Archived — Practice Committee Meeting PB/IPIC - June 26, 2015

Friday, June 26, 2015, 1:30-3:30 PM

Attendees

Items

1. Introduction and review of the objective of the meeting

A. Lajoie welcomed attendees to the Joint Liaison Committee (JLC) meeting. D. Boudreau was introduced as the director of the Patent Services and Standards Division comprising the sectors of activities of Training, Quality, IT and Operations. It was also announced that Ms. Johanne Bélisle has been appointed as Chief Executive Officer and Commissioner of Patents and Registrar of Trademarks at CIPO, effective September 8, 2015.

M. Paton indicated that J. Pivnicki would be taking over as co-chair of the JLC.

The present meeting had been preceded by written exchanges on specific questions from IPIC members of the JLC and answers to the questions provided by the Patent Branch (PB). Those exchanges and the present meeting and its agenda were conducted in English. However, Ms. Lajoie indicated that any exchanges may be conducted in either official language and that the present minutes would be posted in both official languages on CIPO’s Website. D. Boudreau suggested that future written exchanges on questions and answers also be conducted in both official languages.

A. Lajoie noted that the renewed objective of the meeting of the JLC is to get together and discuss issues of common interest to CIPO Patent Branch, the profession and our common clients. M. Paton added that we all share the same goal of a productive, efficient and well-working IP system.

2. Update on the legislative projects

S. Vasudev provided an update on legislative projects.

In December, 2014, Bill C-43, which introduced amendments to the Patent Act relating to the Patent Law Treaty (PLT), received royal assent. The Office has begun to work on associated Regulations. Bill C-59, including provisions regarding privileged communications, also recently received royal assent. Bill C-59 also contains provisions for extensions of time in Force Majeure­-type situations and for the correction of “obvious” errors in documents submitted to CIPO. Questions and Answers relating to the amendments to the Patent Act relating to the PLT specifically have been posted on CIPO’s website.

The Office has commenced work on a large regulatory package which will include amendments to the Rules in view of Bills C-43 and C-59 and items from Rules package II relating to, among other items, excess pages fees for sequence listings and the reduction of the time for Request for Examination (RE) from 5 years from the filing date of a patent application to 3 years from that filing date. There will be a consultation on the package, which is hoped to take place in the first half of 2016, and to come into force in the latter half of 2016.

Work is also being done in parallel on those aspects of the amendments that require CIPO to follow the provisions of the User Fees Act (UFA), which is required whenever the scope of a fee is enlarged or there is a new fee. These changes will need to go through a different process and distinct consultation from the Canada Gazette process for the Rules.

M. Paton asked if there was a way that IPIC members can informally assist the Office in the preparation of the Regulations prior to a consultation. S. Vasudev responded that efforts would be made to find a channel through which the Office can hear IPIC’s views prior to publication in Gazette 1.

3. LEAN at the Patent Branch

J. Deschênes-Furry provided a presentation on the use of the LEAN methodology at CIPO’s Patent Branch. Prior to the meeting, IPIC members of the JLC had been provided with a document providing an overview of the LEAN concept, and at the meeting, members were provided with a copy of the presentation.

LEAN encompasses, on the one hand, common sense tools and methodologies to achieve flow, stability and balance within a process and, on the other hand, a change in mindset and culture to achieve those goals. In this regard, a 3-hour LEAN “awareness” training session has been developed at CIPO and provided to all employees.

Ms. Deschênes-Furry discussed two particular LEAN projects undertaken by the Patent Branch. The first project that was tackled was one relating to a “Continuous flow submission of examiner reports and allowances”. Examiners have been encouraged to submit Office Actions and approvals for allowance in a continuous manner. This has enabled a more consistent output of examiner reports and allowances week by week. With this project, tools were provided whereby whether or not examiner objectives are met is evaluated on a weekly, as opposed to a monthly, basis. Changing the way the evaluations were displayed facilitated a change in the mindset of employees.

A second LEAN project undertaken by the Patent Branch provided for a standardization of examiner report format and further sought to improve the process for mailing of examiner reports. This project has resulted in a 60% reduction in lead time for priority files.

Ms. Deschênes-Furry concluded that, in accordance with LEAN methodology, the Office needs to work with the agent community to improve the value we provide to our clients. In this context, a brief survey has been provided to attending IPIC members of the JLC for circulation amongst IPIC JLC membership for the purpose of guiding the identification of problems and identifying what is of value to the agent community as representatives of the clients. Responses and comments may be sent via e-mail to Leanfeedback@ic.gc.ca.

4. Update on Quality Management and what it means for our clients

J. Hurkmans, the Quality Program Manager in the Patent Branch, provided an overview and update on quality management. The Quality Management System (QMS) in the Branch uses the concept of “Deming’s wheel”, which is a constant cycle of planning, doing, checking and acting.

Projects underway in the Quality program include the following:

1) A Process Mapping initiative, which has introduced a standard method for documenting all examination and operations processes, the resulting step-by-step process maps being available for reference and use by all employees;

2) A Quality Control (QC) system, which provides for a random sampling of reports and allowances on national and international applications for a standardized review by supervisors. The system also provides for the additional review by supervisors of any non-sampled reports and allowances as required;

3) A Search Recoding initiative, which has established a standard method for documenting search activities by examiners. Also regarding searching, a pilot program will commence this summer involving collaborative searching wherein small groups of examiners work together and share best practices in searching live patent applications. These best practices will be utilised in the preparation of training materials;

4) A Quality Assurance (QA) initiative, which involves the development of an internal project to commence this fall wherein second opinions are given by examiners performing an in-depth analysis on a random sampling of applications that have been deemed to be allowable by other examiners;

5) Client Surveys, which will be direct and ongoing surveys of clients, the feedback of which will be in addition to the feedback obtained via the Online Feedback Mechanism (OFM); and

6) Positioning of the organization for ISO 9001/2015 readiness and compliance.

Following J. Hurkman’s presentation, M. Paton observed that in various documents from the Office, the terms “applicant” and “owner” may not be necessarily used consistently and appropriately. J. Hurkman indicated that the Office is in the process of reviewing all of the form letters it generates and that this observation will be considered in the review.

5. Continuous improvement is a shared responsibility

This item pertaining to continuous improvement as a shared responsibility is to be a regular topic for discussion at JLC meetings.

- Understanding the Patent Agents bring-forward (BF) system

The Office had asked that IPIC members at the JLC meeting provide an indication of the BF system that is generally used by patent agents in the organization of their work.

J. Wilson explained that a number of factors influence the timing of a response to an OA, the factors including the nature of the relationship with the client. Agents can request that clients give instructions within a certain deadline. However, that deadline may or may not be respected. J. Pivnicki, M. Paton and L.-P. Gravelle agreed that punctuality of responses can vary depending on the client. It was indicated that agents generally do not wish to submit responses on the last day. However, this is often out of the control of the agents.

- CDAS and S.34.1 of the Patent Act

A. Lajoie indicated that the Office would like to have a visibility campaign to encourage agents and innovators to use the improved CIPO Patent Database, the CIPO Document Access System (CDAS), which provides access to complete file histories. This would include using CDAS in the context of filing prior art under section 34.1 of the Patent Act, such as by third parties, so as to contribute to the quality of examination.

J. Wilson and J. Pivnicki commented that, in order to market CDAS to innovators and the general public, it would be helpful if CDAS made it easier to download the application as published and any patent as granted. J. Wilson added that it is still not possible to see if a case has been allowed. However, all IPIC members at the JLC meeting agreed that the agent community generally appreciates CDAS, and that it is a great tool and a good start.

- No original granted patent should be sent to the Office, unless requested

D. Boudreau discussed this point, in regards to clients sending in original granted patents to the Office where section 8 (of the Patent Act) corrections are being made. A LEAN project has identified that these original granted patents were not always getting in at the right place or getting back to the clients for multiple reasons. Employees have now been instructed to return these original granted patents, unless they have been requested by the Office.  In this regard, if there is a need for the Office to receive the original granted patent, the Office will inform the client. IPIC members at the JLC meeting were asked to share this information.

6. Comments on Items:

At this juncture, specific comments were presented on responses provided by the CIPO PB in the written exchange that preceded the JLC meeting.

- Lack of system-generated notices (e.g. Notice of abandonment, Filing Certificate, Notice of National Entry, Notice of Allowance) in CDAS

M. Paton noted that there are still some important documents, namely system-generated notices, missing from CDAS. D. Boudreau explained that the long-term plan is to make such documents available on CDAS, however this will not occur in the near-future due to technological limitations. These documents can be generated on request.

- “The ability to pay maintenance fees via general correspondence will no longer be available.”

The above-quoted comment was in a response from CIPO in the written exchange preceding the JLC meeting. D. Boudreau clarified that, in the future, likely in a few years, when the new e-filing system is in place, the ability to pay maintenance fees via general correspondence will no longer be available.

7. Next meeting and closing remarks

It was agreed that the new approach of holding JLC meetings with an elevated level of face-to-face discussions and interspersing these meetings with written exchanges of specific questions and answers was worthwhile and would continue. It was proposed that two such meetings would happen each year. The next meeting is proposed for Thursday, December 3, 2015 from 1:30PM-3:30PM.

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The present meeting was adjourned at 3:30PM.