Archived — The Patent Practice Committee Meeting PB/IPIC - June 14, 2016

This page has been archived on the Web

Information identified as archived is provided for reference, research or recordkeeping purposes. It is not subject to the Government of Canada Web Standards and has not been altered or updated since it was archived. Please contact us to request a format other than those available.

Tuesday, June 14, 2016 1:00-3:00PM
50 Victoria Street, Gatineau, Québec, Phase I
24th floor, Room G


Co-chairs: Agnès Lajoie and John Pivnicki

Members: Louis-Pierre Gravelle (via teleconference), Kay Palmer, Jenna Wilson, David Boudreau, Serge Meunier and Scott Vasudev

Secretary: Sandra Hurley


  1. Introduction

    A. Lajoie and J. Pivnicki welcomed attendees to the meeting of the Patent Practice Committee (2PC).

  2. Update on PB projects

    1. Legislative update

      S. Vasudev provided an update on legislative projects.

      • On June 6 CIPO launched a consultation on proposed adjustments to the trademark and patent fees and their related service standards. Under the User Fees Act (UFA), all new fees and services set by the Government of Canada must be established in accordance with the process set out in the legislation. The intent of these proposed changes is to better align Canada with its international partners, provide improved services for businesses and minimize overly broad trademark applications. The consultation concludes on July 5, 2016.
      • The Patent Consultation Document focuses on the proposed changes to CIPO's patent fee structure and the fees subject to review through the UFA process. This includes the implementation of new late fees associated with the provision of additional "periods of grace" to comply with the Patent Law Treaty, as well as changes to fee-related services in respect of correcting errors in a patent and making amendments to an application after it has been deemed allowable.
      • CIPO continues to work with the Department of Justice on the draft regulations that will allow the legislative amendments introduced in 2014 and 2015 to be implemented. The target date for the coming into force remains the fall of 2017. Public consultations, through prepublication in Canada Gazette, Part I, will occur once a draft is finalized, reviewed and approved for prepublication by the Treasury Board.
    2. MOPOP Update and consultation

      S. Vasudev provided an update on the MOPOP.

      • CIPO is planning a MOPOP update for late June 2016 that will incorporate some of the suggestions made by IPIC regarding Chapter 15: Anticipation, Obviousness and Double Patenting, and the change of title suggested for section 19.10 of Chapter 19: Amendments to Patent Applications. This update will also include many minor updates to other chapters.
      • In order to assist stakeholders in keeping up with frequent MOPOP updates, we will be providing a new link on the MOPOP homepage which will provide a summary table listing all the changes made for each update going forward.
      • The Office is presently working on several Chapter 17 sections that will go to public consultation, including bioinformatics, crystal proteins, kits and polymorphs. There is no set date for consultation at this time.
    3. Group B+ substantive harmonization

      S. Vasudev provided an update Group B+ substantive harmonization.

      • Earlier this year, CIPO conducted an online consultation on principles and objectives guiding international harmonization of substantive patent law. Comments were received from IPIC, other associations and individuals. These comments were considered and posted on CIPO's website as indicated in the consultation document.
      • Over the past year, CIPO also continued to contribute to the efforts of the Group B+ sub-group on harmonization, which took the form of 4 work streams: Grace period under the leadership of the EPO, conflicting applications under the leadership of the USPTO, prior user rights under the leadership of the JPO, and implementation options under the leadership of the Hungarian patent Office.
      • CIPO participated in a meeting in London in May 2016 to discuss the progress of these work streams. A common statement was developed and more consultations are likely to be conducted in the fall of 2016 based on the outcome of these work streams.
  3. PB Topics

    1. Section 8 Lean Project

      D. Boudreau discussed the Section 8 Lean Project.

      • Beginning in April, 2015, CIPO began a Lean Project for the process for handling corrections of clerical errors under Section 8 of the Patent Act. This project, which closed in April, 2016, succeeded in harmonizing different practices across different sections in the organization.
      • The Office was also able to improve the format of the Section 8 correction certificate. The new electronic version of the certificate allows text to be added directly on the computer, so that the certificate may be printed with the appropriate information on it. In addition, there is now an electronic stamp, enabling employees to work remotely when processing Section 8 cases.
      • These efforts have successfully reduced processing times as well as improved quality. The backlog has been removed, as Section 8 requests for correction of clerical errors are now handled as they come in, and the turnaround time is less than a month.
    2. On-Going Client Survey

      D. Boudreau presented this item regarding the on-going client survey associated with Office Actions.

      • The Office has received, so far, 79 responses, from which some information has been captured, although it is difficult to see trends at this early stage. It is hoped that more completed surveys are submitted in the future. Each survey is filled out in approximately 6 minutes and 15 seconds.

      D. Boudreau noted that a link is presently included on the paper Office Actions and wondered if clients would prefer to have some form of online access to the surveys.

      K. Palmer responded that she would prefer a general link online to the surveys on the web page. J. Wilson added that a link could be added to the signature line of e-mailed reports.

      J. Wilson wondered what the most common entry point is for the CIPO website, suggesting that the general link to the surveys could be included there. A. Lajoie responded that the Office could look into this and follow-up before the next 2PC meeting.

    3. New Client Services

      A. Lajoie presented this item pertaining to new client services at CIPO.

      • The new client services are part of the innovation mandate and priorities of the department. Projects are underway with a view to re-packaging the common look and feel of CIPO's website as well as re-visiting the messages on the website to improve clarity for those who are less knowledgeable in IP.
      • The Office is also working on new web content for business, particularly for innovators and SMEs.
      • The Patent Branch is working on a "Patent Examiner Interviews" project aimed at making patent examiners more available for dialogue with innovators and patent agents representing them, in relation to the prosecution of applications. Examiners are being encouraged to contact authorized correspondents by telephone.
      • This will allow the Office to reduce pendency times and hopefully the number of reports on a given application. It is hoped that this new service will permit rapid correction of minor defects and nominal issues.
      • It is planned that there will be a short period of time allotted following the telephone call during which any corrections can be made, after which an Office Action may instead be issued. The Branch is starting a pilot in September with two examiners per section, for a total of 70 examiners, participating. The objective of the pilot is to collect data and to polish processes and documentation. Full deployment to all examiners is expected to occur by March, 2017.

      K. Palmer noted that some consideration should be taken with respect to the length of time required for document processing. She suggested that the examiner could provide an indication that when any amendment in response to these telephone calls are submitted, the authorized correspondent should call or e-mail the examiner to inform them of the submission.

      D. Boudreau indicated that the Branch is in the process of drafting the procedure that will be followed in the pilot. It has been presented to section heads. An in-house form will be created for documenting these telephone discussions. The completed form would be scanned into TechSource and become part of the file. Clients may request a copy of the document and it will be available to the public on CPD as well.

      S. Meunier added that 20 examiners will participate in a pre-pilot of the project in July and August. The plan is to allow a time limit of three weeks to amend the application following a patent examiner interview.

      L.-P. Gravelle wondered if the pre-pilot examiners will include French speaking examiners. S. Meunier responded that the Office will ensure that they will.

    4. Change to correspondence procedures

      S. Vasudev introduced this item.

      • Following the Federal Court of Canada decision in Biogen Idec Ma Inc. v. Canada (Attorney General), 2016, FC 517 the Xpresspost™ service of Canada Post is now recognized by CIPO as a designated establishment.
      • Correspondence received using the Xpresspost™ service of Canada Post will be considered received by CIPO on the day indicated on the mailing receipt provided by Canada Post, or if CIPO is closed for business on that day, on the day when CIPO is next open for business.
      • The Office's correspondence procedure Practice Notice (PN) has been amended to reflect this change. The amended PN was published in the CPOR on May 24, 2016 and in the TM journal and on CIPO's website on May 25, 2016.
      • CIPO has, on occasion, experienced technical issues with reception of faxes where they originate from a computer facsimile interface or internet-based facsimile services. When this happens, pages are missing on reception but the transmittal report from the sender shows that all pages were sent and successfully received.
      • For this reason, the Office strongly discourages the use of a computer facsimile interface or internet-based facsimile services due to technical issues with reception. A cautionary statement to this effect will soon be integrated into the Correspondence Procedures and communicated to CIPO clients.

      K. Palmer noted an issue of mail being directed to incorrect firms, with the envelope having the address to the incorrect firm and the paper requisition inside the envelope indicating the address of the correct firm. A. Lajoie indicated that this sounded like the result of a human error wherein the document is placed in the wrong envelope. She added that there would be follow-up with employees in the mail room to ensure that the correct process is followed.

      D. Boudreau added a note to this item regarding changes to correspondence procedures.

      • Up until now, in accordance with MOPOP chapter 1, clients could drop off any type of correspondence, such as correspondence including a payment, at the mail room on Commercial Level 1 of Place du Portage, Phase 1. There has been a change because of the presence of an incoming correspondence unit on the third floor that includes staff from the mail room.
      • As of April 1, 2016, when there is correspondence that is accompanied by a payment, it must be dropped off at the Client Service Centre (CSC) on commercial level 2 of the building.
      • The hours of the CSC are 8:30AM-5:00PM, whereas the hours of the mail room are 8:30AM-4:30PM.
      • The mail room will still accept correspondence that is not accompanied by a payment. MOPOP Chapter 1 is currently under review, and this information will be clearly reflected therein.
    5. IPIC feedback on search records

      A. Lajoie presented this item regarding search records on examiners' reports.

      • In October, 2014, the Office started attaching to each examiner's report an examination search report. This was with a view to improving documentation of examination work, ensuring standardization and a consistent approach. It had been requested by IPOs and clients.
      • The Office welcomes any client feedback or comments on these reports. Comments in this regard from IPIC members at the 2PC meeting were very positive.
    6. Paper Copies of Biological Sequence Listings

      S. Vasudev presented this item regarding paper copies of Biological Sequence Listings (BSLs).

      • As explained in the Sequence Listings Practice Notice of October 9, 2007, the Office requires BSLs to be submitted only in electronic form, as intended by section 111(1) of the Patent Rules.
      • Where a sequence listing, submitted in accordance with subsection 111(1), is part of an application of record in the Office, it is not permissible for a paper copy of the sequence listing to also be part of that application.
      • Applicants will be requisitioned to withdraw any paper copy for which a PCT-compliant electronic sequence listing has been made of record.
      • Once the application is open to public inspection, clients may view the complete sequence listing online in the Canadian Patents Database (CPD).

      K. Palmer noted that applications sometimes contain sequence tables, which are not technically sequence listings. She added that some clients who are concerned that electronic sequence files may be corrupted prefer to have such tables included as a physical record. However, these can result in the charging of large "excess page fees". S. Vasudev indicated that where it appears that a paper copy of the sequence listing is in the application and it merely has the title "Sequence Tables", generally the Office will ask for the removal of this copy. S. Meunier noted that this is in line with PCT practice.

      D. Boudreau added that the Office may want to explore a change to the grant format whereby electronic copies of sequence listings are not printed, as is presently done. Thus, the whole patent would be printed with the exception of the electronic copy of the sequence listing.

    7. Agent Register Renewal – update on 2016 exercise

      S. Vasudev provided an update on agent register renewal.

      • The Patent Rules were amended in 2013 to remove the requirement for the Commissioner to send a notice to patent agents regarding their obligation to renew their registration on the patent agent register under subsection 16(1) of the Rules.
      • This was first implemented in 2015, and 2016 is the 2nd annual renewal exercise for the patent agent register where no notices were sent out. The agent community was reminded via social media, web notices and listserv messages.
      • Renewal of patent agent firms must include a statement indicating each member of the firm whose name is entered on the register and must be signed by a duly authorized member of the firm whose own name is entered on the register. The Patent Office will not accept a signature of the firm for this purpose.
      • The register contains over 1000 entries for patent agents or firms and 51 were removed on May 10th, 2016 for non-compliance with the renewal requirements under subsection 16(3) of the Rules. Two (2) were reinstated due to Office errors and 13 have since reinstated their registrations.
      • Approximately 2500 active patent applications and patents were affected by the removal of their agents from the register. The Office has notified the affected applicants and patentees as well as the affected agents by letter. In these situations, applicants and patentees are given three months to appoint an agent. During that three-month window, the Office will accept correspondence from the applicant or patentee.

      K. Palmer expressed concerns that a reinstatement deadline on an abandoned application may occur in that three-month window. S. Vasudev responded that the Office would try to be as flexible as possible in such a situation.

      J. Wilson wondered what the Office's internal check was for cases where an agent is no longer on the register and attempts to pay a fee, as they would no longer be the authorized correspondent. S. Vasudev responded that this would be caught by the person processing the fee, as TechSource screens provide the name of the authorized correspondent.

      D. Boudreau asked that IPIC members of the 2PC make sure that the agent community is aware that there will no longer be any courtesy letters reminding them to renew on the register, and that the deadline is March 31st each year.

  4. IPIC Topics

    1. Prosecution Questions:
      • 4a.1) Identical applications
      • 4a.2) Multiple Dependencies

      Questions relating to patent prosecution were raised by Sue Rancourt.

      4a.1) Ms. Rancourt cited a case where two identical applications were filed on the same day, one as a Canadian nationally filed application and the other as a PCT international application (with Canada as Receiving Office). A PCT Search report was received, and in view of the prior art cited by the examiner, the claims for the PCT international phase application were amended under Article 19. Both applications published. A different examiner allowed the nationally filed application with no prior art cited.

      IPIC asked CIPO to clarify the process used to assign an examiner to an application. Ms. Rancourt wondered if a comment from the applicant advising CIPO that identical national and PCT international applications were filed simultaneously would assist the Office in this regard. She also wondered if CIPO would consider putting processes into place which would allow national and PCT international examiners to cooperate or which would enable the assignment of a single examiner to related national and PCT international applications.

      • S. Meunier responded that IPC Classification is used to distribute applications to examiners. A single examiner will have the same art, based on IPC, at the national and international phases. However, in certain arts (i.e. IPC subgroups), where there are too many applications for one examiner, the last digit(s) of the application number is used to distribute applications. This could lead to a situation like the one mentioned here, where two different examiners would be examining identical applications. In addition, different classifiers might classify identical applications (CA and ISA) slightly differently.
      • Comments from the applicant would not help resolve this situation. The Internal Correspondence Unit (ICU) would process the two applications separately so they would not make a connection between them. The classifiers would not look at the cover page of any letter from the Applicant to see any note, as they typically only look at the description and claims. The only connection classifiers are in a position to make is to ensure that any ISA application with a Canadian priority is classified in the same manner as the Canadian priority application.
      • A process is in place to have a single examiner in charge of an application at both the international and national phases. However, if two identical applications are filed on the same day and are assigned to two different examiners, it is possible each examiner would not be aware of the other application, and thus cooperation between examiners would not be possible. In addition, the Office is not planning to have teams of examiners examining the same applications.
      • Perhaps, in this case, the application numbers could be provided so that the Office can get to the root cause of the issue and put in place any proper measures.

      4a.2) Ms. Rancourt also asked if CIPO would advise as to which of the acceptable forms of multiple claim dependencies listed in MOPOP Chapter 11.06 is preferred by the Office. In a particular case, an Examiner contended that claims were indefinite because it was not clear whether the expression "The [container] of claim 1, 2 or 3…" meant "any one of claims 1 to 3".

      • S. Meunier answered that the expressions are considered identical, and it is not a defect that should have been raised. He added that there is no preferred list of acceptable forms of multiple dependencies in MOPOP, just examples of what is and what is not acceptable.
      • When Chapter 11 is updated, examiners will be given training and will be reminded that these forms are acceptable.
    2. Rule 26(3) v. Rule 58(3)

      S. Rancourt introduced this topic regarding a PCT National Phase entry application that was filed in Canada in 2014 claiming small entity status. Fees, including two maintenance fee payments, were paid at the small entity rate when they should have been paid at the standard rate. The Applicant was beyond the late entry national phase deadline, and the first maintenance fee payment reinstatement deadline.

      CIPO was called and the Office stated that, in their view, because the late national phase entry deadline in section 58(3)(b) of the Rules had passed, Rule 26 could not rectify the National Entry fee payment problem. Ms. Rancourt noted that it appeared CIPO considered Rule 58(3)(b) to supersede Rule 26.

      In IPIC's view this is incorrect, particularly in view of Rule 26.2, which seems to state that, even in the face of Rule 58(3)(b), if the Commissioner extends a deadline under Rule 26(4), the extended deadline applies. IPIC believes that this fact scenario falls within the scope of subsections 26(3) of the Patent Rules, and that both the National Entry fee [the fee under subsection 3(5)] and the maintenance fees [the fee under subsection 3(7)] can be rectified provided that the conditions in Rule 26(4) are satisfied.

      • S. Vasudev responded that the Office cannot comment on the specifics of this case. However, the Office agrees with IPIC's interpretation of these Rules.
      • An extension of time under section 26 of the Rules can be requested for fees listed in Rule 26(3) which are the Examination Fee under subsection 3(3) of the Rules, the appropriate basic national fee (PCT national phase entry) under subsection 3(5) of the Rules, and maintenance fees under subsection 3(7), 3(8) and 3(9) of the Rules.
      • A reminder will be provided to CIPO employees who deal with these questions.
    3. CPD improvements

      This topic was submitted by Mary Jane McKay-Carey.

      IPIC considers that the ability to view documents in the CIPO file history is a great addition to the CIPO website. Although previously discussed, IPIC considers that "laid open" and "allowed" Canadian patent applications and/or "issued" Canadian patents would be valuable additions to CPD, and that without "piecing together" from the "document" section of the CIPO website. This would also help applicants verify the contents of applications and possibly reduce printing errors for CIPO preparing Letters Patent.

      IPIC also notes that the esp@cenet generates PDF files of laid open Canadian patent applications and issued Canadian patents, and wonders how esp@cenet is able to generate these PDF files.

      • D. Boudreau responded that CIPO is committed to continued improvements to providing clients access to the CPD, CIPO file history, on the CIPO Website. Current plans do include making it easier for clients to retrieve IP documents for a specified status which include as-filed, as at today, and at grant. The Office is waiting for the IT development team to assess the best possible solution.
      • The PDF files available on esp@cenet are generated by esp@cenet. CIPO does not share the patent files in this format directly, however this is a format that is being considered for the CIPO Website.
      • At this time, there are no definite timelines for these improvements, but IPIC will be kept apprised of the progress as the Office gets further into the planning phase.
    4. Excess Page Fees for Sequence Listings

      Gail Silver submitted this item.

      She noted that the question of addressing excess page fees for Sequence Listings was originally scheduled for an earlier Rules package. With recent procedural changes to the sequence listing practice, IPIC finds itself less likely to notice unusually large sequence listings at national phase entry. She wondered if it would be possible for CIPO to notify applicants of the number of "pages" attributable to the sequence listing, soon after filing/national phase entry. She also wondered how any changes to the Rules with regard to this issue would affect presently pending applications, including applications allowed before an updated excess page fees calculation is implemented but where the final fee is due after this implementation, as well as applications that are abandoned for failure to pay the final fee, where the reinstatement deadline is after this implementation.

      • S. Vasudev responded that the Office is aware that lengthy biological sequence listings (BSLs) can lead to a large number of excess pages, and a substantial final fee payment, since the patent grant is a hard copy which contains a hard copy of any BSLs within.
      • It is not practical for the Office to notify applicants of the number of 'pages' attributable to the sequence listing soon after filing or national phase entry.
      • The Office recommends that clients calculate the number of pages using available software to perform a 'print preview' or similar function.
      • The calculation of final fee, including excess page fees, is made when the application is allowed and a notice of allowance is sent to the applicant. The Office will carefully consider how to implement the amended Patent Rules for scenarios presented in the question submitted by IPIC. Agents will have the opportunity to comment on CIPO's proposed transitional arrangements during Canada Gazette 1 prepublication.
    5. Publicly Available References: Rule 81(2)

      This item was submitted by Gail Silver.

      She noted that there were instances where examiners question whether documents referenced in the description of a patent application are publicly available in compliance with Rule 81(2) without expressly rejecting the description.

      IPIC submits that, the "public availability" of a document is easily discernable from a search, for example on US Public PAIR, Google Patents, PatentScope etc. In particular, IPIC requests that CIPO consider advising Examiners that provisional US Applications referred to in a patent specification are generally available to the public.

      • S. Meunier responded that examiners had been advised that they should only cite a R81(2) defect if they cannot find the document or cannot order the document.
      • The Office will send a reminder on R81(2) and specifically mentioning provisional US application numbers in addition to US serial numbers. However, in their search, if the examiner cannot find the document, they would raise the defect as mentioned in the point being raised. It should be noted that not all provisional US applications are publically available.
    6. Page numbering

      K. Palmer submitted this item, indicating that IPIC has received a large number of Requisitions relating to page numbering, some of which being correct and others being incorrect. She wondered if there has been a change in the procedure at CIPO with regard to who is responsible for possible defects related to page numbering.

      • D. Boudreau responded that on February 2014, the Patent Office decided to stop sending 3-month letters. Those letters were sent by the clerical staff to inform clients of minor format defects. However, there are no provisions in the Patent Act and Rules to support the sending of those letters.
      • It was decided that if a minor defect is identified by the clerical staff, the application would be referred back to the examiner who would examine the defect and write an examiner's report if needed, as examiners have this authority under the Patent Act.
      • The Patent Office is currently revising its practice related to minor defects having low impact on patentability. If changes are made, IPIC members will be informed through a practice notice.
    7. Voluntary Submission of References

      K. Palmer submitted this item. Regarding submissions to CIPO of prior art identified during the prosecution of counterpart applications in other jurisdictions, IPIC would like to better understand how these submissions are handled by CIPO, in particular how these submissions are handled before and after a Request for Examination (RE) and/or an Allowance.

      • S. Meunier responded that the manner in which voluntary submissions of references are handled is as follows:
        • If the prior art is received before the RE, it is put on file for the examiner to consider when examining the application. The examiner must verify the pertinence of the prior art. If it is applicable, it is cited in an examiner's report.
        • If prior art is received after the RE, it is put on file for the examiner to consider when examining the application, either when they first pick up the case or after a response to an office action, whichever is applicable. The examiner must verify the pertinence of the prior art. If the prior art is applicable, it is cited in an examiner's report.
        • After allowance, if the prior art is received before or on the date of the Notice of Allowance (NOA), the examiner must consider the prior art and verify its pertinence. If it is applicable, the examiner will write a report and cite the art; in this case, if a NOA has been mailed, the applicant will receive a Withdrawal from Allowance notice; and
        • If the prior art is submitted after the date of the NOA, the examiner will review the accompanying cover letter to see if the pertinence of the prior art has been identified and explained (i.e. not just submitted as a list of citations). If the pertinence of the prior art has been identified, the prior art will be reviewed. If the examiner considers that the prior art is applicable, the application will be withdrawn from allowance and an examiner's report will be issued. If the pertinence of the prior art has not been identified, the prior art will not be taken into consideration by the examiner, but will be placed on file with the application.
  5. Tour de table, next meeting and closing remarks

    • L.-P. Gravelle asked if CIPO is participating in consultations currently taking place on the Code of Ethics and governance structure. A. Lajoie responded that these consultations are being led by the strategic sector of Innovation, Science and Economic Development (ISED). CIPO is a neutral observer in these processes.
    • D. Boudreau discussed the e-filing project. The detailed business requirements of the project were completed in the first week of June and presented to the CIO for analysis. The drafting of these requirements took into account comments made during the consultation. At present, there are conflicting priorities, notably with regard to requirements under the Patent Law Treaty (PLT) and the planned replacement of the ImagePlus image viewing software. It is still anticipated that progress will be made on the e-filing project in the next two years.
    • J. Pivnicki noted that he has been tasked with the fee consultation. He also asked that the Office post the 2PC meeting minutes so that it is more readily accessible on the CIPO website. He noted that it would be helpful if what has been specifically discussed could be cross-referenced. L.-P. Gravelle noted that the minutes are posted under the "Agent" tab of the website under "Records of Discussion".
    • J. Wilson wondered if the new initiatives with regards to the improvement of the content of the website were being implemented by the Information Branch. A. Lajoie responded affirmatively. The Information Branch is now known as the Business Services Branch, which is in charge of communications, marketing and development of new products, and managing stakeholder relationships.
    • K. Palmer wondered if there was a reason that Chain of Title documents are not available on the CPD. A. Lajoie responded that there is a project to put more information on the CPD, however there are some privacy issues with respect to providing personal information on the website.
    • A. Lajoie indicated that the Office has started publishing monthly production statistics on the CIPO website.
    • The next 2PC meeting has been scheduled for October 25, 2016 at 1PM, at Place du Portage, Phase 1, room 24-G.

The meeting adjourned at 3:00PM.