Thursday, November 7, 2013
- M. Paton
- T. Bourne
- A. Brett
- I. Clark
- J. Kelland
- D. Lambert
- K. Ledwell
- S. Paul
- J. Pivnicki
- D. Schwartz
- G. Silver
- K. Sinden
- S. Vasudev
- D. Campbell
- G. Côté
- C. Gervais
- L. Giardina
- M. Gillen
- A. Houde
- S. Meunier
- K. Murphy
- A. Patry
- N. Tremblay
- S. Hurley
Via Conference Call
- D. Andrade
- M.-A. Arnoldo
- Y. Bismilla
- J. Dumais
- E. Engelhart
- I. Kalnish
- C. Ledgley
- A. Litte
- J. Marles
- N. Pellemans
- J. Wilson
- J. Dumais
- G. Fortier
- J. Fothergill
- J. Mathur
- M. Quinn
- M. Swain
1. Approval of the minutes of the meeting of June 20, 2013
The minutes of the JLC meeting of June 20, 2013 were approved with correction under Item 2 in the third paragraph of Business Arising of a typographical error in C. Ledgley's name.
2. Business arising
4m)* Update on Operational problems (*June 20th meeting Business Arising)
At the previous JLC meeting, G. Côté had proposed that a Focus Group be formed seeking input on issues relating to operational problems. Ms. Côté reported that meetings of this group will take place on November 25th and 27th, with an invitation to be sent out shortly.
4g) Missing pages at CIPO
At the previous JLC meeting, K. Sechley had 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 these instances are viewed on a case-by-case basis, taking into account the impact of any correction as well. While any evidence that can be provided to the Office would be helpful, he tended to think that an affidavit alone, when the Office has no record of a submission and in the instance of a patent, would be difficult for the Office to accept.
K. Ledwell noted that he had a case where an application was allowed and the patent was issued with a page missing. In view of this, he wondered about the entire process, whether the examiner or the patent formalities analyst actually goes through the application to verify that no pages are missing. He suggested that providing an indication of the number of submitted pages on the front of an Office Action response may be helpful. He wondered what mechanisms, in the meantime, that Applicants would have to correct an issued patent where pages are missing, whether filing an affidavit or a correction under Section 8 of the Patent Act would be acceptable. He opined that the Office has a narrow interpretation of Section 8, and that it is undesirable to pay the substantial fee for reissue every time a page is missing from a patent. C. Ledgley added that she would be interested in hearing at the next JLC meeting what types of procedures are in place at CIPO at the time of issuance, whether there is a step where the number of pages is checked.
S. Vasudev responded to Ms. Ledgley that such procedures could be outlined at the next JLC meeting. In response to Mr. Ledwell, he noted that there are presently limited mechanisms available to correct a granted patent, those being reissue and correction under Section 8. He added that the Office has a distinct interpretation of what constitutes a Section 8 correction. Moving forward, the Office is looking at correction of errors both from a legislative and a procedural point of view.
G. Silver indicated that this issue applies to all firms, since the Office destroys all paper that is submitted. G. Côté noted that it would be helpful if specific application numbers where these errors have occurred could be provided to the Office so that trends can be observed and root causes can be identified.
C. Ledgley wondered about the Office's procedures when a document is submitted electronically or by fax. M. Paton responded that documents submitted electronically are printed and scanned into the Office's back-end system. Therefore, the issue of missing pages does arise with electronic submissions as well due to a disconnect between the online interface and the back-end system. If there is a problem of missing pages that is identified before the issuance of a patent, she suggests that clients contact Robert Snippe, who will locate the original file for anything that is submitted electronically. G. Côté noted that faxes are also scanned into the system. A. Houde added that, since 1999, anything that has been submitted electronically to the Office has been kept.
K. Ledwell asked if the Office had a verification process for electronic submissions to confirm the integrity of a file. He noted that the USPTO has a "Private PAIR" system which allows you to see the images of pages as they are on the USPTO server.
A. Houde responded that, with the current process, an analyst must start a program to print the electronic file but he would need to follow-up with the JLC on what level of verification is in place. He added that, under item 4a of the JLC meeting, he would be discussing two IT modernization projects, namely e-filing and CDAS (CIPO Document Access System), the latter of which will be similar to the USPTO "Public PAIR" system. Having in place a system similar to the USPTO "Private PAIR" system is a longer term goal.
4m) PCT National Entry priority on US Design Application
At the previous JLC meeting, K. Ledwell had asked what the basis is for refusing a priority claim based 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. In response to this question, K. Murphy had consulted the Paris Convention for the Protection of Industrial Property. Article 4(A)(2) stipulates that the priority document must be a filing that is equivalent to a regular national filing under domestic legislation of the country. A comparison of the definition of a U.S. design application and that of a Canadian Industrial Design application shows that these two would be more similar. Thus, a U.S. design application does not correspond to a Canadian patent application and does not serve as a valid priority document for a Canadian patent application.
3. Ongoing items
3a) Corporate Feedback Mechanism report
Electronic copies of reports titled "Online Feedback Mechanism: Year to Date Summary, April 1st, 2013-June 30th, 2013" and "Client Contact Database Summary" were provided to members of the JLC.
3b) Service standards
Electronic copies of Patent Branch's "Patent Branch Client Service Standards (2013-2014)", "Production Volume Statistics 2013-14" and "Inventory of RE Awaiting First Action (as of September 30, 2013)" were provided to members of the JLC.
A. Brett wondered if the Electrical Division planned to improve their client service standard of 36 months for providing a first substantive office action to an application with a request for examination. N. Tremblay responded that this standard may be changed to 27 months. M. Paton noticed that the expected times for subsequent Office Actions have dropped significantly. She wondered if this was planned and why these times have improved so much more than the times to a first Office Action. L. Giardina answered that usually second and third actions are much quicker for examiners. In addition, Examiners' goals are structured with a view to balance, such that for every first action they complete they may complete a subsequent action.
3c) Regulations Update
S. Vasudev provided a Regulations update. It is hoped that proposed amendments to the Patent Rules in respect of "Final Action procedures and Re-examination proceedings" as well as proposed amendments to the Patent Rules and Trade-mark Regulations regarding agents' exams will be published in Canada Gazette Part II before the end of the year. Additionally, it is hoped that proposed amendments to the Patent Rules regarding "Simplification of administrative requirements" will be pre-published in the Gazette in early 2014.
At this juncture, S. Vasudev noted that there are currently 21 Section 8 requests awaiting review, of which 15 have been waiting less than 3 months and of which 6 more complex cases have been waiting over 3 months. Therefore, generally, the inventory of Section 8 requests is now well under control.
3d) MOPOP Update
S. Vasudev provided a MOPOP update. The Office is in the process of finalizing revised Chapter 21 on Final Actions and Post-Rejection Practice. It is expected that its release will coincide with the release of the Regulatory package on the same topic. MOPOP Chapter 14 on Unity of Invention has been approved by the Commissioner and will be released imminently. It is hoped that a public consultation on Chapter 15 on Novelty, Obviousness and Double-Patenting and on Chapter 7 on Requirements for Priority will take place in early 2014. Chapter 17 on Biotechnology remains in the pre-internal consultation drafting stage and it is expected that consultations on Chapter 17 will occur in 2014. There has been a renewed emphasis on the revision of MOPOP and Mr. Vasudev has been given the go-ahead to have additional staff to expedite this process.
3e) PPH Update
K. Murphy provided a PPH update. An electronic copy of a report titled "PPH Update for JLC Meeting November 7, 2013" was provided to members of the JLC. K. Murphy noted that the PPH still seems to be well-received and no significant changes in any trends have been observed. She added that statistics for all PPH agreements can be found at the PPH Portal maintained by the JPO at the JPO website.
CIPO's PPH agreements with Japan, Korea and Denmark have been extended, with the agreements with Korea and Denmark being extended indeterminately and the agreement with Japan being extended for an additional three years. The PPH agreement with the State Intellectual Property Office of the People's Republic of China started on September 1, 2013. A PPH agreement with the National Institute for Industrial Property of Portugal began on October 6, 2013.
Since September 1, 2013, all of CIPO's PPH agreements based on national phase work products will not be limited by where the Office of Earlier Examination (OEE) application was first filed. Now the OEE and Office of Later Examination (OLE) applications must share the same earliest date. This is a change for CIPO's agreements with Denmark, Germany, Israel and Korea. The other agreements already have this change.
On January 6, 2014, thirteen intellectual property offices intend to pilot a Global Patent Prosecution Highway (GPPH) arrangement. The 13 offices involved in the GPPH are: IP Australia, CIPO, the Danish Patent and Trademark Office (DKPTO), the National Board of Patents and Registration of Finland (NBPR), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Nordic Patent Institute (NPI), the Norwegian Industrial Property Office (NIPO), the Portuguese Institute of Industrial Property (INPI), the Russian Federal Service for Intellectual Property (ROSPATENT), the Spanish Patent and Trademark Office (SPTO), the United Kingdom Intellectual Property Office (IPO) and the United States Patent and Trademark Office (USPTO). The pilot will use a single set of qualifying requirements and it aims to simplify and improve the existing PPH network so that it is more accessible to users. It will encompass both PPH and PCT-PPH, and the GPPH requirements will not change CIPO's existing PPH requirements and procedures. What will happen is that the GPPH will expand CIPO's PPH agreements to include PCT-PPH agreements with all offices participating in the multilateral PPH framework, and CIPO will now have PPH agreements with some offices with which it does not currently have bilateral PPH agreements, namely IP Australia, NIPO, NPI and ROSPATENT. For offices with which CIPO has existing bilateral PPH agreements, the GPPH will take precedence.
K. Murphy reminded members of the JLC that PPH applications are fully examined like any other Canadian patent applications: prior art citations, final actions and unity objections may be raised. The PPH is a procedural process that advances applications out of routine examination order. The criteria for patentability are not changed from any other Canadian patent application.
J. Pivnicki asked if there was a limited time for the GPPH. K. Murphy responded that it is hoped that the GPPH will go well and other offices will join in so that only the GPPH is left. There is a scheduled annual review of the process, and it could theoretically be terminated if it is not going well. There is, however, no targeted end-date. Offices will still have the ability to limit their participation with a month's notice if the workload becomes unmanageable for any reason.
I. Clark asked if Ms. Murphy had any comment regarding the 97% grant rate for PCT-PPH applications. K. Murphy responded that most PCT-PPH applications stem from Canadian PCT filings, and the Canadian PCT application and the Canadian national phase application should be examined by the same examiner. Slight differences may occur where Canadian national law differs from the PCT. The grant rate of PCT-PPH applications may decrease when CIPO starts getting into more PCT-PPH agreements.
C. Ledgley noted that she had a PPH case where the examiner asked the Applicant to add 3 more drawings to depict the invention, "if able". The application was filed in another jurisdiction without those drawings. She wondered if it would be sufficient to state that the Applicant is not able to supply these drawings.
K. Murphy responded that even if a PPH application was granted in the other jurisdiction, if there is a defect in the drawings, for example, the examiner is free to raise an objection to those drawings.
I. Clark asked if the 3681 PPH requests under the CIPO-USPTO agreement is the number for one year. K. Murphy responded that all of the numbers of PPH requests in the statistics provided are cumulative from the start date of the PPH agreement. That start date is 2008 for the CIPO-USPTO agreement. Mr. Clark wondered what percentage of CIPO annual filings is PPH. K. Murphy answered that she could prepare that number for the next meeting with respect to the CIPO-USPTO agreement. The Office keeps track of what percentage of their inventory is PPH, and that number is approximately 5% at this time. A JLC member attending via conference call asked if there was a breakdown as to whether the objections in a first Office Action on a PPH application are substantive, prior art-related objections or formalities. K. Murphy responded that the Office does have that data, as examiners are asked to fill out an evaluation form providing that kind of information, and the data can be provided at the next JLC meeting.
3f) OPS Practice tips
G. Côté provided the JLC with two Operations practice tips inspired by items on the agenda for this meeting. The first tip was to use the online feedback mechanism or to call the Office as soon as an issue arises so that it can be addressed in a timely fashion and so that the Office can prevent recurrence of a problem. The second tip was to clearly identify all correspondence that is sent to the Office. The Office receives about 15,000 pieces of correspondence per month, and there are 76 possible actions to direct correspondence. One particular area of difficulty for the Office is cases where subsequent correspondence related to a PPH application are not clearly identified as PPH.
4. New Business
4a) IT modernization
A. Houde provided an overview of two of CIPO's IT modernization projects. The first relates to e-filing. The Office hopes that in a year to a year and a half, the new e-filing system will be ready and in production. A system similar to the USPTO "Private PAIR", where clients can see exactly what they are submitting, is a long-term goal. The short-term goal is to improve the e-filing interface and to ensure that e-filed applications are going directly into the system, eliminating the need to print and scan e-filed applications. With applications entering the PCT national phase, it is hoped that, upon entry of a PCT application number, the new e-filing system will be able to obtain the application directly from WIPO for integration into the system. The second initiative is called CDAS, for CIPO Document Access System. This system will be similar to the USPTO "Public PAIR" system. It will place everything that is in TechSource on the web, so that an application can be fully reviewed before it is granted.
M. Paton wondered if clients will be able to comment on the development of these projects at an early stage. Mr. Houde responded that, at stage 3, when the detailed requirements of the systems are to be developed, clients will have the opportunity to share any comments.
4b) Duplicate Notices from CIPO
G. Silver had submitted this item pertaining to having received duplicate correspondence from CIPO, including duplicate Notices of National Entry and Filing Certificates, duplicate Examination Request Acknowledgements and duplicate Assignment Recordals. G. Côté explained that it is not the Office's practice to issue the same correspondence more than once and that this was training issue, which has led to increased verification of work before it is sent out.
This item pertained to two issues submitted by S. Rancourt and K. Ledwell. Ms. Rancourt had noticed an increase in the instances of missing mail, where the Office claims to never have received particular correspondence. Mr. Ledwell had indicated that his firm is still having a problem with misdirected mail. He suggested that the likelihood of lost mail way be minimized if the Office was able to put prosecution histories on the online database, to post whether something is outstanding online or to send redundant copies of correspondence by fax or email.
G. Côté indicated that the problem of missing correspondence may be best addressed in the Focus Group that will be meeting at the end of November. Between now and then, it would be helpful to the Office if clients would track the extent of the problem. With respect to the issue of misdirected mail, in the past, the Office had a manual process involving bulk mailing. This bulk mailing seemed to cause mail to be misdirected and, in an effort to address this, the Office started mailing out each piece of correspondence individually. Initially, due to the thinness of the paper used, the machine would sometimes incorrectly fold different correspondence together, thus causing mail to be misdirected. It seems that that issue has been resolved, but there are still problems from time to time with the machine folding correspondence. In view of this, a few weeks ago, a log was put in place between Patent Operations and the mail room to identify problems. Hopefully, this will enable an observation of trends and identification of a root cause.
K. Ledwell emphasized the importance of a rigorous system at CIPO for handling mail. M. Paton indicated that electronic mail can also be misdirected. A number of firms provide CIPO with an address that begins with "CIPO@", and this can lead to misdirection of electronic mail. In other cases, electronic mail has been sent to the correct firm, however an attachment to the e-mail clearly belongs to a different file.
G. Côté responded that this was the first time she had learned of misdirected electronic mail. She asked that specific cases be brought to the Office's attention so that appropriate corrective measures may be taken.
4d) Copies of non-patent references
I. Clark had asked if CIPO could revert to the old system of Examiners providing copies of obscure cited references when requested by an agent on behalf of the Applicant, this having regard to a recent US court case regarding fair use. In a similar vein, K. Ledwell had asked that CIPO negotiate a new agreement with the provider of cited non-patent documents to include the provision of one copy of such documents to the Applicant.
L. Giardina explained that there is no such agreement to which Mr. Ledwell had referred. Rather, the Office has stopped providing Applicants with copies of non-patent references as such provision was contrary to the Canadian Copyright Act. In addition, the librarian at the Client Service Centre advised Examiners to stop making copies of such references as the Office is paying to subsidize the authors and publishers of these documents, from between $30 to $100 per document. However, the Client Service Centre is happy to inform Applicants of the precise source of these references so that they may purchase them themselves.
K. Ledwell commented that if Examiners could include in Office Actions the specifics of where a reference has been obtained, that would be helpful. He noted that, particularly with website references which can change over time, Applicants can have difficulty in finding copies of documents that match precisely what the Examiners have cited.
D. Schwartz proposed that, in cases where a unique reference has been cited in an Office Action, the Office should consider ordering two copies of the reference: one for the Examiner and one for the Applicant. L. Giardina responded that, being in the mode that the government is at the present time, he did not think that doubling the budget for obtaining non-patent literature would be justifiable.
G. Silver asked if the Office also does not want clients submitting non-patent literature unless it is publicly available online because it is a copyright problem. L. Giardina responded that the Office continues to accept such submissions.
4e) Articles requested by CIPO from inventor
J. Pivnicki submitted this item referring to a case where a CIPO system and research officer had requested an article from an inventor by e-mail. He wondered if CIPO considers this to be a Rule 29 requisition. He noted that the document requested may not be public in view of restricted access and, as such, the client does not want to supply the Office with this document. Further, he wondered if requesting references from the Applicant is a standard CIPO policy.
L. Giardina answered that, in cases where the Examiner is looking for an obscure publication which the Client Service Centre cannot locate, the Office may contact one of the authors of the publication to obtain a copy. In the example provided by Mr. Pivnicki, the author that was contacted just happened to be the Applicant. It is not the Office's practice to request references from the Applicant and, the person who made the request in this example was not aware that the author was the Applicant.
4f) Examination of Diagnostic Methods placed on hold
A. Zahl had submitted this item pertaining to applications that are directed to diagnostic methods having been placed on "hold" pending a new practice notice. He noted that there appears to be nothing in the Act or Rules that would allow the Office to refrain from examining an application.
S. Vasudev responded that, at the JLC meeting of February 28, 2013, it was indicated that following the FCA decision regarding the Amazon.com, Inc. patent for a one-click online shopping feature, CIPO would be preparing practice guidelines for analysing applications and clarifying examination practice with respect to computer-related inventions. These guidelines were published in March, 2013 and were followed by guidelines related to medical uses published in June, 2013 and were then to be followed by guidelines related to diagnostic methods. The Office is still currently working on producing a practice notice relating to diagnostic methods. In response to the question as to what legislative authority the Office has to delay examination, Mr. Vasudev explained that examiners need proper guidance for examining these cases. It is important to the Office that the guidance that is developed is correct, clearly states the Office's position and provides a practical and efficient methodology for examiners to follow. The term "diagnostic methods" encompasses many subset issues. As each of these issues is dealt with, examiners are being informed of the relevant guidance and are told to proceed with examining these cases. There is a small subset of cases which is more complicated for which the Office is trying to finalize guidelines and it is hoped that the guidance from the Commissioner will be issued soon.
4g) Nonsensical utility objections
G. Silver had submitted this item pertaining to utility objections appearing in Examiners' reports without a rationale being provided as a basis for such objections. S. Meunier noted that this seemed to be a one-off issue as only one example case had been provided to the Office. Thus, the issue was dealt with in the examination of the particular case.
4h) Final Action
K. Ledwell had submitted this item, indicating that the software and electronics examination group has been including threats of a Final Action in many recent Office Actions. He felt that these threats were not appropriately timed, as no impasse had been reached.
N. Tremblay explained that, as Michael Gillen had mentioned at the JLC meeting of June, 2009, a second action on the same grounds as the first may be made final. Additionally, as mentioned by Agnès Lajoie two JLC meetings ago, the Commissioner wants to reduce the pendency of applications.
C. Ledgley asked whether a threat of final action may be present in an action where new prior art is cited. N. Tremblay responded that new art may be cited at the pre-final stage. However, in a Final Action, there should not be any newly cited references. K. Ledwell wondered if this is an internal policy and opined that this policy would impact the rights of patent applicants simply for the sake of achieving an internal goal. D. Campbell answered that the Office is very cognizant of Applicants' rights and wishes to protect and insulate those rights. However, the Office also has a duty to the public, and longer pendency times mean prolonged uncertainty. Given the amount of time and the other avenues Applicants have to delay prosecution, the Office is not presenting an onerous practice in trying to get a final decision in fewer than 7 or 8 actions.
K. Ledwell explained that the cases to which he had referred were, in fact, all Special Order cases, filed in the electrical arts a year and a half ago, and the Applicants were simply seeking a fair prosecution. In certain cases, he had observed that threats of Final Action had been issued at the first instance that certain subject matter had been raised and the first time the Sanofi test for obviousness had been applied. In these cases, he felt that no impasse had been reached as Applicants were willing to continue to amend the applications and to get an allowance on them.
D. Campbell observed that it is unfortunate that the perception of pre-final actions is that they are "threatening" a Final Action, when really they are a heads-up or warning that the Examiner believes that an impasse is imminent. In response, Applicants may point to how an impasse is not being approached and may indicate a willingness to make amendments to avoid such an impasse.
C. Ledgley noted that, colloquially, as long as she has practiced, pre-final actions have been referred to as "threats" of Final Action. She added that it is helpful to learn that in responses, Applicants may indicate that they are willing to make amendments so as to avoid an impasse and when they want to continue to pursue prosecution.
K. Ledwell expressed concerns that the practice is being borrowed from other jurisdictions such as the U.S., where it is common to have second actions be final rejections. In the U.S., Applicants can file requests for continued examination. However, in Canada, Final Actions mean that cases must proceed to the Patent Appeal Board and then to Federal Court.
S. Vasudev noted that the receipt of this item coincided with receipt of potential legislative changes from IPIC. One of those submissions pertained to a desire for a more direct route to get to an appeal.
A. Brett commented that he has seen these threats of Final Action where there have been three Office Actions related to statutory subject matter, each using a different approach. The first action utilized a form and substance analysis, the second used a contribution/inventive concept analysis and the third used a problem-solution approach to purposive construction. He did not feel that when CIPO has changed its approach three times, this should be construed as an impasse.
4i) Divisional "heads-up" from CIPO
S. Rancourt had submitted this item concerning the Office's practice of sending clients courtesy letters to give them a "heads-up" that the claims in a divisional application would not be considered patentably distinct from those that issued in the parent application. Ms. Rancourt asked for clarification with regard to these letters, and particularly with respect to Examiners' suggestion in such letters that unless the application can be amended so as to become entitled to divisional status, all references to it being a divisional application should be removed from the petition and description.
S. Vasudev responded that it has been CIPO's practice to send letters to Applicants to inform them that the Examiner has determined that their application is not entitled to divisional status and to give Applicants a chance to amend the application before examination begins. These letters are not Examiners' requisitions and do not require a response. However, this practice of issuing these letters is to end when revised chapter 14 of MOPOP comes into force. Instead, an Examiner may advise the Applicant in an Examiner's report of any issues that cast doubt onto the divisional status of the application. The Office has taken the position that a purported divisional application that is not directed to a different invention than the parent or contains subject matter which is not reasonably inferred from the parent, cannot be entitled to divisional status. The result would be that examination of the application will proceed on the presumption that the filing date of the application is actually the date that the document was received by the Office unless the Applicant convinces the Examiner by amendment or argument that the application is entitled to divisional status.
4j) "Purposive Construction"
K. Ledwell had submitted this item contending that the software and electronics examination group has been incorrectly applying a "purposive construction" of the claims, in that explicit claim wording is being disregarded in a rejection of software-related claims under Section 2 of the Patent Act. He noted that the purpose of the claims must be the Applicant's purpose and that the Examiner cannot ignore explicit limitations in a claim. If, for example, an Applicant uses the word "computer" six times in a given claim, then it is clear that the Applicant intends to be limited to a computer.
N. Tremblay responded that after having identified the problem and the solution, the Examiner is to determine which elements of the claim solve the identified problem. Sometimes, the computer may not be considered part of these elements. If Applicants disagree with the Examiner's purposive construction, they may respond to the Examiner, with regard to the Patent Notice on purposive construction, indicating the manner in which the Examiner is incorrect in their construction. If an impasse is reached, a Final Action may be written.
K. Ledwell asserted that a purposive construction should be separate from a determination of statutory subject matter allowability. He observed that claims are being rejected as being directed to a mental process where every limitation in the claim has a piece of hardware in it. He also noted that some objections are improperly muddling issues, such as statutory subject matter and enablement. He felt that once the claims have been purposively construed, then it should be decided whether or not the subject matter is allowable as per the Schlumerberger decision or as per the problem-solution method. In view of purposive construction and Schlumberger being settled law and of clarification from various Patent Appeal Board decisions, he opined that it should be possible to move forward without needing to go to Final Action and court decisions to clarify the upshot of the Amazon.com, Inc. decision.
N. Tremblay indicated that this item can be brought to training, however the Electrical Division has received the most training in this regard. She felt that most examiners in the division were applying purposive construction in the same manner.
A. Brett commented that purposive construction is supposed to be the same for all purposes including in determinations of infringement. He provided an example where the Office determines that, with respect to a claim that includes many specific pieces of hardware, upon a purposive construction, none of those pieces of hardware is essential, stating that the claim is an abstract algorithm. He felt that this would imply that a person having such a claim would be able to sue someone who has not built anything. He added that purposive construction should be what the inventor wanted the scope of the claim to cover.
4k) Use of Sanofi test for obviousness on incorrect subject matter
K. Ledwell had submitted this item, contending that the software and electronics examination group has been using the Sanofi test to parse out the "incremental invention", an approach that was rejected in the Amazon decision. He felt that the Sanofi test is only relevant when testing obviousness in a selection patent for pharmaceutical technology, where there is essentially a paper anticipation, and the exercise is to determine whether the incremental discoveries made by the Applicant are sufficient to merit a patent.
N. Tremblay responded that, as presented in the Practice Notice on obviousness published in November, 2009, the Office position is that the Sanofi test for rejecting claims under obviousness applies regardless of the area of technology. In addition, Commissioner's Decisions since the Practice Notice have applied the Sanofi test for obviousness even in cases stemming from the electrical division.
D. Campbell added that the Office takes great care in drafting Practice Notices and training materials to ensure that Examiners are applying examination practice in a consistent manner. He felt that this item pertains to whether or not the practice per se is correct, and not to whether Examiners have been properly trained in the practice. He suggested that JLC meetings are not the proper forum for a debate on whether or not a practice is correct.
K. Ledwell expressed a desire to have the guidelines better clarified, specifically with respect to the circumstances under which the Sanofi test can be applied by Examiners. He did not feel that this item was a "one-off" issue but rather a systematic one.
S. Paul wondered what the proper forum would be for a discussion or submission of matters involving a disagreement with the way CIPO is applying the case law.
S. Vasudev suggested that IPIC, as an entity, may raise such issues with its executive council which has regular discussions with the Commissioner and C.E.O. If a particular firm wishes to raise such issues, the approach may be to make comments in responses to Examiners' reports and to proceed to the courts.
4l) Rule 87 defects
G. Silver had noted that, lately, Examiners have been requesting that an independent claim be made dependent because it contains all the features of a previous claim. She felt that there is no legal basis under Rule 87 for such objections. D. Lambert had observed an increased frequency of objections to applications for having more than one independent claim.
D. Campbell responded that the issue of Rule 87(1) and (2) usage in Examiners' reports had been raised at the JLC meeting of November, 2012. At that time, Scott Vasudev had re-circulated a copy of an internal Practice Notice to Examiners providing directions on how to apply Rule 87(1) and (2). It can be provided to any JLC members who have not received a copy. Mr. Campbell noted that Rule 87 is a re-wording of PCT Rule 6.4, and contains the term "shall" in stating that any claim that includes all of the features of one or more other claims are to be made dependent. The Rule is a mechanism to limit the number of independent claims in an application and to help ensure an efficient and concise presentation of claimed subject matter. Rule 87 may be applied from time to time to object to the presence of a large number of independent claims as rendering the claim set unclear and lacking in conciseness. The Practice Notice also touches on the issue of a claim set having a large number of independent claims as rendering difficult a determination of the nature of the invention. If necessary, and for the sake of efficiency, the Office may look at mechanisms that other offices are using to limit the number of independent claims.
K. Ledwell observed that he saw no reason why Applicants should be limited in Canada to any particular number of independent claims and, in the past, there has not been such limitation. He felt that such a limitation and changes to the Rules to that effect would impact Applicants' rights. He also did not know how the present Rules can be construed as meaning that Applicants are limited to a certain number of independent claims.
M. Paton opined that it is unfair to compare the limitations on claims in Europe and the U.S., whether it is through fees or Rules, with what happens here in Canada. In the U.S., for example, Applicants can file a continuation application and pursue additional subject matter. She felt that Canada has the most restrictive double-patenting regime that exists and if Applicants do not put their claims in initially, and there is not a lack of unity, they will never be able to get those claims. She therefore tells her clients that they are permitted to have more than one independent claim in the same category so long as they are concise and the other requirements in the Rules are met. She noted that there is no explicit Rule that states that having more than one independent claim in the same category is not permitted.
D. Campbell agreed that there is nothing in the Act or Rules that limits the number of independent claims. He noted, however, that Rule 87(1) says that if one claim has all of the elements of another claim, it has to be made dependent.
D. Andrade commented that he did not have an issue with rewriting an independent claim to be dependent upon another claim where it is simply a matter of stripping out one element. However, where it is not a matter of merely stripping out simple elements, he opined that Examiners are making prosecution difficult by making objections under Rule 87. He noted that if the Office wants to place a limit on the number of independent claims in an application or to charge extra fees based on that number, this should be made clear and put into the Rules. He felt that Examiners should stop relying upon and applying Rule 87 as a means to limit the number of independent claims.
A. Brett noted that his personal practice has been to simply advise his clients to argue that the objections are not valid, and the Examiner usually then drops the objections.
4m) Objections for German/Swiss style (EPC 2000)
G. Silver had submitted this item noting that Examiners seem to be objecting to the use of several types of "use" claims, such as German-style, Swiss-style and composition for use (EPC 2000) claims, in a single application. She wondered why some Examiners are raising this type of objection now, despite the precedent for such claims.
S. Meunier responded that the reason some Examiners have been raising these objections stems from the fact that the actual difference in scope of each of these use claims is not clear. In addition, in 2010, there was an EPO enlarged board of appeal decision where it was decided that Swiss-type claims were no longer an acceptable format for claiming a new therapeutic use of a medicament. That is coupled with comments from Justice Hughes in Merck v. Pharmascience and this year in Novartis v. Cobalt where he discussed claim construction and more particularly Swiss-type claiming. However, since all of these types of claims have been allowed separately in court cases in the past, they are allowable. The state of the law in Canada has not really changed and Examiners are being trained to stop raising this as a defect. Clients are encouraged to use the feedback mechanism to report cases where such defects are still being raised.
4n) Sequence Listing
D. Lambert and G. Silver had submitted this item pertaining to sequence listings. Ms. Lambert had asked if sequence listing pages could be added to the end of the Letters Patent, instead of between the description pages and the claims pages. G. Silver had indicated that CIPO clerks have mistakenly removed both the paper and electronic sequence listings in issued patents.
In response to Ms. Lambert's question, G. Côté noted that Paragraph 80(1)(g) of the Patent Rules states that it is the description which is to contain a sequence listing. Therefore, according to the Rules, it would appear to be correct to insert the sequence listing at the end of the description. M. Gillen added that there is now a Rule that requires that a sequence listing be in electronic form and not on paper, such that during prosecution, Applicants are asked to remove the paper copy of the sequence listing. At the time of grant, the Office prints out a copy of the electronic sequence listing and includes it at the end of the description, since the Rules state that it is part of the description. However, planned changes to the Rules which should be appearing in Canada Gazette at the beginning of 2014 will mean that Applicants will no longer be charged for pages of the sequence listing. Patents may then be issued in which the electronic sequence listing is electronic as part of the grant.
G. Côté noted that Ms. Silver's item was being discussed and dealt with offline.
D. Lambert and K. Ledwell had submitted items relating to assignments.
D. Lambert had asked if CIPO had changed its practice of notifying agents of record by courtesy letter if an assignment has been registered by another firm against a pending application. G. Côté responded that this practice has not changed. However, the Office is considering all of the courtesy letters that it issues, particularly ones that represent a significant workload, and will seek input at the Focus Groups at the end of the month as to what courtesy letters, if any, the Office should continue to issue.
K. Ledwell had indicated that he had a case where multiple fees were charged on a single assignment because of the presence of more than one change being made to the chain of title. He believed that the Act and Rules provide that the fees must be charged on a "per-document" basis, regardless of the number of changes in the chain of title. G. Côté agreed that the fee is to be charged for the document and not so much by the number of actions within the document. A reminder to this effect has been sent to the staff.
4p) Scanning Divisional claims entered on Parent Application
This item had been submitted by A. Zahl. He had prosecuted cases where the Office had inadvertently entered the divisional claims on the parent application and allowed the latter to incorrectly issue with the divisional claims. The Office had indicated that it would not correct this error via Section 8 of the Act and that the only recourse to the Applicant was to request reissue of the patent. He felt that it was improper for the Office to place an inventor in a position of possibly weakening his patent and of paying a considerable fee as a result of an error by the Office.
G. Côté responded that staff has been instructed to be more diligent in these instances. S. Vasudev added that the Office is having discussions regarding future changes to the Rules and Fee Schedules, and one of these changes may be that in cases where it has been determined that a reissue request is due to an Office error, the reissue fee will be refunded.
4q) Scanning of A4 pages by CIPO
G. Silver had submitted this item noting that the text from the bottom of A4 pages is being cut off. The result has been that CIPO has been sending rejections since page numbers cannot be found and has been requiring that all pages be re-submitted. She noted that, in accordance with Rule 68(1), documents filed in paper format may be filed on 8.5 x 11 or on A4 paper.
G. Côté answered that the Office is capable of scanning A4 pages. However, at grant, the Office does convert pages to 8.5 x 11 format. The Office may issue guidelines with instructions explaining this process so as to avoid this problem.
M. Paton wondered in what format documents are printed and scanned when documents are filed electronically as A4 pages. G. Côté responded that such documents are scanned and printed as A4 pages. All documents are converted to 8.5 x 11 at grant. However, limitations with the OCR process may cause these issues of information being lost.
4r) Scanning of Patent Drawings
A. Zahl had submitted this item. He had cases where drawings were not present in an issued patent due to scanning limitations but stated to be "available from CIPO" and thus officially part of the patent specification. He noted that Applicants should be given an opportunity to file better copies of the drawings before issuance of the patent. In addition, he felt CIPO should simply be able to transfer published PCT drawings into a Canadian patent.
G. Côté responded that even if the issue is identified at an earlier stage, if it is a colour drawing or a photograph, it will always be unscannable due to limitations of the system. At the time of grant of the application, the page referring to unscannable drawings should be replaced with the original drawings.
C. Ledgley asked if electronic submissions of pages would avoid the issue of photographs being unscannable. G. Côté responded no, that these would still be unscannable. Similarly pages of the drawings that may be acceptable at WIPO may still be unscannable in Canada due to system limitations.
M. Paton noted that if clients feel that they have drawings or photographs of better quality that likely will not get through the scanning process, they should submit them as a voluntary amendment or together with a response to an Office Action, via regular mail or hand delivery, and mark them as being non-scannable. These drawings or photographs would be in the issued patent.
4s) Fee Applications
G. Silver had submitted this item pertaining to a case where a fee had been paid, and the CIPO Finance department had accepted the fee payment, yet the associated letter had been misplaced and so the fee could not be applied to the applicable file. The Office subsequently asked that a proof of submission and another copy of the letter be submitted to the Office.
G. Côté noted that if clients can provide evidence that a fee has been paid, the Office tries to be as flexible as possible. Depending on the circumstances, an affidavit may be requested. If Finance has taken a fee, then associated correspondence must have been received by the Office but misplaced.
4t) Delayed processing of Final Fee payment
This item had been submitted by K. Ledwell. He had observed that when a final fee is paid and a maintenance fee is due within the next 3 months, the Office apparently holds the case until the maintenance fee is paid, which delays the issuance of a patent for several weeks. He noted that there does not seem to be any basis in the Patent Act and Rules for doing this.
G. Côté responded that the Office does not put on hold a case where the final fee has been paid and the maintenance fee is coming due. If an allowed application is abandoned, the final fee can still be applied to that case but it will not proceed to pre-grant until it has been reinstated.
M. Paton affirmed that if a maintenance fee is due shortly after payment of the final fee, the application will not proceed to grant until that maintenance fee is paid. She indicated that the reason for this is that CIPO had inadvertently issued a patent that was, in fact, abandoned, for failure to pay a maintenance fee, although the final fee had been paid.
G. Côté indicated that it was her understanding that the Office does not delay issuance of a patent on these grounds and suggested that this issue be addressed at the Focus Group at the end of the month. C. Ledgley asked for a follow-up on this issue at the next JLC meeting.
4u) CPD mistake
Y. Bismilla had noted that a withdrawn Canadian patent application that is retrievable from Espacenet and that is cited at the USPTO has been removed from the Canadian Patent Database. He wondered if other applications have been "unpublished" or otherwise removed from the CPD.
G. Côté responded that this is not a common occurrence and is a mistake on the part of the Office. The data will be put back in place on the CPD.
4v) Rejected Canadian Patent Application under Appeal ("Dead")
Y. Bismilla had submitted this item pertaining to rejected Canadian patent applications that are under appeal in the Federal Court are marked as "Dead" on the CPD. He observed that CIPO keeps maintenance fees for such cases on file but will only apply them if the court provides instructions to issue the patent. He felt that there was no basis in the Act or Rules for CIPO holding fees in such circumstances. He also felt that such applications should be marked as still pending or in appeal to the Federal Court.
S. Vasudev responded that the Office is looking at ways to properly convey to the public on the CPD and in LOB the administrative status of such applications that are under appeal. There is also a problem in that the system will not accept the payment of maintenance fees on an application that is labelled "Dead". Given that this does not happen frequently, the Office may adopt a manual practice for dealing with these maintenance fees.
4w) CIPO requisitions address of deceased inventor
J. Pivnicki had indicated that CIPO had requisitioned the address of an inventor who was identified as deceased in the petition. He wondered why CIPO would ask for such an address and how clients are to respond to such a requisition.
G. Côté responded that Rule 37 creates an obligation on the Office to requisition an inventor's address. However, in those specific circumstances, the Office may take a different approach. In reply to the requisition, clients may simply indicate that the inventor is deceased. In the future, the Office will ensure that such correspondence is not issued.
4x) Order of inventors/co-applicants names
K. Ledwell had observed that CIPO cannot control the order in which inventors' and co-applicants' names appear. He suggested that this functionality be included when CIPO is re-writing its system code.
G. Côté affirmed that, due to system limitations, the Office cannot control the order in which inventors' and co-applicants' names appear. It has been noted as a requirement for the Office's future IT system.
D. Schwartz noted a case where the order of the inventors had been switched on the Office's website but remained alphabetical in TechSource.
G. Côté asked for the specifics of the case and indicated that the order cannot be switched in TechSource. Further, what appears online comes from TechSource.
5. Other Business
S. Paul indicated that CIPO has changed its "Contact Us" page to no longer include a list of phone numbers for specific departmental contacts. She called CIPO's main line to inquire as to the reason for this and she was told that it is because the Office wants to monitor all incoming calls, requests, complaints and comments for the sake of statistics, something that cannot be done if departments are telephoned directly. Both Ms. Paul and C. Ledgley observed that it is very inefficient to have to call CIPO's main number.
S. Vasudev responded that he was unaware of this but assumed that the reason given was correct. He acknowledged concerns with the efficiency of this process and proposed that this item be included in the "Business Arising" portion of the next JLC meeting.
6. Date of next meetingsThe next JLC meeting will take place on Thursday, February 20th [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.