Archived — Practice Committee Meeting PB/IPIC - Tuesday, February 27th, 2018

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Tuesday, February 27, 2018, 1:00-3:00PM
50 Victoria Street, Gatineau, Québec, Phase I
24th floor, Room G


Co-chairs: Agnès Lajoie and Jenna Wilson

Members: Jeff Leuschner, Miriam Paton, John Pivnicki, Peter Wong (via teleconference), Serge Meunier, Andrée Patry, Robert Snippe and Scott Vasudev

Secretary: Sandra Hurley


1. Introduction

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

2. Update on PB projects

  1. Legislative Update

    S. Vasudev provided an update of PB legislative projects.

    • Patent Branch (PB) continues to make progress on the Patent Rules package associated with Bills C-43 and C-59. It is expected that a draft of the Rules ready for review by editors at the Department of Justice will be complete by the end of February. Since mid-June 2017, PB has conducted several consultations with stakeholders including a line by line technical review of a draft Rules package with select stakeholders in June 2017, a 6-week public consultation in August and September 2017, a technical review of the transitional provisions with select stakeholders in November 2017, direct engagement in November 2017 with stakeholders who provided comments in the public consultation and finally a teleconference with IPIC and FICPI in January 2018 concerning lingering issues of interest to those organizations. PB hopes to soon be able to provide stakeholders with an updated estimate of the coming into force of the new Patent Rules.

    • A. Lajoie noted that the Department of Justice Canada reviewers and jurilinguists have asked for 6 months to review of the package prior to publication in Canada Gazette I. In the meantime, with regards to changes on the IT side, the Office is moving forward based on the assumption that there will be no major changes coming out of the Gazette I consultations. R. Snippe added that time for testing and training will be required. True external beta-testing, however, will not be possible, as the Office does not have the functionality to run two systems at the same time.

  2. MOPOP Update

    S. Vasudev provided an update on the MOPOP and associated consultations.

    • A public consultation on the medical kits section of Chapter 17 (Biotechnology and Medicinal Inventions) took place from April 24th to May 15th.

    • A public consultation on Chapter 12 (Subject-matter and utility) took place from June 27th to July 21st. During the consultation, the decision by the Supreme Court on Astrazeneca Canada v. Apotex was released, and so the consultation was expanded to include the question of what would need to be changed in view of the decision.

    • A revised chapter 12 and chapter 17 incorporating the medical kits section were published on November 10th. The text of the chapters was adapted to reflect some of the comments received during the public consultations as well as to take into account the decision of the Supreme Court. The input of the patent profession was much appreciated.

    • A further small revision in a number of chapters is planned for March. The revision will clarify processes involved in amending sequence listings and in situations where multiple applications for reissue are co-pending. The revision will also introduce into MOPOP information about the Interview service, and also bring MOPOP in line with the CIPO practice notice for correspondence procedures.

    • A new tool for MOPOP will be implemented in Q1 of FY2018. The tool will allow improved searching, be useable across multiple devices and will allow users to print all of portions of the full document. Similarly users will be able to download the document in pdf or epub formats. Initially, the MOPOP document used with the tool will maintain the same structure; however a move to a topic-based structure will likely occur after PLT implementation.

  3. Group B+ Update

    • Following the User Symposium in Munich in June 2017, the Group B+ Sub-Group met in Geneva, Switzerland on October 3, 2017. The outcomes from that meeting are documented in paper B+/SG/5/4 and are available online. At the meeting of the Group B+ Plenary, the Sub-Group tabled paper B+/PL/13/3, titled "Response Document: A B+ Sub-Group Response to the IT3 "Elements Paper." It was proposed at the B+ Sub-Group meeting in October that IT3 and the Sub-Group would meet next in Tokyo, Japan in April 2018.

    • The IT3 recently held a meeting in Tokyo and provided the chair of the B+ Sub-Group with a post-meeting update. They informed that this was a productive meeting with principles agreed to underpin future work, solutions to areas of divergent views explored and further consensus on some issues being reached. They continue to hold weekly teleconference meetings in between their scheduled face to face meetings to provide momentum for this work. Although the IT3 is making progress, the progress at this stage seems insufficient for the April meeting in Tokyo to be viable. An alternate meeting date in June is now being proposed and the Office is optimistic that the IT3 and the B+ Sub-Group will be in a position to hold a substantive discussion at that time.

    • CIPO, at this time, favours the approach decided upon in 2016 to pursue an industry-led patent harmonization package as it provides the best chance to dislodge Offices and industry groups from entrenched positions that are preventing progress. The Office is hopeful that progress on this front will be made before the Group B+ Plenary in October 2018.

  4. Update on IT: E-filing look & feel changes coming

    R. Snippe provided an update on IT.

    • There are currently two e-filing projects underway. The first project which pertains to functionality is on a temporary hold due to resourcing issues. The second project does not involve a change in functionality and is directed to ensuring that the e-filing system has a look and feel that meets government standards. The changes under the second project will be released in the next few months.

    • R. Snippe noted that the current system allows clients to save a partially completed application on their local machines. He wondered how often this function was used by clients. M. Paton and J. Wilson responded that this function was used all the time. They added that it would be helpful if attachments could also be saved in this manner. R. Snippe explained that the new technology does not allow for saving locally and that the Office was looking at other ways of enabling saving of a partially completed application. One option would be to enable saving on the CIPO server. Concerns were expressed by IPIC members of the 2PC as to the security and access associated with such an option. R. Snippe acknowledged these concerns and indicated that the Office will look into finding a solution that meets clients' requirements and is secure.

3. PB Topics

  1. CIPO Client Satisfaction Survey

    • A. Lajoie asked if IPIC members of the 2PC had been contacted by the company hired by the Office to answer questions in the CIPO Client Satisfaction Survey. M. Paton and J. Wilson acknowledged that, indeed, they had responded to the survey. Because they had indicated that they occasionally filed industrial design applications, many of the questions were related to designs and not patents; however, there was opportunity to provide supplementary comments relating to patents. A. Lajoie noted that this survey was a good opportunity for clients to voice their concerns.

  2. Proposal for improvements to Grant packaging

    • A. Lajoie circulated proposed designs for improved patent grant packaging. IPIC members of the 2PC generally liked the looks of the proposed new packaging designs, and asked that any new designs open up sufficiently to permit scanning of the first page of the document.

4. IPIC Topics

  1. Electronic signature practice

    The Office was asked to update IPIC on the state of its policy on and the requirements for the acceptance of digital and electronic signatures in correspondence.

    • S. Vasudev responded that the issue is multifaceted as the technology in this area is evolving rapidly, and the Branch should be aligned with its partners in Trademarks and Industrial Design. The Office is considering the issue and intends to clarify its policy within the coming year. The Office will consult with IPIC in developing the policy.

    • M. Paton noted that there are a number of possibilities that could be called an electronic signature: i) the document is physically signed and then scanned. These are acceptable today; ii) an image of the handwritten signature is inserted into the document. These are not acceptable at the USPTO; iii) the document is signed with an "S-signature", which needs to be typed. These are acceptable at the USPTO; and iv) the document is signed with a Docusign-type service. This is used by WIPO. M. Paton asked that all of these possibilities be considered when the policy is developed.

  2. Missing page numbers

    Multiple members had discovered that the page numbers on their paper submissions disappeared when the pages were scanned by the Office. These submissions were provided on A4 paper, and so it was surmised that the pages are being scanned at the Office onto letter size pages. The Office was asked to confirm the cause of this issue and that it has been addressed.

    • The Incoming Correspondence Unit (ICU) manager has advised A. Patry that when shadow lines had been removed from the bottoms of pages, some page numbers were also removed. This has been addressed through training of employees who perform the scanning. When scanning a page provided on A4 paper, the scanner must be adjusted to ensure that the page numbers are not removed. Errors which remove page numbers can be caught through Quality Control by scanners and also by the Operations section, which has a mechanism to request corrections by the scanners. These requests can be tracked and the appropriate steps are then taken to make the corrections.

  3. Requisition-like letters that are not requisitions

    Some members had discovered correspondence from the Office that appeared to be requiring some action by the applicant, but without a deadline. One member received a letter from the Office after exam was requested with a voluntary amendment, stating that the application would not be reviewed because the voluntary amendment added new matter. Another member received a notice of abandonment dated November 2017, shortly after requesting examination, in respect of an alleged date of abandonment of October 2015, for failure to respond to a requisition to correct a sequence listing. However (i) the requisition had not been sent; and (ii) the original requisition as written (which was accessible via CDAS) did not provide a response period; it simply stated the consequences of failing to comply with the requisition. It was asked that the Office confirm that all requisitions and notices that can result in abandonment expressly include a response period and a legal provision granting authority for the requisition. It was also asked that the Office explain the process by which deadline-setting correspondence is generated and logged.

    • S. Vasudev responded that, in general the Office aims for continual improvement of its products and processes, including the clarity of its standard correspondence templates, such as requisitions and notices. The Office agrees that some templates can be improved and it is also possible, that personnel are inadvertently removing the authority and response period when preparing correspondence. The upcoming implementation of PLT will necessarily include a thorough review of Office correspondence, requisitions and notice templates and the Office will aim to ensure that all relevant information is clearly expressed.

    • Without further information in the first example application, which would be best addressed through the feedback mechanism, it is unclear what exactly occurred in the particular application. There are two possible situations that could have led to the confusion:

      • The first situation arises following examination being requested on an application; as a courtesy to the applicants, examiners will review previously-filed voluntary amendments as well as any submitted with or after the request for examination for new matter if the amendment has not been publically available for more than one year and if examination will not occur within a year from the amendment being publically available. In the case that review for new matter does occur and new matter is found then a letter indicating such is sent as a courtesy to the applicant so that the applicant can submit a new application for the new matter if they so desire. Note that, because of the conditions, such courtesy letters are rarely sent to applicants.

      • The second situation arises during examination: if new matter is introduced by an amendment, an examiner on a first report is not obliged to perform a search of the claims comprising the new matter. However, the examiner's report will still need to identify the defect for new matter. The fact that a search has been deferred is indicated to the applicant in the report by the paragraph: "A search of the prior art has not been made because the application includes new subject-matter which may not be inferred from the application as originally filed."

    • J. Wilson noted that the courtesy letter practice should be outlined in MOPOP.

    • M. Paton additionally requested that all outgoing correspondence from the Office identify both the applicant and the owner.

  4. Agent Renewal Processing

    IPIC noted that it seems that there is a delay in processing agent renewals as compared to last year.

    • A. Patry responded that the delay resulted from the move to different sections of two employees which had been responsible for processing of agent renewals. New employees have now been trained for processing agent renewals, and it is expected that the Office will be caught up in the next few weeks. Of note, the Office sends a confirmation letter of agent renewal only on request.

  5. Formalities errors

    Several IPIC members had noticed multiple errors originating in the Formalities department, particularly in relation to document registration practices. These errors, which include typographical errors, misspellings and missing information, appeared not to have been limited to one person, and the frequency of such errors seemed to be increasing. It was noted that more training and quality control may be necessary. In the long term, members would probably favour a system like that used in the USPTO, where recordals bear no fee, and the party recording the transfer provides data to the USPTO in a manner that can be easily extracted.

    • A. Patry responded that the feedback was appreciated, and the issue will be addressed with the appropriate sections. The Office will look into providing additional training and into increasing quality control measures.

    • A. Lajoie noted that the Office's vision for the future is to allow clients to be self-sufficient in entering the relevant data.

  6. Lack of detail on "other document" registration certificates

    IPIC noted that when an "other document" is recorded by the Office, the lack of information on the registration certificate makes it impossible to confirm which document is referenced. Members wanted to discuss options for improving the information on "other document" registration certificates. It was asked if it would be possible, for example, to include the names of parties in the document, along with the document date on the registration certificate, or for the Office to return a copy of the submitted document with a stamp indicating the registration number and date.

    A. Patry responded that the Patent Branch can make changes to letters to make it easier to identify documents. R. Snippe added that, for security agreements, which are documents registered against a patent, the system used by Patent Branch does not include fields for entering the names of parties. A solution proposed by the Operations section is that if clients could identify a Security Agreement by number, then the Security Agreement number could be entered in the title field, and this number would be included in the letter sent by the Office. J. Leuschner indicated that this proposed solution seemed, on its face, to be helpful.

  7. Indefiniteness objections

    The Office was asked to explain the guidance given to examiners concerning examination under subsection 27(4) of the Act. IPIC members noted that examiners have raised objections to claims under subsection 27(4) with indefiniteness not as the real basis, but rather suggesting that the scope of the claim should be limited for reasons generally related to utility or the second part of section 84 of the Rules (e.g. to specify who or what is carrying out each step of a process, or to limit the claim to a particular use case). Specific examples were provided by IPIC.

    • S. Vasudev responded that, as is stated in MOPOP 11.03 examiners are instructed to ensure that no speculation is necessary to determine what is covered by each claim and that the wording of the claims should not be so flexible that several interpretations of the claim are possible. Examiners are given discretion in their use of subsection 27(4) defects even when there may be an intertwining of patentability defects arising from the same error, especially where the fundamental nature of the error may be one of ambiguity or clarity. It should also be noted that while agents and applicants may know what was intended by a particular wording, examiners and third parties are not able to read the claim with the same knowledge. Something that was intended to be interpreted in a specific way by the applicant may not appear to be so to the examiner and so could appear to be ambiguous and unclear. Therefore, ss27(4) might be the appropriate defect identified at least initially, even if upon further prosecution it becomes apparent that the intended interpretation actually gives rise to other defects.

    • J. Wilson opined that, in cases where a defect under subsection 27(4) is inappropriately identified, Applicants should not have to explain what subsection 27(4) means, and then argue against a defect which was not actually identified (e.g. overbreadth under Rule 84).

    • S. Meunier acknowledged that this was a good point. As for the specific examples provided by IPIC, it was not possible to easily group them all. Some examples provided were considered one-offs. For such situations, clients are reminded to use the Online Feedback Mechanism, which allows for a quicker resolution. The Office did, however, find some trends in the examples, and they could be categorized into 3 groups: o Group 1: On applications where a ss27(4) defect was identified, the Office will make sure examiners provide a clear reason for the 27(4) defect, as this was not always the case.

      • Group 1: On applications where a ss27(4) defect was identified, the Office will make sure examiners provide a clear reason for the 27(4) defect, as this was not always the case.

      • Group 2: Claims are overly broad. This will be addressed with training and perhaps a new PERM for addressing claims having a broader scope than the invention disclosed ("claims broader").

      • Group 3: Claims may lack unity. This will be answered under topic k).

  8. Use of "novel" or similar language in an application title

    Two weeks after a member filed a response to an examiner's requisition addressing various substantive issues, they received a subsequent examiner's report with a single objection to the title of the application under paragraph 80(1)(a) of the Rules because of the inclusion of the word "novel". This was considered a surprising objection, since the Office did not appear to be in the habit of objecting to this type of language, and the word does not run afoul of the cited paragraph. It was asked whether there had been a policy change in this regard or if this was a training issue.

    • S. Vasudev responded that this is a training and implementation issue, not for the single examiner but rather for all other examiners. The use of the term "novel" or "new" in the title is not considered to be precise in giving an indication of the subject-matter of the invention. Examiners may have been prioritising other aspects of examination over this defect in the title when creating their reports. S. Meunier added that examiners have been instructed to identify as a defect the presence of such terms in the title for at least 20 years. A. Lajoie further noted that the Office is encouraging examiners to call the authorized correspondent, rather than writing a report, when there are minor defects such as these.

  9. Post-election practice

    With regards to examination after election of a unity group, IPIC noted that the Office's post-election practice is such that applicants are not permitted to change the elected subject matter group after an election has been made. It was not clear to members that the language of the Patent Act or Rules imposes such a restriction.

    • S. Meunier responded that this practice was published in the CPOR in March 2009 following a public consultation. This is not a new practice and it is based on the Office's interpretation of subsection 36(2) specifically.

  10. PERM language for double patenting/overlap objections

    The Office was asked to clarify its standard language for double patenting objections, to distinguish between the two branches of double patenting. Specifically, the language begins with a statement to the effect that "Claims X-Y of the present invention are directed to subject-matter that is not patentably distinct" in view of the claims of the co-pending application/patent. However, the objections end with an indication that "The overlapping subject-matter must be removed." It was submitted that the former language suggests obviousness-type double patenting, while the latter mention of overlap suggests novelty-type double patenting.

    • S. Vasudev responded that while this language has been present in the standard language since it was first introduced in 2006, and it is not apparent that there is any misuse of language herein, to aid the comprehension of the agents the Office can replace "overlapping subject-matter" with "not patentably distinct subject-matter" for the relevant situations.

  11. Disguised unity objections

    IPIC noted that it appears that some examiners are raising objections to claims that they apparently believe lack unity, without actually making a unity objection. This seemed to be an attempt to coerce an applicant to restrict the claims in some fashion while depriving them of the opportunity to file a divisional under subsection 36(2.1), and while misapplying a different section of the Act or Rules. It was asked what training examiners have received on this issue. Example cases were further provided.

    • S. Vasudev responded that examiners are very much aware of the requirements of unity as well as the restrictions placed on double-patenting following identifying a unity defect. Thus, examiners are instructed that unity groups should not be identified that would be unacceptable if they had been filed in two different applications. This does not deprive the applicant of an opportunity to file a divisional under subsection 36(2.1) because in these particular cases there is a question of whether there really is "any other invention" present. In cases where different claims recite different elements that would be double-patenting in separate applications, it is not the role of the examiner to perform a dissection of the claims to determine which particular embodiments should be separated in different groups. It is the role of the applicants and agents to craft the claims and if the agents and applicants believe that there are multiple inventive concepts in a set of claims then it is incumbent on the agents and applicants to sufficiently differentiate the claims such that unity groups can be identified by examiners. The particular defects identified by the examiner in the examples provided may indicate that: the examiner does not view there to be more than one inventive concept but that the multiplicity of claims and their language render the claims as a whole unclear; or, there could be different inventive concepts but that these have not been sufficiently differentiated by the agent/applicant to allow for the clear identification of a unity defect.

    • S. Meunier added that while reviewing the examples provided, the Office has identified an opportunity to remind examiners that claims can define the same invention in different ways and yet still be unified, and that if the general inventive concept is "not clear", it is not always necessarily a 27(4) issue. This will be addressed in training.

  12. Search and examination of PPH applications vs regular applications

    The Office was asked to explain the instructions that have been given to examiners for searching and examining PPH applications, and how these differ from instructions given for search and examination of regular applications. Members have found that some examiners of PPH applications raise objections based on the same art that was already cited and overcome in the Office of Earlier Examination.

    • S. Vasudev responded that CIPO Examiners are instructed to examine PPH applications in the same manner non-PPH applications are examined. As can be appreciated, not all national/regional laws, jurisprudence etcetera are equal. If an examiner feels that a piece of art is still applicable, the examiner is free to cite it. CIPO will remind examiners to detail how the art still applies in light of the amended claims. The assumption that PPH applications are blindly "rubberstamped" is exactly the impression that participating Offices do not want projected.

  13. Piecemeal examination

    Members indicated that they have been receiving series of examiner's requisitions in cases where the only objections were trivial and should have been addressed earlier and/or in a single requisition (or more preferably, been made the subject of an examiner-initiated telephone interview). It appeared to IPIC that i)either examination was not thorough at the outset or ii) there was room for improvement in quality control when amended pages were received or the application was approved for allowance.

    • S. Meunier noted that piecemeal examination occurs when there is a deliberate action to delay prosecution. Evidence has shown that this has not been the case and that it is still not the case. Examiners are asked to do a comprehensive examination at each stage of the prosecution (except in specific cases such as when a lack of unity defect is identified). With the time constraints and competing demands of the examination process, it is almost impossible to always identify all the defects in an application, even though examiners do their best so that does not happen too frequently or at all. Further, a final QC is performed by Operations at the final fee stage, to make sure the application has no more defects present (that could lead to a S8 correction). The QC data is constantly reviewed and corrective measures are always put in place to avoid or minimize those defects still being present at any later stages, which can lead to what IPIC identifies as piecemeal examination.

    • S. Vasudev added that the interview service encourages patent examiners to contact the authorized correspondent by phone in situations where advancing prosecution is likely. Such situations could occur when: there are a limited number (up to 3) of minor defects to correct; where the claims are so unclear that substantive examination and/or searching is not possible; where amendments are received that contain defects limiting the ability of the examiner to examine the application; and when the examiner considers that an interview would be beneficial (clarifying miscommunications, when the examiner has suggestions for overcoming a defect; to discuss prior cited art). Discussions relating to unity defects or anticipation/obviousness defects where new prior art is cited are not to be discussed in interviews.

  14. Examiner's discretion in initiating phone interviews

    IPIC requested that the Office provide the guidelines given to examiners concerning contacting applicants to request corrections of minor outstanding defects.

    • It is left to the examiner's discretion whether to initiate interviews; it should be noted that other factors beyond whether there are only a limited number of minor defects may be applicable to whether an interview is initiated. These factors could include operational constraints and examiner schedule constraints as well as whether the interview would serve to advance prosecution.

  15. Time for applicant's response to examiner-initiated phone interview

    IPIC noted that some examiners who are making use of the examiner interview program and initiating phone calls are not leaving sufficient time for the applicant's response before issuing a requisition, or are attempting to curtail the time in which the applicant can respond.

    • S. Vasudev responded that the time limit for submission of voluntary amendments is three weeks following the initial discussion of the defects. There also may be a time limit of 1 week for the agent to confer with their client about whether a voluntary amendment will be made; however this will not necessarily increase the time limit for the receipt of the voluntary amendments. Any particular issues relating to the prosecution of any specific application should be addressed through the feedback mechanism.

  16. National phase applications with restored priority claims

    The Office was asked to explain their process for handling national phase applications in which the right of priority was restored in the international phase. It has been noticed that the notice of national entry can include the restored priority claim, even though not recognized in Canada. This may result in the examiner conducting an incomplete search if they do not realize that the priority claim should not be given effect.

    • S. Vasudev responded that any such incorrect Notices of National Entry are due to human error. The Head of the PCT National Team has been made aware of these concerns and will be sending out a reminder notice to the team.

    • When entering the national phase, CIPO pulls data from the World Intellectual Property Organization's database. The data will include the restoration of a right of priority if such was done during the international phase. All information is auto-populated in CIPO's Line of Business (LOB) system. Among the PCT National Analysts' tasks, they are to look for documentation related to restoration and remove the priority information associated with those requests for restoration from LOB.

    • Notices of National Entry are generated by CIPO's Custom Correspondence system. As such, they are not stored in CIPO's LOB system, and are thus not available to the Examiner. However, the incorrect information will appear on given screens in CIPO's LOB, which is problematic. The sooner the Office receives feedback from agents the quicker the oversight can be corrected in LOB so that the correct dates are available to CIPO examiners.

  17. Identification of the origin of cited prior art in examiners' reports

    IPIC indicated that it is helpful when examiners indicate in a report that a cited reference was "cited by a foreign patent office". It is even more helpful if examiners identify the specific foreign office in which the references were cited. IPIC noted that some examiners do this, but the practice is not consistent.

    • S. Meunier thanked IPIC for their feedback. Due to the limited time examiners have to examine an application, there is currently no plan for introducing this practice. The ability to indicate that a prior art was cited by a foreign office is part of the standard language PERMs used by the examiners. It is used or modified to indicate the particular offices at the discretion of the examiners and subject to the competing demands on the examination process. The search record attached to the examiner's reports does indicate what file wrappers of what foreign offices were reviewed and would allow that particular information to be ascertained.

  18. Examiners' Bulletins and training material

    The Office was asked to make the Examiners' Bulletins and training materials available on the CIPO website.

    • A. Lajoie responded that the issue was raised with her colleague Darlene Carreau, who is responsible for the website. The Office strives to put equal/similar information on the website for each of the product lines, and is looking at ways to improve the website and provide access to all information.

    • J. Wilson suggested that CIPO look at the USPTO website as an example of a very detailed website that is frequently updated and provides examples and presentations that are given to examiners.

    • A. Lajoie noted that there are certain requirements that must be met (e.g all information must be bilingual and accessible), and that there is a line between MOPOP and training material; however the Office wants to provide as much information as possible in the spirit of open government.

  19. Enhanced CPD

    IPIC submitted comments collected from members in response to the example "Current Status" and possible search filter options provided by David Boudreau at the previous 2PC meeting. IPIC is thanked for their comments.

    • R. Snippe noted that the Office is looking at finding ways to provide accurate information as to the state of an application.

    • M. Paton noted that at the previous 2PC meeting, D. Boudreau had indicated that there will be a new release of the CPD in early 2018. R. Snippe responded that this new release is still pending and can be expected in the coming weeks. All of the features have been through testing.

  20. Procedure under subsections 31(3) and (4) of the Act

    The Office was asked to explain its procedure when a request is made under subsection 31(3) or (4) of the Act, and the party being removed (under subsection (3)) or that seeks to be added (under subsection (4)) is not represented by the authorized correspondent. Specifically, IPIC wanted to know what notice was provided to the party being removed, and what procedure was in place when a third party makes a request under subsection (4) to notify the current applicant that the request has been made to enable all parties concerned to make submissions to the Commissioner before a decision is actually made.

    • S. Vasudev responded that, as outlined in subsections 31(3) and (4) of the Act and Chapter 6 of MOPOP, applicants may be removed or added on satisfying the Commissioner and meeting the legislative requirements. It is unusual that these requests are submitted by a 3rd party and if so, they are treated on a case by case basis. The Office does not evaluate evidence regarding ownership of the patent application in the case of disagreement between inventors and/or applicants.

    • J. Wilson wondered why the Commissioner does not evaluate evidence in these types of situations, by exercising powers under the Inquiries Act. A. Lajoie responded that the Office could ask their colleagues at the Department of Justice Canada to provide rationale and advice on these legal questions. S. Vasudev added that the Office could follow up on this.

  21. Applications that are found allowable after having gone abandoned and been reinstated for non-payment of the final fee

    IPIC noted that, in current practice, when an application is found allowable after post-reinstatement examination, the examination analyst sends a letter advising the applicant that the examiner has reviewed the application and found it allowable. IPIC indicated that it would be useful if the analyst's letter contained the same information as the notice of allowance: specifically, the date of last amendment and the number of claims now allowed.

    • S. Vasudev responded that the Office would consider the suggestions for additional information to include in the analyst's letter.

5. Roundtable

  • S. Vasudev provided a PPH update

    • A new PPH request form is available on CIPO's main PPH web page. Clients should use the new form for requests under one of CIPO's bilateral PPH programs and the Global PPH.

    • On January 6, 2018 the Visegrad Patent Institute (VPI) joined the Global Patent Prosecution Highway (GPPH) pilot program and CIPO's PPH agreement with the EPO was extended for a period of three years.

    • The VPI is an intergovernmental organization for cooperation in the field of patents. It was established by the four Visegrad countries: the Czech Republic, Hungary, the Republic of Poland and the Slovak Republic.

    • With the EPO extension, the previous filing date limitation has been removed. That means a CIPO application no longer needs to have been filed or have entered the national phase at CIPO on or after January 5, 2015.

    • A new Patent Prosecution Highway (PPH) pilot arrangement, implemented by the Canadian Intellectual Property Office (CIPO) and the Taiwan Intellectual Property Office (TIPO), commenced on February 1, 2018, for a period of three years, ending on January 31, 2021.

  • R. Snippe thanked IPIC members for their participation in IT initiatives.

  • J. Leuschner wondered if the Office would consider permitting applicants to submit proposed amended claims by e-mail in the context of interviews with examiners.

    • S. Vasudev wondered if Applicants would be comfortable with such communications going on the record.

    • M. Paton noted that in the U.S. applicants can submit "Drafts for discussion purposes only" and these submissions do not go on the record. J. Leuschner noted that a document can be brought to the Patent Office for the purposes of discussion and this document does not go on the record. He opined that it is unfair that Applicants who are unable to go to the Office in-person do not have that privilege.

    • A. Lajoie indicated that there have been concerns that documents being sent directly to examiners (e.g. by fax or e-mail) would create misunderstandings or be lost. In addition, the Office is trying to have good Information Management practices. This is the reason for which the Office permits documents to be sent to examiners only by the formal route. However, the Office will not completely close the door on this possibility.

    • R. Snippe suggested an IM instant messaging or web-ex-type approach might work for these situations.

  • S. Vasudev requested that IPIC remind its members that when transferring files from one agent firm to another, i.e. revocation and appointment, it is good practice to involve the Office early in the process to ensure that the proper procedure is followed and that applicant rights are not compromised.

    • J. Wilson noted that it would be useful if the Office published guidance in this regard.

    • A. Lajoie responded that the Office will look into providing such guidance, whether it is through MOPOP or by another means.

6. Next meeting and closing remarks

  • Agnès announced her retirement to the committee and stated that the next meeting would be her last.

  • The next 2PC meeting has been scheduled for Tuesday, June 12th, 2018 at 1PM, at Place du Portage, Phase 1, room 24-G.

The meeting adjourned at 3:00 PM.