Archived — The Patent Practice Committee Meeting PB/IPIC - October 25, 2016

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Tuesday, October 25, 2016 1:00-3:00 p.m.
50 Victoria Street, Gatineau, Québec, Phase I
24th floor, Room G


Co-chairs: Agnès Lajoie and John Pivnicki

Members: Miriam Paton, Jenna Wilson, David Boudreau, Nathalie Tremblay and Scott Vasudev

Secretary: Sandra Hurley


  1. Introduction

    A. Lajoie and J. Pivnicki welcomed attendees to the meeting of the Patent Practice Committee (2PC). A. Lajoie confirmed with Intellectual Property Institute of Canada (IPIC) membership that the face-to-face meetings with Canadian Intellectual Property Office (CIPO) can be increased by an additional member.

  2. Update on Patent Branch (PB) projects

    1. Patent Information Technology (IT) Improvement Update

      D. Boudreau provided updates on the CIPO Documents Access System (CDAS) and Patent IT Improvement.

      • IPIC member A. Brett had asked if CIPO would consider adapting the CDAS system to include PDF files of both originally filed applications and issued patents. D. Boudreau responded that, as of July 22nd, 2016, the Canadian Patents Database (CPD) allows users to obtain a single compressed file (zip) that contains a set of PDF files at three specific points in time: at the filing date, at the laid-open date and at issuance. The majority of documents contained in the Patent Office's internal systems are now available on the CPD, with filtering and sorting functionalities to allow for easier retrieval of documents. It is possible to filter documents by specific points in time, including at filing, at available to public inspection, and at issuance of patent. D. Boudreau provided the 2PC meeting attendees with a demonstration of the filtering functionality.
      • J. Wilson noted that CDAS document images are not available on weekends due to the database being under maintenance. A. Lajoie responded that the Office would follow-up on this issue.
      • D. Boudreau discussed the following IT projects which are at various stages of development and are pertinent to the Patent Branch (PB):
        • "Patent Law Treaty and other legislation changes" for modifying IT systems to comply with the amended Patent Act and Rules;
        • "CIPO Smart Search" allowing users to search multiple IP databases at the same time;
        • "MyCIPO Online" allowing users access to a secure, customizable portal;
        • "Electronic filing of a Patent application" for updating the current PB's e-filing application;
        • "Agent Examination Management System" to provide an internal system to manage the agent examination process;
        • "Client relationship management self-serve" for allowing external users the ability to manage their contact information;
        • "IP Case and Workflow system for PB" to provide an internal system to support the management of patent case files (replacement of Techsource and InterApp);
        • "Internal IP Document management system (CM8)" to replace "ImagePlus" for viewing and storing documents within Techsource (expected completion date January, 2017);
        • "IP Document management system" to provide the CIPO-wide document management system which will replace CM8;
        • "Telework for PB employees" to allow PB employees to work securely from remote locations (expected completion date 2016/17); and
        • "Patent Branch Business Intelligence" to provide statistical information in an expedient manner (expected completion date 2017/18).
    2. Patent Branch Training Strategy

      D. Boudreau discussed the Continuous Training Strategy for Patent Examiners.

      • The categories of training activities for patent examiners include: a) Training related to intellectual property; b) Technical and scientific training; c) Training on examination tools and processes; and d) Training for general professional development.
      • Training activities are further categorized as i) essential; ii) efficiency; or iii) development training.
      • The Patent Branch's vision with regards to training of patent examiners is to continue with what is going well, improve technical and scientific training at the efficiency and development levels, increase networking and partnership and have examiners act as outreach agents.
    3. Legislative update

      S. Vasudev provided an update on PB legislative projects.

      • The changes to the Patent Rules are numerous and complex; the estimated date of completion for the Rules package associated with Bill C-43 and Bill C-59 implementation is being revised. Patent Branch indicates that the amended Patent Rules will likely be ready for consultation in 2017. The complete timeline has not been finalized and will likely extend into at least 2018.  Patent Branch will continue to advise the profession.
      • M. Paton wondered if it would be feasible to have a small Rules package pertaining to excess page fees for sequence listings. S. Vasudev responded that this would not be possible at this time.
    4. MOPOP update and consultation

      S. Vasudev provided an update on the Manual of Patent Office Practice (MOPOP) and associated consultations.

      • As discussed at the previous 2PC meeting, a new link on the MOPOP homepage is now available; it links to a summary table listing all of the changes made for each update going forward.
      • Work continues 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 but the Office will look to the profession for comments when the time to do so arises.
      • M. Paton wondered if the Office still intends to have an online format of the MOPOP including hyperlinks. S. Vasudev responded that the Office is working with the CIO to determine what would be the best mechanism to provide that functionality. When changes are made to the existing MOPOP, the associated information is put into a format that is ready for an eventual online MOPOP (O-MOPOP).
  3. PB Topics

    1. Examiners' Interview Services

      N. Tremblay discussed progress on the Examiners' Interview Services pilot project.

      • This pilot project began in the summer and involves the initiation by examiners of a telephone interview when an application has only minor defects or when the examiner believes that a telephone interview would be beneficial for advancing prosecution.
      • 72 examiners have been trained during the pilot, and 95 telephone interviews have been conducted. In 89 of these cases, the patent agent agreed to make a voluntary amendment, in 5 cases the agents asked that an Office Action be issued and in one case the telephone interview resulted in an allowance.
      • 51 voluntary amendments were received on time (within 3 weeks from the interview date), and 48 of those 51 amendments resulted in an allowance.
      • Agent feedback received by survey regarding the pilot project has been positive, and another survey will be conducted towards the end of the project at the end of the fiscal year.
    2. Follow-up on the IPIC AGM

      A. Lajoie asked if there had been any feedback on the Branch's presentation at the IPIC AGM. She noted that there seemed to be an appetite for more statistics, such as statistics with respect to final actions. The Office is looking at ways to stay in touch and provide such statistics.

      J. Pivnicki responded that his firm was generally pleased with the spirit of the presentation.

  4. IPIC Topics

    1. E-mail communication with examiners

      A. Zahl had asked if CIPO would consider permitting examiners to correspond with IPIC members by e-mail for non-substantive matters.

      • A. Lajoie responded that presently, examiners are not permitted to communicate by e-mail, as e-mail is not integrated into TechSource. The Patent Examiners' Interview Services concept attempts to address situations where there are small defects in an application.
      • D. Boudreau added that the project MyCIPO Online has a communication component to it.
    2. Update on the Canada Post Strike

      J. Pivnicki had asked if CIPO had any special processes proposed in the event of a Canada Post mail disruption.

      • S. Vasudev responded that Canada Post and the Canadian Union of Postal Workers (CUPW) reached a tentative 2-year agreement at the end of August, 2016. The ratification vote by the CUPW membership will be held between October 23rd and December 3rd of this year. In the eventuality of a strike, CIPO has made special preparations to accommodate the needs of clients. Developments will be monitored closely and the profession will be informed of any special measures should the need arise.
    3. CIPO Documents Access System (CDAS)

      A. Brett had submitted questions regarding the CDAS system.

      1. Regarding whether documents could have more descriptive naming in CDAS:
        • D. Boudreau responded that CDAS does have a tagging functionality for more descriptive document naming, however it is not yet being used. The Office will assess its capacity and train employees to tag documents properly. This tagging should be initiated after the winter holidays.
      2. Regarding whether "Notices" can be made available on CDAS:
        • D. Boudreau responded that host-generated Notices such as Filing Certificates and Notices of Abandonment are currently unavailable due to technological limitations. The Office has identified this as a client need to be delivered as part of its new modernized IT solution that will be rolled out over the coming years.
      3. Regarding the "I am not a ROBOT" entry function requiring users to start over multiple times.
        • D. Boudreau responded that a failed attempt at the robot prevention tool should not require the user to start over in identifying their desired documents for download. If this is happening, users should call the Client Service Centre for assistance. A failed attempt at the robot prevention tool will require the user to complete two new successful attempts consecutively in order to proceed with their request.
    4. Status searches

      A. Brett had submitted this item regarding whether it would be possible to have an indication of the status of a patent application on the CIPO Patents Database (CPD).

      • D. Boudreau responded that there are two modifications of the CPD which are in progress:
        1. Display the current status of all patent applications; and
        2. Display the estimated date of issuance once the final fee has been paid.
        All detailed business requirements for these items have been captured. However, due to CIO resourcing issues, there is no expected date of implementation for these two modifications.
      • M. Paton noted that the presence on the CPD of cover sheets of published, nationally filed (non-PCT) applications is sometimes delayed until 2-3 weeks after their laid-open dates. D. Boudreau asked that numbers of such applications be provided so that the Office can follow-up on this issue.
    5. The Reissue Board

      A. Brett had asked that the Office clarify the process by which the Reissue Board operates with regards to reissue applications, and whether any initiatives are in place to improve the efficiency of the Reissue Board as well as to allow for simple corrections to be handled more quickly.

      • N. Tremblay responded that the reissue process is overseen by the Reissue Board (RIB), which consists of four senior patent examiners (SG-PAT-05): one from each of discipline.
      • In the first phase, all four members review the application to ensure that Section 47 requirements of the Patent Act are met.
      • If those requirements are met, the application is examined in the second phase by an examiner to verify compliance with the rest of the Patent Act and Rules. If the application is found acceptable by both the RIB and the examiner, the patent is reissued.
      • If the application is not found acceptable, the patentee is informed and the patentee may withdraw their application. If the patentee disagrees with the Branch's decision, it may be referred to the Patent Appeal Board (PAB).
      • Concerning efficiency, recently there was a backlog of applications with the RIB. In a couple of weeks, the Office plans to look at the process to see how it can be made faster and more efficient. The possibility of having a service standard for processing of these applications will be discussed.
      • The Office processes submissions in the order in which they are received in order to ensure fairness to all clients.
      • J. Wilson wondered if there is an actual Unity Review Board (URB) that reviews disputes between the applicant and examiner regarding unity of invention and how the review takes place.
      • A. Lajoie indicated that the Office would follow-up on the URB process.
    6. Process for issuance of patents

      S. Rancourt and A. Brett had submitted questions regarding the process for issuance of patents:

      1. Will practitioners receive a notice from CIPO that issuance of an application with a pending action (such as the payment of maintenance fees) is being held up pending completion of that action?
        • D. Boudreau responded that no notice is sent to practitioners in such cases.
      2. Are there actions, other than maintenance fee payments, that are considered to be "pending actions" that will delay issuance?
        • D. Boudreau responded that, at this stage, the only pending action that can occur is maintenance fee payment.
      3. If a final fee is not paid and the "pending action" is never completed, is the final fee then refunded automatically or do applicants need to request the refund?
        • D. Boudreau answered that the final fee will not be refunded automatically and a request for a refund will need to be submitted under paragraph 4(10)(b) of the Patent Rules.
      4. (A. Brett) In connection with shortening the grant process from ten weeks from processing the final fee to eight weeks and then to six weeks therefrom, will this change how the issue of outstanding maintenance fees is handled? How far out must the pending maintenance fee be to hold up the start of the grant process?
        • D. Boudreau responded that this will not change how the outstanding maintenance fee is handled. The grant process will not be initiated if a maintenance fee is due within the grant period (i.e. within the eight weeks and eventually six weeks from the date of payment of the final fee).
    7. Varied topics (from L.-P. Gravelle and C. Ledgeley)
        1. Rule 26(3) v. Rule 58(3)

          J. Pivnicki advised that the application at the center of this question appears to be in progress, with the examiner having been advised on the correctness of the applicants approach. J.Pivnicki asked that a practice notice be prepared by the PB. S. Vasudev and A. Lajoie would look into the possibility of having a practice notice prepared.

        2. PCT applications

          A question was raised as to whether CIPO had experienced a spike in complaints with regards to cases of PCT applications receiving requisitions where the claims amended during the international phase are not the claims that are examined. Further, it was asked that CIPO comment on where they obtain the claims, and whether additional sources could be considered (such as EPOQUEnet).

          • D. Boudreau responded that the Office has reviewed the client feedback reports for the last two periods and there has not been a spike in these types of issues. The Office regrets that they do occur from time and time and they are resolved as quickly as possible.
          • There are three points at which the Office will look for PCT international phase amendments and include these amendments in the file if they are available:
            • At national entry, the Office will determine if the submission is a Chapter I or Chapter II submission by looking at the International Preliminary Report on Patentability (IPRP), and amendments that are found will be included. PatentScope will be consulted for these amendments. For specific details on this process, clients are invited to review Step 19 of the following instructions:
            • At the request for examination, if there are no international amendments in the file, the Office will again verify if there are any available on WIPO PatentScope. If so, these will be downloaded into LOB (TechSource).
            • Also using PatentScope, the examiner will verify that all internationally filed amendments from Chapter I (Article 19) and Chapter II (Article 34) have been properly included in the application prior to examining the application and issuing a first Office Action. If no amendment is found then it is suggested that they consult Espacenet to find any missing IPRPs. If they cannot retrieve an IPRP but they are aware that one exists they are instructed to request the document in their first Office Action.
          • The turnaround time for first Office Actions has been significantly reduced and it is possible that the Office is ahead of the publication in certain International Preliminary Examination Authority (IPEA) offices.
          • It is recommended that each instance of a missing international amendment be reported to CIPO's feedback mechanism to enable the quality team to determine root causes.
      1. Mixed or Lost Applications
        1. CIPO was asked to comment on the best path forward in cases where there has been a change of agent and the Office Action clearly states that the mail is to be delivered to the new agent's address, yet the Office Action is still sent to the former agent. In some cases, a firm will revoke themselves as agent, and CIPO will continue to send correspondence to the revoked firm.
          • D. Boudreau responded that the Patent Branch's internal process takes a certain number of days to process a change of address request. If a change of address request arrives in a bulk request, it can take longer, or if the request is mixed with another type of correspondence, such as a response to an examination report, then it may not be identified immediately upon receipt.
          • The examination sector works in parallel with other operations support units. Consequently, examiners can process and create Office Actions, without validating the other requests, such as a change of address outstanding in the system. As such, an examination action can be mailed while the address change or revocation is still being processed.
          • The impact of adding an additional verification step for analysts prior to mailing is being explored to ensure that no address changes are pending in the system.
          • Moving forward, it is recommended that change of address and revocation requests are sent as a well-identified request in a single piece of correspondence. After the request has been processed, the client then can verify a few weeks later using CDAS that no correspondence has been sent to the incorrect address. Additionally, the client has the right to request a confirmation letter to ensure the proper processing of an address change or agent revocation. This request needs only to be clearly indicated within the change of address or revocation request letter.
        2. CIPO was asked to comment on whether there has been any observed spike in complaints about files being incorrectly considered abandoned, mainly for non-received Office Actions and/or Notices of Allowance.
          • D. Boudreau responded that the Office has implemented an improvement project using Lean methodology to gather data and implement improvements in this area. CIPO is aware that lost and missing mail is as significant an issue for clients as it is for the Office. Every time a piece of missing correspondence is reported by the client, this is logged by the Office. The Office will be conducting research on the data to determine where failures are occurring in the processes. The 2PC will be kept apprised of the Office's progress on this file. Clients are encouraged to report instances of missing correspondence using the online feedback mechanism.

          M. Paton had noted at a previous 2PC meeting that correspondence and forms from CIPO sometimes list only the applicant, and at other times list only the owner, even when there is no registered owner. She had asked for consistency in this regard and had recommended that the header of all correspondence from CIPO be updated to identify the applicant(s) and the owner(s), with the "owner" field being left blank if no transfer document has been registered. She asked that this be considered when new forms are created with any new IT systems.

        3. CIPO was asked to explain what processes are in place at CIPO to minimize errors in which the subject matter of two different applications are merged into one, possibly due to the two different applications being received by the Office at the same moment.
          • D. Boudreau responded that on November 18, 2015, the Office updated their ECOM software, which is used to send electronic correspondence, to give a specific filename when filing instead of using a generic name for all applicants. This update eliminates the possibility of having two submissions received at the same time overwriting each other. IPIC members are invited to communicate any specific cases of mixed applications through the Office's Feedback mechanism.
  5. Tour de table, next meeting and closing remarks

    • At the Tour de Table, J. Pivnicki noted that an IPIC member (D. Lambert) had been advised that the Office will no longer send corrected notices of allowance. Rather, the Office will withdraw the application from allowance and issue a new notice of allowance with a new final fee due date. A. Lajoie noted that, most of the time, withdrawals from allowance are for substantive reasons (e.g. new, relevant prior art has been identified). Sometimes, there are formality issues. In all cases, in order to issue a new, corrected notice of allowance, the application must be withdrawn from allowance, and a new notice of allowance is issued, which will have a new final fee due date.
    • The next 2PC meeting has been scheduled for Tuesday, February 28, 2017 at 1PM, at Place du Portage, Phase 1, room 24-G.
    • J. Pivnicki agreed to have a list of proposed topics sent to CIPO by February 7th, 2017.

The meeting adjourned at 3:00PM.