Patent Practice Committee Meeting PB/IPIC - Tuesday, June 13th, 2017

1:00-3:10PM
50 Victoria Street, Gatineau, Québec, Phase I
24^th floor, Room G

Attendees

Co-chairs: Agnès Lajoie and John Pivnicki

Members: Ken Bousfield, Miriam Paton, Sue Rancourt (via teleconference), Jenna Wilson, David Boudreau, John Hurkmans and Scott Vasudev

Secretary: Sandra Hurley

Items

1. Introduction

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

2. Update on PB projects

a) Legislative Update

S. Vasudev provided an update of PB legislative projects.

• Patent Branch continues to make progress on the Patent Rules package associated with Bills C-43 and C-59. A 2-day meeting of a small group of experts and interested stakeholders is to take place at CIPO at the end of June in order to perform a line-by-line technical review of the draft Rules package. Following that meeting, a more formal public consultation on the draft Rules package will occur between August 1^st and September 8^th. At that time, details including the public consultation draft of the Rules and some individual consultation documents on specific topics will be available on the CIPO website. The estimated coming-into-force of the Rules package is early 2019.
• M. Paton wondered why there was such a long delay between the public consultation and the coming into force date. She also asked if the Office would consider extending the six week consultation period to account for holidays during that period.
• S. Vasudev responded that the Office will take the information from the technical review and the public consultation. The Office and justice drafters will then make any further necessary revisions, after which there is a process for the finalization of the Regulations by revisers and jurilinguists. Following that is the Gazetting process. The Office would look into the possibility of extending the public consultation period to account for holidays. However, there are steps in the process that the Office does not fully control because it works with partners from other departments. The Office is further in the process of implementing five treaties and three major changes to Rules packages and is sharing common resources with the Justice Department. All of these factors present challenges in delivering on the coming-into-force date of early 2019.

b) MOPOP Update

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

• The consultation on the medical kits section of Chapter 17 (Biotechnology and Medicinal Inventions) took place from April 24^th to May 15^th. The Office is in the process of reviewing three submissions, and IPIC is thanked for their valuable input.
• A public consultation on Chapter 12 (Subject Matter and Utility) is to take place from June 27^th to July 21^st. If the Supreme Court "AstraZeneca" decision is made before those dates then the consultation will be limited to the section on Subject Matter while the Office evaluates the decision to see if any revisions to the section on Utility are required in view of that decision.
• J. Wilson and K. Bousfield wondered if the consultation on Chapter 12 could be delayed or extended in view of the importance and controversiality of the topics of the chapter. S. Vasudev responded that there is a concern that, with the many other consultations occurring, the consultation on Chapter 12 would need to be pushed back until as late as December. The Office would like to publically put forward their position now, as it has been a long while since Chapter 12 has been updated. It is planned that in the future, small sections, rather than entire chapters, of MOPOP will be updated as needed to respond to changes. S. Vasudev clarified that Chapter 12 will not provide details on how the Office performs purposive construction, as this is covered in Chapter 13. Generally, MOPOP consultations take place over 5 weeks, however the Office would look into a possible extension in view of statutory holidays. The intention is to get good, constructive feedback.

c) Group B+ working group

S. Vasudev provided an update on the Group B+ working group.

• CIPO formed the Canadian Working Group on substantive patent law harmonization. The Group comprises representatives from IPIC, FICPI Canada, AIPPI Canada, Licensing Executives Society, CBA, The Chamber of Commerce and top three Canadian patent filers with In-House Counsel. The group met on March 23^rd, 2017 and examined the work to-date of the Group B+ subgroup on patent law harmonization with respect to topics such as the grace period, conflicting applications and prior user rights. This meeting also gave CIPO the opportunity to understand the views and needs of the stakeholders represented at the Working Group. A conference call meeting took place on May 2^nd, 2017 with the Intellectual Property Owners Association (IPO) under the U.S. The IPO presented ideas to the Working Group on how harmonization of patent laws could be achieved with respect to the three aforementioned topics.
• The EPO is hosting a symposium on June 20^th, 2017 in Munich to gather and discuss views from industry. Canadian industry will be represented by members of the Canadian Working Group, specifically from AIPPI, CBA, Pratt & Whitney Canada, and CIPO members Scott Vasudev and Craig MacMillan. There will be a meeting of the Group B+ subgroup following that symposium to discuss next steps, which include drafting a consultation document for wider circulation in various countries.

d) Patent Branch Improvement Plan

A. Lajoie discussed the Patent Branch 2017-2020 Performance Improvement Plan.

• One of the five priorities of CIPO's Business Strategy is delivering quality and timely IP rights.
• Patent Branch and its Quality Management System have been granted ISO9001:2015 certification.
• In terms of performance improvement over the next five years, the Branch will focus on three areas for action:
  • Optimizing the provision of timely and quality patent rights that are responsive to client expectations;
  • Implementing a modern Canadian Patent System to better serve innovation and creators, including implementing the PLT, maintaining and publishing the practice manual and continuing with conversion to a modern online practice manual; and
  • Strengthening the Branch's patent business intelligence and analytics capabilities, to ensure that priorities are properly addressed, that good statistical information is obtained and that the Branch's analytical capabilities in measuring performance are leveraged.
• The Branch is moving from monitoring its average pendency to monitoring the pendency it achieves "90% of the time". This is also the manner in which service standard commitments are presented.
• 3-year and 5-year target pendency times are included in the PB Performance Improvement Plan and continuous improvement in this regard is the Branch's vision.

3. PB Topics

a) MOPOP User Experience

S. Vasudev presented this item.

• The Branch would like to conduct a short survey of about 8 patent agents and 8 patent litigators regarding how they use the current MOPOP, to gather information that would be helpful in implementing an online MOPOP. IPIC members of the 2PC were asked if they had suggestions as to how the agents and litigators may be selected.
• J. Wilson suggested asking members of the Patent Legislation Committee of IPIC as well as subject matter (e.g. biotechnology, IT/computer)-specific committees. She also proposed that the survey questions should include a question asking participants to compare their experience with MOPOP to that with the U.S. MPEP.
• J. Pivnicki indicated that he would provide names.

b) Undelivered mail: New procedure

D. Boudreau presented this item pertaining to changes to the procedure for handling undelivered mail, as a follow-up to item 4b of the 2PC meeting of February 28, 2017.

• A notation is now being added to the system (TechSource) when correspondence is returned (i.e. does not reach the client). If it is the first time that the correspondence is returned, a validation step will be performed including verifying the address in the TechSource system and checking in the system if there are any address change requests. If the correspondence is a courtesy letter, the client will be telephoned to confirm or correct the address, and the correspondence will be re-sent by regular mail. If it is a non-courtesy letter, and the address on the correspondence matches that in the system, the correspondence will be re-sent by registered mail. If it is the second time that the same correspondence is returned, the correspondence and envelope will be scanned and added to the file, and thus can be viewed on CDAS.

c) Pilot project: Courtesy Letters

J. Hurkmans presented this item pertaining to a proposed PCT courtesy letter pilot.

• PCT applications often enter national phase without amendment following issuance of an IPRP with claims identified as non-compliant with Articles 33(2) and/or 33(3) of the PCT for lack of novelty and/or inventive step, respectively. In such cases, if the examiners agree with the IPRP, in the first Office Action they may use a paragraph to state that the relevant claims also lack novelty and/or inventive step under Canadian patent law as per the reasoning set forth in the IPRP. A successful initiative has been carried out in Australia in which courtesy letters are mailed to clients prior to issuance of a first Examination Report. These letters notify Applicants that the claims have not been amended, that there are citations in the IPRP under Article 33(2) and/or Article 33(3) of the PCT and that Applicants, having regard to those citations, may wish to submit amendments or arguments prior to the preparation of the first Examination Report. It has been proposed that the mechanical division at CIPO run a pilot project in the fall of 2017 which would send out these types of courtesy letters at 2 months after Request for Examination. It is hoped that sending these courtesy letters would reduce pendency and improve client service.
• Concerns were expressed by IPIC members of the 2PC that this initiative would encourage lower quality or less stringent examination. IPIC members further questioned whether examiners would actually consider the merit of the analysis in the IPRP in deciding whether these courtesy letters should be sent. It was suggested that the Office consider simply including in its letters acknowledging Requests for Examination an indication that the Applicant may wish to submit arguments or amendments to the application having regard to citations applied in the IPRP or other jurisdictions.
• IPIC members of the 2PC were thanked for their feedback.

4. IPIC Topics

A) Examination procedures

a) Few citations of references

This item was submitted J. Pivnicki and J. Wilson, concerning a Canadian Natural Resources company having experienced numerous Office Actions where little or no references are cited, this despite there being an abundance of prior art in these art units. A list of sample pertinent applications was submitted.

• A. Lajoie advised that clients should submit feedback about specific applications with this issue through the Online Feedback Mechanism, the client survey, or calling the section head or director. This will enable a determination as to whether the issue is a systemic one. J. Hurkmans added that examiners now attach a search record to all Office Actions for the client to review more precisely the details of all of the searches being done. J. Wilson noted that a search record may reveal a large number of hits, with no indication as to how the corresponding references were considered. She indicated that in the U.S., there will often be references of interest cited alerting the applicant that the references were considered but are not being applied in that Office Action. J. Hurkmans responded that examiners at CIPO are also empowered to cite references of interest in Office Actions. IPIC members of the 2PC suggested that examiners should indicate in their reports what the closest prior art is and that this closest prior art was considered.

b) Examination of non-statutory subject matter in the description

This item was submitted by Maya Medeiros concerning Office Actions where the examiner has stated that a search of the prior art has not been made because the description only describes non-statutory subject matter. IPIC members requested guidance as to the circumstances under which such a statement can be made by examiners.

• S. Vasudev responded that if an examiner determines that all of the claims in an application are directed to non-statutory subject matter, they will then evaluate the description to see if it contains any subject matter that could form the basis of a claim amendment resulting in claims that are directed to statutory subject matter. If any such subject matter is found, examiners are instructed to make that subject matter the basis of a prior art search in order to avoid piecemeal prosecution. The statement that a search of the prior art has not been made because the description only describes non-statutory subject matter is from a PERM macro paragraph used by examiners in such situations. The PERM language will be amended to more clearly set out the circumstances in which it is used.

c) References from foreign jurisdictions

This item submitted by David Nauman pertained to examiners increasingly making reference to prosecution in other jurisdictions, and not just the IPRP, without specifically referring to each reference cited by name or number (e.g. via an European Search Report). IPIC believes that importing rejections in this way may be inappropriate. Firstly, each reference should be specifically named, and importantly some references citable in one jurisdiction may not be citable in Canada.

• J. Hurkmans responded that CIPO examiners are not empowered to cite directly from EPO or USPTO search and examination reports. Examiners will use PCT results to expedite examination by citing them directly in reports, but this is not the case for any other jurisdictions. Specific feedback about applications with this issue can be directed into the Online Feedback Mechanism system, where it will be acted on promptly. Using the "Examination – Examination Process" category directs the feedback to the Quality Program Manager.

B) Amendment after Allowance (AAA) procedures and timeframes

This item was submitted by Cynthia Ledgley. IPIC asked that CIPO clarify the steps that are followed when an AAA is filed by an applicant. In particular, it was asked what CIPO's service standard is for processing of AAA's and whether procedures change where an AAA is considered to require "substantial" examination. Further, IPIC suggested that a narrowing of claims should be permitted with AAAs and that reasons for any refusal of AAAs should be given, in line with Section 19.08 of the MOPOP

• S. Vasudev explained that when an AAA is filed by an applicant, the examiner will first determine whether or not the proposed AAA is to correct a clerical error. If the AAA is not directed to a clerical error, and the fee required under Rule 32(a) has not been paid, the AAA will be refused. If the AAA is not directed to a clerical error, the required fee has been paid, and the examiner determines that the AAA would require a further search to be undertaken or would cause the application to not comply with the Act and Rules, the AAA will be refused. In this instance, examiners are instructed to provide reasons for the refusal of the AAA. If an explanation is not provided, applicants are encouraged to contact the examiner to request that the reasoning be provided. If the AAA is determined to not require a further search and complies with the Act and Rules, the AAA will be accepted. J. Hurkmans noted that the examiner's name and telephone number, as well as those of the Section Head who does the quality verification checks on examiners' work, are provided at the bottom of all Office Actions and letters.
• There is no official CIPO service standard for the processing of AAAs', however the Office strives to process them, examine them and mail out a response within approximately four weeks. Examiners are given 5 business days to examine AAA's, regardless of the complexity of the case.
• In accordance with Rule 32(b), AAA's that require a further search to be undertaken or that would cause the application to not comply with the Act and Rules are not permissible. It is possible that a narrowing of the claims could result in a further search being required or make the application not comply with the Act and Rules. Therefore, each case must be examined on its merits.
• The AAA provisions potentially will change with the changes to the Act and Rules resulting from the PLT coming into force. Under the new Rules, after a Notice of Allowance is sent but before payment of the final fee, applicants will be able to request that the Notice of Allowance be withdrawn and that the application be returned to examination for further prosecution. This will be the case even if the AAA requires a further search or causes the application to not comply with the Act and Rules. There will be a $400 fee in that situation. Also under the new Rules, in cases where it is obvious that something else was intended than what appears in the specification and drawings and that nothing else could have been intended other than the proposed amendment, applicants will be able to amend the specification and drawings after issuance of the Notice of Allowance but before payment of the final fee. No payment would be required in this circumstance.

C) Date at which applications are laid open for public inspection (LOPI)

J. Wilson submitted this item noting that CIPO currently calculates the LOPI date under s. 10(2) as exactly the earliest priority date/filing date + 18 months. As a result, one can find patent applications that were allegedly laid open on dies non, when no one can actually get into the Patent Office to inspect them, and she noted that this can have serious consequences. IPIC views that CIPO's calculation can have a negative impact on applicants' and patentees' rights and believes that this can be fixed by simply complying with 78(1) and delaying the LOPI date to the next date CIPO is open for business.

• S. Vasudev confirmed that patent applications are routinely laid open for public inspection on days where the office is closed, including weekends, statutory holidays and other unforeseen office closures. The public has access 24/7 to most information regarding the patent application through the Canadian Patents Database. This online database is updated daily, usually between midnight and 4 a.m.

D) Publication of CIPO decision on Decisia

J. Wilson submitted this item. IPIC asked whether the Decisia platform will be used to publish tribunal patent decisions as with trademark decisions. IPIC felt that this will decrease functionality.

• A. Lajoie responded that there is no plan to move to Decisia to publish Commissioner's Decisions.

E) Quality of Letters Patent/Patent Prosecution – Identical claims in one patent

1. David Nauman had submitted that a Canadian Patent had issued which contained two identical claim sets. While this error should not have any impact on the validity of the claims, IPIC must review and submit a correction letter at client cost. D. Nauman wanted to know the frequency at which this kind of situation arises.
   • D. Boudreau answered that this situation rarely happens. When a correspondence related to an amendment is received at the Office, the document is scanned in one folder and a task is created for the examination support team. An employee from that team then takes possession of the task and will copy the amended pages in the appropriate folder (abstract, claims, drawings, description). In this particular case, the claims were copied in both the description folder and the claims folder. When the application was printed to create the physical grant, because the set of claims appeared in two folders, they were printed twice. Unfortunately, this error was not caught at the quality control stage of the assembly of the Letters Patent.
2. D. Nauman wondered what CIPO's standard process is when receiving correspondence while a requisition is outstanding.
   • S. Vasudev responded that when correspondence is received while a requisition is outstanding, the correspondence will be reviewed to determine whether or not it is a response to a requisition. If the analyst entering the response is unclear as to whether or not the same is related to a requisition, they will contact the examiner for guidance. If the examiner determines that a response is not related to a requisition, the examiner is to mail a courtesy letter to the applicant letting them know that the requisition is still outstanding so that the applicant can take appropriate action if time permits, or that the application is abandoned if the time to respond to the examiner requisition has passed.
   • S. Vasudev explained that, in the particular case brought forward by D. Nauman, the letter submitted by the applicant in February, 2017 was not labelled as a prior art submission and the first sentence of the letter stated "Subsequent to the Office Action of September 13, 2016…". It was therefore unclear to the analyst that the submission was intended to be a submission of prior art. The examiner therefore wrote an undated letter to advise the applicant that the submission was not considered a response to the outstanding Office Action. At that time, the response to the Office Action submitted on the March, 2017 deadline had not yet been processed by the office and was therefore not visible to the examiner. In order to make it clear that letters such as the undated letter sent by the examiner in March, 2017 are not notices of abandonment, the Office will modify the text of the letters and the heading will be changed to clearly state that they are merely courtesy letters.

F) Improper 92bis Requests

Konrad Sechley and Shauna Paul brought forward this item requesting that CIPO clarify its position on the filing of PCT applications for Canadian applicants by U.S. attorneys who bypass CIPO using an "applicant of convenience" arrangement. This situation occurs when a U.S. patent attorney names themselves as a co-applicant in order to file a PCT application at the USPTO, rather than at CIPO. It was the understanding of IPIC, however, that PCT Rules permit a U.S. agent to file an application for a Canadian applicant via the International Bureau (IB).

• After some internet searching, CIPO understands that the concept of "applicant of convenience" has been widely shared among IP users. S. Vasudev noted that while there is nothing precluding the practice, it is, as IPIC points out, not a practice that adheres to the spirit of the Patent Cooperation Treaty or its Regulations. In addition, having regard to Article 3(3) of CIPO's agreement with WIPO, it would not seem that following the same practice when filing with the IB would adhere to the spirit of the Treaty or Regulations either.
• CIPO plans to ascertain if statistics can be obtained to determine the extent of the situation and decide what action, if any, would be appropriate.

G) Documents on CDAS

J. Wilson had submitted this item asking for clarification as to which of certain documents are intended to be included on CDAS.

• D. Boudreau responded that a "Notices of Insufficient Fees" are considered "Office Letter".
• Protests are published on the CPD, however prior art references are not to be published due to copyright issues. A technical issue arising at the end of February 2017 causing these prior art references to be published on the CPD has been corrected.
• All Notices of Abandonment are automated by the system and are therefore not published on the CPD. However, from time to time, there may be special circumstances under which a Notice of Abandonment must be manually re-created by the Office, and by nature of how the Office's back-office system is set up, such manually re-created notices are published on the CPD.

H) Application Status Inquiries

Jennifer Marles re-iterated a suggestion made by Jenna Wilson that CIPO consider providing agents with data concerning the status of each application for which the agent is the authorized correspondent.

• D. Boudreau responded that CIPO is working to replace its back-office systems with modernized tools. When this happens, all items permissible to be published by the Act and Rules will be published to the CPD.
• Based on a previous suggestion from IPIC, the Office has in-progress an IT update to include a case "Status" indicator on the CPD. This IT improvement is expected to be in place by the end of the fiscal year. The Office may bring to a 2PC meeting the proposed list of Status indicators with their descriptions for IPIC's information and feedback.

I) Notifications for Closure/Emergency Procedures

J. Wilson had brought forward this item relating to recent emergency closure of CIPO due to flooding. IPIC suggested that announcements and updates should specify the dates that the Office has been and will be closed, and the date the Office has reopened, to give the public more certainty. Further, IPIC suggested that website announcements should be archived on the web and past closure dates should be published in an easily retrievable manner.

• A. Lajoie responded to this item for which she consulted with Darlene Carreau from Business Services Branch. On Sunday, May 7, 2017, the Treasury Board of Canada Secretariat announced that all federal offices in Gatineau would be closed due to excessive flooding. Emergency protocols at CIPO were initiated and a building closure notice was published on CIPO's website on May 7. A recorded message informing callers of the closure was also issued by CIPO's Client Service Centre.
• On May 8, 2017, an updated statement from the Treasury Board of Canada Secretariat was released stating that all federal offices in Gatineau would remain closed. A mass e-mail from CIPO was sent that day stating that CIPO's offices would be closed until further notice. The building closure notice on CIPO's website was also updated with a similar message.
• Per the Office's standard procedure, the outage notice was removed from the website on Wednesday, May 10, 2017, before office hours. A second mass e-mail was sent to CIPO's clients to inform them that CIPO's offices were now open.
• With regards to archival of service interruption messages, CIPO currently follows the same standard used for most government websites.
• The feedback IPIC has given with respect to CIPO's announcement procedures is appreciated. Given this feedback, CIPO is investigating options for archiving service interruptions.

J) Date of receipt of correspondence during emergency closure / Minister's order

IPIC asked for clarification of filing or receipt date accorded to submissions received electronically or at a regional office on days the Patent Office is closed due to an emergency.

• S. Vasudev responded that CIPO takes the position that subsection 78(2) of the Patent Act is not exhaustive for the purposes of determining when the Patent Office is closed for business and that subsection 78(1) applies whenever the Patent Office is in fact closed for business, regardless of whether there is an order by the Minister. CIPO also takes the position that although under sections 5 and 54 of the Patent Rules receipt days are dependent upon when the Patent Office is open for business, nothing in the Patent Act or Rules prevents applications from being open to public inspection on a day when the Office is closed for business. Any ongoing concerns that IPIC may have about the interpretation of section 78 of the Act will hopefully be resolved when the Bill C-59 amendments to that section come into force.
• M. Paton wondered if there could be an exception where an application is filed electronically, where the receipt date is positively known. S. Vasudev answered that this is a discussion that the Office will need to have moving forward. He noted that a post mortem will need to occur to review the process and legal impacts of these types of situations.

L) Delay between receiving the filing receipt and availability on CDAS

Dominique Lambert submitted this item asking that CIPO comment on the target timelines from Notice of National Entry to entry into CDAS.

• D. Boudreau responded that all applications which are entered into the back-office system are automatically published to the CPD overnight (next business day). The only exception is for applications that are not yet laid open to public inspection. Therefore, it appears that IPIC has brought to the Office's attention an operational problem and this would need to be investigated further. If case numbers could be provided, the Office would be happy to launch investigations and provide follow-up. It is noted that issuing of an acknowledgement letter of national entry date is done within 15 business days upon receipt of an application that meets the entry requirements.

M) Fees due when a third party requests examination of a patent application

J. Wilson had submitted this item noting that subsection 35(1) of the Patent Act permits any person to request examination of a patent application. However, paragraph 73(1)(d) deems that an application is abandoned if the applicant does not request examination or pay the examination fee by the deadline. Thus, it appears to IPIC that the Commissioner will receive duplicate fees if an applicant complies with the Act in order to avoid abandonment, even when a third party has already requested examination.

• S. Vasudev responded that requests for examination from third parties are very rare but, if and when such requests occur, CIPO considers that it is the responsibility of the applicants and their agents to determine whether duplicate fees are required under paragraph 73(1)(d) of the Patent Act. Any ongoing concerns that IPIC may have about the interpretation of paragraph 73(1)(d) will hopefully be resolved when the Bill C-43 amendments to section 73 come into force.

5. Roundtable

• D. Boudreau advised that there has been a change to the location of where pages are stamped with CA application numbers and dates. In the past, it was located at the top in the centre, and as of June 7^th, 2017 and for technical reasons, it is located in the bottom left corner.
• J. Hurkmans announced that the Office is recruiting examiners in the Mechanical and Electrical Engineering divisions. The plan is to hire 65 examiners over the next three years.

6. Next meeting and closing remarks

• The next 2PC meeting has been scheduled for Tuesday, October 17th, 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 September 26^th, 2017.

The meeting adjourned at 3:10 PM.