  • Y. Bismilla
  • K. Ledwell
  • C. Ledgley
  • N. Pellemans
  • S. Rancourt
  • K. Sechley
  • H. Sue

CIPO Observers

  • K. Gajewski
  • P. Koch
  • S. Nevill

1. Approval of Minutes of the Meeting of February 28, 2013

A. Brett asked a question regarding Item 3c) "Regulations Update" of the minutes of the meeting of February 28, 2013. He wanted to clarify whether the Patent Rules are being amended so that the authorized correspondent and the applicant are permitted to pay maintenance fees. S. Vasudev responded that while the Patent Law Treaty goes further and allows anybody to pay maintenance fees, the current Rules change stipulates that maintenance fee payment can be made by any applicant or the authorized correspondent.

With this, the minutes of the JLC meeting of February 28, 2013 were approved.

2. Business Arising

4h) Statement that an election has been made

At the previous JLC meeting, this item had been submitted by D. Nauman. The item pertained 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 responded that it would appear that this item pertained to a small number of cases, where the Applicant presents a new Group of claims and, also, the Examiner incorrectly states that the Applicant has elected to pursue Group A, for example. The Office does not foresee double-patenting problems down the line as a result of the Examiner having incorrectly stated that Group A has been elected, as Canada does not have a file wrapper estoppel doctrine. Nevertheless, D. Campbell will discuss the issue with the Training Program Manager and determine what training can take place to avoid this kind of incorrect identification of a new Group of claims.

C. Ledgely added that she had had a case where she had alerted the Examiner that a completely new Group of claims was to be submitted, and the Examiner had indicated that they did not know how to address the issue. She indicated that perhaps this would be an opportunity for training and an update of the MOPOP. D. Campbell responded that a consultation had taken place a while ago on the "Unity" Chapter 14 of the MOPOP, and that it is hoped that it could be approved shortly. When it is approved, there will be an opportunity to provide instructions to Examiners in regards to this problem. It was noted that in the consultation on the Unity Chapter, no feedback was offered regarding the use of the term "election". Examiners should, however, understand that while they have identified a Group of claims, the Unity issue may be resolved by the provision of a completely different set of claims.

4m) Operational problems

At the previous JLC, M. Paton had submitted numerous issues relating to operational problems. She had wondered if others are experiencing a similar increase in such problems. G. Côté had proposed that a consultation or working group be formed seeking input on these types of situations. It is now proposed that the formation of this focus group take place in the early fall.

5) Notification on web

At the previous JLC, C. Ledgley had 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 the dates of March 1-4, 2013.

A. Lajoie responded that the Office will now provide notifications of any system problems on the website directly so that clients are aware of the problems before actually going into the system for electronic transactions.

3. Ongoing Items

3a) Corporate Feedback Mechanism report

The Office had inadvertently neglected to produce a report and information on the Online Feedback Mechanism. A. Lajoie apologized and indicated that the information would be prepared and provided shortly following the meeting. She encouraged clients to use the feedback mechanism, as it provides the Office with good data for analysis of any trends in problems and issues.

3b) Service standards

An electronic copy of Patent Branch's "Patent Branch Client Service Standards (2012-2013)", "Patent Branch Client Service Standards (2013-2014)-Revised Standards", and "Production Volume Statistics 2012-2013" was provided to members of the JLC.

L. Giardina noted that certain changes have been made to the way in which Client Service Standards are reported. A new formula is now being used to show the work completed by each division every month. For calculating the percentage of inventory of applications with a request for examination that will be waiting for a first substantive office, the formula subtracts the number of actions corresponding to the service standard from the total number of first actions and divides that number by the total number of first actions. This should provide a better indication of when an office action should be expected. The formula is also being used for reporting on work on subsequent office actions and with respect to meeting PPH, ISR and IPRP deadlines.

A. Patry reported that, in the previous fiscal year, the service commitment results for the issuance of a confirmation date of national entry for PCT were below the expected percentage. However, since the beginning of this fiscal year, this issue has been resolved. The results for issuance of a filing date, of a confirmation date of national entry for PCT applications, and of ownership registration or notification requesting additional information now exceed the expected percentages.

3c) Regulations Update

S. Vasudev provided a Regulations update. The Office is in the last stages of finalizing the text of the amended Regulations. The next step will be approval and publication of the amended Regulations in Canada Gazette Part 1. This should occur in the early fall.

3d) Section 8 Update

S. Vasudev provided a Section 8 update. As of the date of the JLC meeting, the inventory of Section 8 requests is 20, which is a significant change from the inventory of 350 requests observed in October, 2012. The Office continues to process a handful of older requests corresponding to more complex files. As a result of the significant drop in Section 8 request inventory, S. Vasudev proposed that a Section 8 update should no longer be provided at the JLC meetings. He indicated, however, that if clients have not heard from the Office within 3 months of the request, they should let the Office know by way of the client feedback mechanism.

L.-P. Gravelle indicated that he would like to continue to have a Section 8 update at JLC meetings in case the number of Section 8 requests goes back up. A. Lajoie proposed that, for the sake of efficiency, instead of hearing a Section 8 update as an item, the Office could continue to provide statistics and information on these requests in Tables so that any trends can be observed.

K. Ledwell suggested that perhaps the number of Section 8 requests has decreased because certain issues have been resolved and a particular decision has been made as to whether a certain type of amendment can or cannot be made under Section 8. He indicated that it would be helpful to know how these issues have been resolved so that clients could determine if an angle other than a Section 8 request would be more appropriate. S. Vasudev responded that a notice providing more guidance on Section 8 could be posted on the CIPO website. He added that a detailed description of why an error is clerical in nature must accompany any Section 8 request.

3e) MOPOP Update

S. Vasudev provided a MOPOP update. Revised chapter 21 on Final Actions and Post-Rejection Practice is being finalized and it is hoped that it will be released in the fall. Chapter 14 on Unity of Invention has been finalized post-consultation and after final approval, it is expected that it will be released in the fall. A public consultation is planned for the fall on Chapter 15 on Novelty, Obviousness and Double-Patenting and on Chapter 7 on Requirements for Priority. Chapter 17 on Biotechnology remains in the pre-internal consultation drafting stage and it is hoped that a consultation on Chapter 17 can take place before the end of the calendar year.

The Office has been busy working on practice guidance following the FCA decision in the case. On March 8, 2013, two practice notices were published: PN2013-02 providing practice guidance assisting examiners in performing a purposive construction and PN2013-03 on guidelines for examining computer-implemented inventions using purposive construction. On June 10, 2013, practice notice PN2013-04 was published providing practice guidance with respect to examining medical use claims using purposive construction. The Office is preparing similar guidance for examining claims featuring diagnostic methods and it is hoped that this guidance will be completed in the fall.

K. Ledwell observed that examiners appear to be implementing the new guidelines in an uneven and inconsistent manner, making it difficult to predict how the guidelines will be applied and how to respond. He wondered if more detailed instructions would be or have been provided to examiners so that it would be clear as to what kind of claim wording would be acceptable.

A. Lajoie responded that consistency is a challenge with the new practice. All examiners have been trained in the new guidance, however applications are examined on a case by case basis and sometimes judgement calls are required. While a QC process is in place, because there are many examiners spread amongst several different sections, there is a risk of inconsistency. The issue is being looked at seriously and if there is any specific case that should be brought to the Office's attention, the appropriate section head may be contacted.

K. Ledwell indicated that by the next JLC meeting, there should be a better idea if any inconsistency is a systematic problem and that in the meantime any problems will be solved with the individual examiner and their section head.

K. Sechley asked whether CIPO's positions set forth in the practice notices are established or if the documents are still susceptible to modification. He noted that the practice notices have been the subject of several reviews and webinars which raise contentious points. A. Lajoie answered that the practice notices which have been published have been approved by the Commissioner of Patents and are based on the Office's interpretation of the FCA decision. The documents are not necessarily going to be modified based on such outside reviews. The Commissioner wants to apply the law and the Office has done its best to interpret and apply the law.

L.-P. Gravelle noted that the practice notices are administrative interpretations of the law, and that the law as outlined in the Regulations and jurisprudence takes precedence over such administrative interpretations. He added that Applicants and agents are free to argue these interpretations. In cases where there is a difference of opinion between agents and examiners, there may be recourse to the Patent Appeal Board.

S. Paul indicated that she had seen objections under Section 2 where the problem appeared to be with the claim preambles, yet these same preambles have been used for years, can be found in the MOPOP and have been seen in many allowed applications. She suggested that, for the sake of uniformity, a third follow-up practice notice should be drafted outlining sample claim preamble language that would be acceptable.

3f) PPH Update

S. Vasudev provided a PPH update. CIPO is currently working on indeterminately extending existing PPH agreements expiring September 30, 2013 with Japan, Korea and Denmark. The Office has signed a PPH memorandum of understanding with the State Intellectual Property Office of the People's Republic of China, and this PPH agreement will start on September 1, 2013. The Office also has an agreement in principle with Portugal, and the anticipated start date for this is October 6, 2013. As of September 1, 2013, all of CIPO's PPH agreements based on national phase work products will no longer be limited by where the Office of earlier examination application is first filed. This is the Mottainai approach and will be a change for the agreements with Denmark, Germany, Israel and Korea. With this approach, the Offices of earlier and later examination must have the same earliest date.

A. Zahl wondered if there is any possibility of having a PPH agreement with the European Patent Office. S. Vasudev responded that CIPO is interested in having a PPH agreement with the EPO. However, the EPO does not appear to be interested or to see the full benefit in work that is done by other offices and is only reluctantly looking into having PPH agreements with their IP5 partners.

3g) OPS practice tips

A. Patry provided the JLC with one Operations practice tip regarding applications with multiple causes for abandonment. She asked that clients clearly state the reason for reinstatement when submitting a reinstatement fee, as it is sometimes unclear which reinstatement fee is being paid.

S. Vasudev added that there are certain flexibilities that the Office can have in cases of multiple abandonments. When there are multiple causes for abandonment, a request for reinstatement can be read as a request to reinstate the whole application. However, it is always the fees that become problematic. A general authorization statement can be used for the Office to be flexible and to save an application.

M. Paton asked if it can be assumed that if a reinstatement fee is paid as part of the maintenance fee online service, it will be applied for that abandonment and not for any other cause. A. Patry responded that that is correct.

4. New Business

4a) LEAN initiatives (flow of actions)

L.-P. Gravelle had submitted this item pertaining to the irregular flow in the receipt of office actions and notices of allowance from CIPO. J. Hurkmans, the Quality Program Manager for the Patent Branch, responded to this item by introducing "LEAN" initiatives which are being undertaken by the Branch. Four graphs titled as follows were distributed by paper or electronically to members of the JLC: Graph 1: "Patent Branch weekly pitch for the 2012-2013 fiscal year", Graph 2: "Biotechnology Division weekly pitch for the 2012-2013 fiscal year", Graph 3: "Biotechnology Division weekly pitch for the first 11 weeks of the 2012-2013 fiscal year" and "Biotechnology Division weekly pitch for the first 11 weeks of the 2013-2014 fiscal year".

J. Hurkmans explained that CIPO has embarked on becoming a LEAN organization. LEAN is an improvement methodology which looks end-to-end at a product going through the system. LEAN is being implemented in the Patent Branch as part of its 5-year strategic plan for operational excellence. The goals of LEAN are to eliminate waste from the system, to create value for the customer and to establish continuous flow. The Office is working with consultants to coach us through the methodology and is establishing its own yellow-belt internal program to build our own internal expertise. A small number of employee-driven improvement projects called "kaizens" have been initiated in all product lines. One particular project is attempting to establish a continuous flow of products from the examination section to the operations section. A value stream map has been created for a nationally filed application, to map the entire business end-to-end as the product goes through it. What has been observed is that the flow of examiners' work to operations staff is very irregular, creating waste. An employee team was established last fall to look at this project. It can be observed in Graph 1 that spikes in production (of office actions and notices of allowance) during the 2012-2013 fiscal year occur at the end of each month. This has been attributed to the systems used for measuring examiners' production. The team came up with numerous solutions one of which has lead to a pilot study using the Biotechnology division. Graph 2 demonstrates that the spikes in production were observed in the Biotechnology division in the past fiscal year, and Graph 3 demonstrates that the spikes were observed during the first 11 weeks of the 2012-2013 fiscal year. For the pilot project, the team has set up a way to evaluate examiners' production on a continuous basis. Biotechnology examiners now get weekly production updates and have been provided with tools to produce continuously. Graph 4 shows that in this division, with the implementation of the pilot project, the spikes are almost gone for the first 11 weeks of this fiscal year 2013-2014. The Office is happy with the way the changes that have been made have inspired continuous flow. The pilot project ends at the end of June. After a period of management review, similar changes will be deployed among the other divisions by the end of the year.

I. Clark indicated that it would be preferable to have the graphs on office actions and notices of allowance separated. For agents, it is the office actions to which responses are written and these are the real issue.

J. Hurkmans responded that examiners do not generally produce reports at one time of the month and allowances at another, as cases are picked up as they come. If flow is smoothed out for one, the flow of the other is also smoothed out because examiners are taking the same mental steps for both office actions and allowances. However, the Office could take a look at whether there is a trend in producing more actions than allowances at one particular time of the month.

I. Clark expressed concerns that the operations section may also stockpile actions, and further smoothing may be required of the output from operations. J. Hurkmans responded that it is believed that if the flow from examination to operations is smoothed out, because operations works at the same rate every day, operations will necessarily continuously produce actions. However, it is logical to look at other parts of the system and LEAN is an ongoing process to find efficiencies and eliminate waste.

L.-P. Gravelle opined that it was a good idea to regulate flow and encouraged the Office to look at this in more detail. A. Lajoie added that now that every piece of correspondence from CIPO is sent in a separate envelope, this may also prevent peaks as reports will no longer be sent out in bulk.

4b) Request to delay examination

L. Giardina discussed this item pertaining to requests to delay examination. He indicated that in the past, the Office has been very accommodating in cases where a request for examination fee had been paid and agents asked for delays on examination. However, the examination and operations sections have been informed that the Office will no longer be doing that. The only delay will be the time to meet the Patent Branch's service standards, as the Office has committed to completing first actions within a certain amount of time. K. Sechley asked if delayed examination would be granted on the grounds that there are certain relevant decisions moving through the legal system. L. Giardina responded that in such cases, where there is a legitimate reason to delay examination, a delay may still be granted.

4c) When status request

A. Patry reported that the Office will no longer be responding to status requests as to when an application will be examined. A. Lajoie added that now service standards are more precise, indicating, for example, that 90% of first actions should be received by a particular date. If clients have a case that is outside of that particular date, they are invited to inform the Office via the client feedback mechanism. There are, however, other status requests that the Client Service Centre will continue to answer.

A. Zahl indicated that one reason for which status requests are sent out is to clarify that the Office has received a response. K. Ledwell added that if an application goes abandoned because an office action was not received for some reason, the responsibility is the client's. There is a court judgement saying that CIPO is not obligated to send out a Notice of Abandonment. Therefore, his firm routinely makes status requests within 12 months.

A. Patry explained that the Office is no longer responding only to questions as to when an application is going to be examined. L.-P. Gravelle noted that there were two issues: 1) what is the status of the application and 2) systematically asking when examination will resume on a particular file, and it is the latter to which the Office will no longer be responding. C. Ledgely asked what should be done when a report has not been received in a year. A. Lajoie responded that if an office action has not been provided within the service standard for a particular area of technology, clients should let the Office know, either by telephoning the examiner or using the feedback mechanism.

S. Vasudev noted that in the case of an application being abandoned because an office action has not been received, the Office has been flexible if an affidavit is provided indicating that the office action has never been received. The Office would take this into account and reissue the office action. It is in instances where there is a statutory requirement, such a maintenance fee not being paid, that the Office has no flexibility.

K. Ledwell expressed concerns over the risk of losing applications and the need for a way to determine if an application is abandoned or something has been missed. M. Paton explained that if a client pays the fee and makes a status request, they will still get an answer from CIPO. If a response to an office action has not been received and the application is abandoned, the status request will indicate that. However, asking when a first or subsequent office action can be expected does not indicate whether the application is in good standing or abandoned. A. Lajoie re-iterated that it is only questions regarding when an application will be examined which the Office will no longer answer. The Office is still looking into making more information available online on a file and its prosecution with IT modernization, which is the ultimate solution.

C. Ledgely asked if maintenance fees and a status request could all be included in one piece of correspondence. A. Lajoie responded that no, status requests should be separate from and not be combined with other payments or services, as these are handled by different branches.

4d) E-mail correspondence

This item had been submitted by J. Wilson. She had asked if the notice offering an email option should be removed from CIPO's website if CIPO is still unable to send email correspondence at the Applicant's request.

A. Patry responded that electronic correspondence with CIPO is still possible, but clients must clearly indicate with the application that they wish to correspond via email. M. Paton explained that she has been corresponding by email with CIPO from the start and that, in addition to checking the appropriate box in "General correspondence for filing an application", she adds an email address as well as explicit instructions in the "Correspondence instructions" field that she wishes to correspond by email. This tends to work most of the time.

J. Wilson asked if all CIPO correspondence except the letters patent will be sent by email if a request for email correspondence is accepted. K. Sechley asked if email correspondence can be requested with a paper-filed application. A. Patry responded yes to both questions.

A. Lajoie added that although it would appear that an exchange of information is strictly electronic, the system is not yet fully integrated. The Office does the best it can within its manual processes to communicate with clients in the format which they prefer.

4e) Online payment statement

J. Wilson had asked that online payment statements for credit cards include an agent reference and a description of fees. She also asked whether it was possible to connect all user names associated with one agent firm to a single agent profile, so that clients can receive a single online payment statement.

A. Lajoie had asked the Finance department to answer these questions. The Finance department indicated that the functionality exists to include an agent reference and description of fees in statements for credit cards. If an online payment is submitted, clients must enter their reference number themselves so that it will appear on the statement. There is also already a brief description of the fees. Depending on the payment request, some key codes include transactions relating to more than one description. Where there are multiple payments, the description will be included under "Miscellaneous".

In addition, it is possible to connect all user names associated with one agent firm to a single agent profile, provided that the Finance branch receives a written request to do so. The branch will then be able to merge profiles so that all transactions appear on one statement.

4f) Verification of authorized online submissions

J. Wilson had noted that, when filing general correspondence with CIPO online, an Industry Canada (IC) userid and password are used. In filling in the CIPO general correspondence form, the user can fill in any agent name and address in the requisite text field, and thus represent that they are that agent, or acting on behalf of that agent. It would seem that there is no check that the user as identified by their IC userid, is in fact authorized to submit correspondence in respect of a given application.

S. Vasudev responded that, at the moment, there is no check to ensure that a user is, in fact, the authorized correspondent. He thanked Ms. Wilson for identifying this issue. Moving forward, such a check would be an element of the Office's IT modernization with a view to providing a secure and effective e-commerce system.

4g) Missing pages at CIPO and 4h) Maintenance fees

G. Silver had submitted these items pertaining to the Office not receiving mail or missing pages from mail filed with CIPO and to abandonment notices for non-payment of maintenance fees which have, in fact, been paid and accepted by CIPO. The missing pages include missing responses to examiners' requisitions, missing final fees and missing pages from an application.

A. Patry responded that there will be a review this summer of the QC process in an effort to make improvements. S. Vasudev added that for issues where there has been a fee payment and a piece of associated correspondence is missing, if evidence can be obtained from the Finance department that the fee has been paid, this is certainly helpful. It is trickier when the issue is establishing a filing date. The Office continues to try to be as flexible as possible in instances of missing pages.

K. Sechley asked whether an affidavit would allow for reparation in instances where missing pages are identified at the time the letters patent is received. S. Vasudev responded that the Office can follow-up on this. With respect to issued patents, the Office has their hands tied. The Office is attempting to assess the causes and impact of missing pages to determine how to react to these issues. K. Ledwell noted that arguments that the missing pages were the result of a clerical error would not be an option. S. Vasudev agreed that there would need to be very special circumstances that would result in missing pages being regarded as a clerical error.

K. Sechley indicated that the risk is primarily for non-PCT applications, which are directly filed at CIPO. With a PCT application, it can be easily proven that all pages are present at the filing date. C. Ledgley added that she is wary of e-filing, as she has experienced instances where an application has been e-filed and CIPO has indicated that it has not received all of the filed documents.

K. Ledwell wondered if it would be helpful if clients identified the number of pages on their submissions, and then CIPO could verify that it has scanned and processed that same number of pages. J. Wilson suggested that, when e-filing, a computer-generated "hash" number could be calculated for the uploaded attachment. The hash numerical value would serve as a unique identifier for that document.

A. Lajoie thanked Mr. Ledwell and Ms. Wilson for sharing some potential best practices. She noted that the Office is taking this issue very seriously and looking at it from different angles. These angles include the human side and ways to improve QC, the LEAN side and the IT side. Ultimately, a modern, global IT solution is needed, which the Office is working on. If there are any new developments and updates on the Office's findings, these will be shared at the next JLC meeting or sooner by way of LISTSERV or a practice notice. As soon as clients have identified a particular case where pages are missing, they should direct the issue to Geneviève Côté in charge of operations, who works closely with Scott Vasudev.

G. Silver asked that a summary of what clients should do in the various scenarios where missing pages have occurred. Where an abandonment notice is issued by the Office for applications where a response has been timely filed but CIPO has not received it, she wondered if clients should continue to file affidavits. In cases where a maintenance fee is submitted and CIPO accepts it but does not record that it has been paid, she wondered if clients should telephone the Office to have it fixed. In cases where pages are missing from letters patent, she noted that affidavits are refused as evidence and wondered what could be done to rectify that situation.

A. Lajoie responded that each case and issue is unique and looked at based on the specifics and facts of the case. It is difficult to commit to a particular action being acceptable in a given situation. The Office is, however, working on this issue with its legal advisors.

K. Sechley noted that, in office actions, examiners will indicate that the description, for example, has a particular number of pages. He wondered if examiners are, in fact, reviewing the entire application and whether it would be useful to have a dialogue with examiners, where clients could ask the examiners to confirm that the application contains all of the pages.

I. Robert answered that, indeed, examiners read the entire application. Examiners will read the initial file and any pages containing new text submitted by the Applicant by way of amendment. However, examiners may not re-read pages which have been amended not with new text but merely for such reasons as to adjust the font or format or to provide better quality pages. In such cases, it is possible that a missing page will not be noted by examiners.

S. Vasudev noted that, in the case of pages missing from issued patents, to the extent that missing pages render an application defective or inoperative, the possibility of a reissue may be applicable.

J. Wilson wondered if it would be possible for the Office to mail out the entire application that is on file, as it stands at the time of allowance, with the notice of allowance. A. Lajoie responded that this may be a good interim solution until there is full online access to a file. The Office will look into this possibility and assess it in terms of its effect on certain processes and costs.

4i) File History Fees

G. Silver had submitted this item pertaining to fees incurred for obtaining file histories on CD. She noted that these fees can be high in such instances where a specification is exceedingly large due to, for example, the inclusion of sequence listings. She wondered if such costs are merited for merely putting information on a CD and also if some advance notice could be given if the costs greatly exceed the norm.

S. Vasudev responded that the provisions for obtaining copies of documents are set out in the Patent Rules Part V of Schedule II "Tariff of Fees". These are the fees that remain until there is a fee restructuring exercise, at which time the amount of work involved in putting together a CD would be considered. The current fee is broken down into a number of components, including the requirement for an additional $10.00 for each additional 10 megabytes or part of them exceeding 7 megabytes. Thus, a sequence listing or large specification will run up the cost considerably.

With respect to the possibility of giving advanced notice if fees will exceed the norm, when there is a request for paper copies of an unusually large file, the client service centre will contact the requester and suggest the more cost-effective option of obtaining a CD. The possibility of such advanced notice where even a CD will incur a large fee has been brought to the attention of the Client Service Centre. On the flip side, a quick review by clients of the size of a document may be warranted if the decision of whether or not to obtain a document depends upon the cost.

4j) Grouping unrelated objections together

G. Silver had submitted this item pertaining to examiners raising indefiniteness objections to a group of claims but then referencing specific, unrelated issues in distinct, non-overlapping subsets of these claims. She opined that separation of distinct indefiniteness issues should be part of best practices.

I. Robert responded that, in general, examiners will group objections together when they think that the objections are of a similar type. The difference may be in how one would define "similar". Most examiners will group together indefiniteness objections under subsection 27(4) of the Patent Act where the claims include terms that cause ambiguity. Thus, a single objection may be made to several claims containing such terms as "such as", "preferably", "more preferably" and "most preferably". Examiners may not deem it necessary to identify the claims in which each individual term appears. Separation of objections to each individual term may not be very efficient. In addition, Applicants are free to respond separately to the objections to each of the various terms.

4k) Consolidated translations of PCT international entries

I. Clark had submitted this item asking that CIPO clarify office requirements regarding filing of national entries of PCT cases with translated specifications. His firm files consolidated translations representing the contents of the PCT specifications as they finish the international phase. He had been recently informed by CIPO, however, that that the Office will soon require the translation of the specification as filed and then, separately, the translation of any Article 19 and/or Article 34 amendments.

S. Vasudev responded that CIPO's translation requirements for applications entering the national phase are given in Canada's National Chapter in the PCT Applicant's Guide. The Office requires the application as it is at national entry. For instance, for Chapter I applications, the required contents of the translation for entry into the national phase are the description, claims (if amended, as amended only, together within any statement under PCT Article 19), any text matter of drawings and the abstract. Thus, there is no anticipated change in CIPO's current practice and it seemed that there may have been a misunderstanding with Operations. Kathleen Murphy has clarified this practice with them.

4l) Effective date on the revocation form

S. Paul had asked what the effective date of a revocation is when a revocation form is submitted. S. Vasudev responded that when a notice revoking the appointment of an agent is submitted, the Office considers the effective date of the revocation to be the date it is received in the Office. Also, an agent appointment is effective the date it is received in the Office.

4m) PCT National Entry priority on US design application

S. Paul had submitted this item noting that claiming priority on a U.S. design application is not permissible. However, CIPO maintains the priority claim on the Notice of National Entry, and Applicants need to make a submission in order to request the withdrawal of the priority claim. She wondered if CIPO should be rejecting these priority claims.

S. Vasudev affirmed that an application cannot claim priority on a U.S. design application. However, any designations requested by the Applicant will be recorded at national entry. Under Article 28.4(3) of the Patent Act, if an Applicant wishes to remove a priority designation, they may request its withdrawal. The examiner could address this during examination if they become aware of the defect. However, the validity of a priority claim is only verified if a document is found that has a publication date between the priority date and the filing date of the application.

J. Wilson wondered if examiners look at a priority document as a matter of course to verify that the claims are actually supported in that priority document and that the Applicant is entitled to that claim date. K. Ledwell asked what the basis is for refusing a priority claim on a U.S. design application, as Article 28.1 of the Patent Act defining the claim date refers to a "regularly filed application", without specifying if it is a utility patent or a design patent.

S. Vasudev responded that he would need to refer back to the Paris Convention and follow-up on this at the next JLC meeting.

4n) Section 31 of the Patent Act (3) and (4)

S. Paul had submitted this item referring to items 4j) and 4k) of the minutes of the JLC meeting of February 28, 2013, dealing with section 31 of the Patent Act and correcting declarations of entitlement and removing non-applicant joint inventors. She noted that section 2 of the Patent Act defines the term "applicant" as including the inventor and the legal representatives of the applicant or inventor. Further, subsection 31(3) of the Patent Act recites that the remaining applicant or applicants is or are the sole inventor or inventors. Thus, if an application has one inventor and one owner/applicant, she opined that these should qualify as "joint applicants" and that this section should be useable in order to remove the owner, for example, in the case where the owner had no part in the invention. Ms. Paul also made reference to the practice notice titled "Correction of errors introduced in the naming of an applicant at the time of filing or national entry". She expressed concerns with respect to CIPO taking "no position regarding the legal consequences that effecting a correction under the following approach" and with respect to the Office considering it unnecessary to remove an inventor under subsections 31(3) and (4) of the Act, as a court of law may not deem it as such. She also asked for clarification as to whether requests under subsections 31(3) and (4) are permitted by someone who is not the authorized correspondent.

S. Vasudev responded that the Office interprets subsection 31(3) as only being available for removing a named applicant in limited circumstances. CIPO believes that if an application is filed by joint applicants, and one of the applicants is removed, the application may only be carried on by the remaining applicant if they can confirm that they are in fact the sole inventor or inventors. If the remaining applicant is not the sole inventor or inventors, subsection 31(3) will not apply and the Office will not remove the applicant. In respect of subsections 31(3) and (4), the Office takes the interpretation that the applicant means the entity that filed the application. Section 2 of the Patent Act defines "applicant" as including an inventor and the legal representatives of an applicant or inventor "except as otherwise provided". Thus, the Office does not assume an inventor to be an applicant unless expressly identified as one of the applicants who filed the application. Further, in view of this, the Office considers that there is no requirement for a formal request pursuant to subsection 31(3) or (4) to remove or add an inventor. As long as a request is provided by the authorized correspondent, the Office will proceed to make the change. Further, requests under subsections 31(3) and 31(4) can only by made by the authorized correspondent.

Ms. Paul had referred to a suggestion made at the previous JLC meeting that an inventor could be joined as an applicant (under subsection 31(4)) in order to create two or more "owners", and the incorrect owner could then be removed under subsection 31(3). She wondered if this is a more appropriate manner of proceeding.

S. Vasudev responded that while it would appear that such a procedure would be limited in its applicability, the Office would consider this to be an acceptable manner in which to proceed. He added that the practice notice to which Ms. Paul had referred set forth alternative means for correcting the owner/applicant where there has been a mistake in the naming of the owner/applicant.

M. Paton asked if a substitute petition would be required in cases of a national application where the authorized correspondent is adding or removing an inventor. S. Vasudev responded that this would be unnecessary.

S. Paul noted that whenever her firm has added or removed an inventor, it has always been done under a heading referring to subsections 31(3) and (4). The Office has not been rejecting this, however she wondered if the heading was simply disregarded.

S. Vasudev responded that the Office has been doing a lot of work of late related to ownership/inventorship transfers of rights issues in general and is striving for consistency.

4o) CIPO Roundtables Sessions feedback

M.-A. Bertrand, Director of the Information Branch, provided an update and feedback on the CIPO Roundtables sessions. She explained that the purpose of the roundtables was to understand the needs of and barriers facing innovative Canadian small and medium-sized enterprises (SMEs) when protecting their IP. The first wave of sessions was geared at identifying these needs and barriers, and it was found that the major barriers are complexity and cost of the IP system. The second wave of sessions focussed on the pre-filing phases. In the third wave, which took place in March, agents and SMEs were consulted on the filing process. The day prior to the JLC meeting, a consultation had taken place with technology transfer officers and universities, and it is hoped that such consultations will continue throughout the fall. These sessions will help the Office in planning and improving services and tools and have shown that improved outreach programs are required to increase awareness and education concerning IP. Reports on the first and second waves of sessions have been published on CIPO's website and a third report on the third session is currently being prepared.

4p) Maintenance fee paid online

S. Paul had asked how long it takes when a maintenance fee is paid online and by mail for the payment to appear on the website. A. Patry answered that if a maintenance fee is paid online, it will appear on the website the next day. The service standard for processing maintenance fees paid by mail is 15 days, and as soon as the fee is applied in TechSource it will appear on the website the following day.

L.-P. Gravelle asked if the same next-day posting applies where an application is abandoned for failure of paying the maintenance fee and then reinstated with a maintenance fee payment. A. Patry answered affirmatively.

4q) Unscannable

S. Paul had asked if a lack of scannability of pages relates to a lack of reproducibility. She wondered if certain drawings which are not scanned will still appear in the printed patent and, if not, if CIPO should issue a requisition for better quality drawings.

A. Patry responded that a lack of scannability can be the result of limitations of the current system. She added that, at the time of grant, a copy of the unscannable page is printed and is added to the patent grant.

4r) Reference of Interest

A. Zahl had submitted this item concerning office actions in which the examiner identifies a "reference of interest", which is not cited against the claims. He felt that this practice generates extra work for agents and their clients. Clients need to review these references and report them to foreign patent offices, which multiplies their work. He proposed that this practice be stopped.

A. Brett noted that clients have for a long time asked examiners to state what has been searched. He felt that the inclusion of a reference of interest has value in indicating that the examiner has considered the document and in having some implication that the claims are patentable over the reference.

K. Ledwell added that he felt that these references were useful for two reasons, one of which being that courts are reluctant to reconsider references which the examiner has reviewed and considered to be not relevant. Secondly, it can be a helpful caution that claims should not be amended to go in the direction of what is disclosed in the reference of interest.

E. Lafontaine concurred that examiners will often cite these references of interest either as a way of indicating that the reference has been considered or to show what is considered the common general knowledge.

4s) "Comprising" in claims

A. Zahl had submitted this item expressing concerns over having received several office actions in which the examiner has objected to the word "comprising" in the claims as being ambiguous since it is open-ended. He commented that such objections fly in the face of long-standing patent practice and jurisprudence in which an invention may be defined in an open-ended fashion.

I. Robert responded that examiners have not been instructed to object to the term "comprising". However, there are some instances where the term may not be acceptable. For example, a Markush group cannot be defined in an open-ended manner. In the case of a claim to a composition, if the description indicates that the composition must not contain anything except specific, particular components, then the examiner may object to the use of the term.

4t) Old Act Patents

S. Rancourt had asked for an update on the status of Old Act Patents still pending in the patent office.

M. Gillen responded that there are 30 Old Act patents still pending in the Office, 27 of which being in the biotechnology division, 2 in the chemical division and 1 in the electrical division. The twenty-seven in the biotechnology division can be broken down into 3 groups. There is a group of 10 applications of the 27 biotechnology applications that is in conflict, which is the last conflict that the Office will ever have, and these are currently tied up in judicial review in court. A group of 7 applications had been in conflict up until six months ago. There is now a Commissioner's Decision on those applications, and the conflict winner will need to remove some nomenclature around some of the claims and the conflict losers will need to take away claims which they lost. Another group of 10 applications consists of divisionals, some of which are divisionals of divisionals and one of which is a divisional of a divisional of a divisional. Half of these are at the Patent Appeal Board and the others have a report. The issues with respect to this third group include double-patenting, lack of support and claims of broad scope.

A Commissioner's Decision has been made recently on 1 of the 2 chemical Old Act chemical applications. An amendment will be required to permit grant of the application, otherwise the application will be refused. The second chemical Old Act application is at the Patent Appeal Board awaiting a hearing.

Finally, the electrical application, which recently came out of the secret room, has a report currently and will likely proceed to grant shortly.

5. Other Business

No other business was identified.

6. Date of the next meeting

The next JLC meeting will take place on Thursday, November 7, 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 3:40 PM.