Patent Practice Committee Meeting PB/IPIC - Tuesday, November 8, 2022

Tuesday, November 8, 2022 - 1:30 – 3:30 p.m.

By videoconference

Attendees

Co-chairs: Virginie Ethier and Jenna Wilson

Members: Jeremy McLean (standing in for Scott Vasudev), Jeffrey Orser, Serge Meunier, Dominique Lambert, David Nauman, Gabrielle Moisan

Secretariat: Marie-Claude Gagnon, Helena Forbes

Items

1. Introduction

V. Ethier welcomed attendees to the meeting of the Patent Practice Committee (2PC). She thanked the IPIC members for their engagement at the IPIC conference and confirmed that Konstantinos Georgaras was now officially appointed as the Commissioner of Patents. She introduced the agenda of the meeting.

2. Digital Services

Before proceeding with the questions from IPIC, J. Orser provided a brief update on the IT modernization (ITM) project. He indicated that the Office was hard at work modernizing both the back-end system and the client tools, aiming for a first release in 2023 for the Next Generation Patent (NGP) product. The content of that first release is still being defined. The project is developed using an iterative approach, with planned continuous improvements based on feedback and a prioritized backlog, similar to the evolution of the National Entry Request (NER) online solution. Once the content of the first release of NGP is established, the Office will follow up with additional information, change management activities and training, and will engage IPIC in these activities.

J. Wilson asked if the extra revenue coming this year from the new request for examination fees and the wave of request for the examinations filed before the coming into force of the Patent Rules changes would be used for ITM or for other purposes, such as hiring and training.

V. Ethier responded that the new fees compensate in part for the fact that the patent fees were not increased for 17-18 years. This is not related to ITM, which is being performed now because it is required. Modernization of trademarks will come next, leveraging what is being built for patents, and the Office will continuously modernize in the future to avoid the current problems caused by an aging system.

S. Meunier added that the request for examination fees are only reconciled when the case is disposed of; from an accrual accounting perspective, the revenue is only recognized when the service is delivered. J. Orser added that the ITM investment profile was established before the fee increase and the current first release definition is based on this.

2.1 Downloading patent packages – eGrant

IPIC indicated that downloading the granted patent documents every Tuesday is unacceptably slow: it takes 20-30 seconds for the download to start, and sometimes it times out. They asked if the delay was caused by the server generating the PDF on the fly by combining separate files, and asked, if this was the case, if it would be possible to generate the packages in advance of emailing the link. They suggested the packages could be cached for a short period of time (e.g., for a week).

J. Orser responded that any reduction in download speed is primarily based on the number of concurrent users connected at any one time; the eGrant itself is already generated when downloaded, and the patent specification is built on demand. He added that with the implementation of NGP, the Office expects the response time of the system to improve as the future system and infrastructure will be built to handle a digital based business, with greater concurrent user capacity.

J. Wilson asked for confirmation that this issue would not be fixed before NGP. J. Orser responded that it could not with the current system. V. Ethier added that the current system is already stretched, which is why there was an urgent need for building of NGP.

2.2 Problems with Friday afternoon submissions

IPIC indicates that agents have raised the complaints of clients on the west coast before; they have encountered difficulties using online tools such as General Correspondence after close of business in the Eastern time zone. The problem has also arisen with the NER online solution, generating the following error for example: "Error: attempt to connect to payment system was unsuccessful, please try submitting the application again. If the error persists, contact Client Service Center (CSC) with the above error message for further assistance". IPIC asked if the payment system was taken down for maintenance on Friday afternoons.

J. Orser responded that the planned scheduled interruptions are from Sunday from 2AM-6AM (ET) for online form maintenance and again from 10AM-6PM (ET) for e-commerce maintenance activities. Additionally, the maintenance fee application is not accessible outside the hours of 6:30AM-10PM Monday to Friday. He added that the reported difficulties using online tools after close of business in the Eastern time zone is not believed to be systemic, as payments have been received outside the eastern time zone operational hours.

He asked for more information on the exact time the problem occurred and the CIPO username of the impacted users so as to be able to verify logs or determine if there was a wider system outage. He indicated that if a few examples were available right now, they could be sent directly to him. Otherwise, the impacted users should report the problem via the Online Feedback Mechanism (OFM) when it occurs.

G. Moisan indicated that the problem occurred around Thanksgiving weekend. J. Orser responded that he would check for that time period and get back.

2.3 Uploading translations via NER online solution

IPIC noted that some agents prefer to upload translated parts in a single PDF document because it fits better with their office workflow and reduces errors on their part, but the options available for uploading files specify that the description, claims and drawings must be uploaded individually. They asked if it would be acceptable to submit a single PDF in the NER online solution, and if there will be a solution down the road to upload a single document for the translated application, with a check to make sure that the document has been uploaded.

J. Orser responded that as long as the NER online solution is connected to the legacy back-end systems, documents must continue to be uploaded individually. He added that there is a possibility that NGP may accept documents uploaded in a single PDF, and that this suggestion will be added to the backlog of enhancements to be prioritized and considered in future releases.

2.4 Specifying paper correspondence via NER online solution

IPIC asked if an acknowledgement of national phase entry letter is sent by regular mail when a user selects paper correspondence as the future method of correspondence in the NER online solution.

J. Orser responded that the acknowledgement of national phase entry letter is created upon submission and immediately available to the client within the NER online solution and that a second acknowledgement of national phase entry letter is not sent regardless of the method of correspondence chosen. He indicated that this procedure might be different in NGP.

2.5 Changes to applicant names after submission via NER online solution

IPIC reported that an agent filed a number of national entries using the NER online solution for an applicant whose name begins with an upper-case letter "I" followed by a numeral. Each time, the name of the applicant was correct at WIPO and on the letter acknowledging national phase entry. However, upon entry in TechSource, the uppercase "I" was changed to the numeral "1". To the Office's credit, the correction was made quickly after online feedback was submitted.

J. Orser indicated that a fix for this issue is being investigated and will be implemented once a solution is found; until then, a manual workaround was developed so that the analysts can correct the cases. He suggested that OFM be used for cases that require correction.

J. Wilson asked for more details on the error. J. Orser responded that the NER online solution uses an existing PERC (unique ID number associated to a party) if one exists when identifying a party, and that when no PERC with a similar name exists, a new PERC is created. If there is a similar name (think Acme Inc. instead of Acme Incorporated) an analyst creates an alias name for that PERC in TechSource then goes back the NER online solution to select it. There is currently an error in the reconciliation between TechSource and the NER online solution when there are such aliases. A system correction is required but there is no timeline at the moment for the fix to be implemented.

J. Wilson remembered discussions about the Office doing a cleanup of the PERCs and asked if the cleanup was done. J. Orser responded that the PERC data would either be cleaned up before NGP or would not be migrated to NGP.

J. Wilson indicated that the agent community could help in the clean up of the PERC data if required. J. Orser responded that there is room for the community to help in the data cleanup or validation of data integrity before transitioning to NGP, but that the format of this help was not yet established.

G. Moisan noted that a similar issue happened with other cases where the discrepancy on the applicant's name was absence vs. presence of a hyphen (-) and emphasized the need to ensure that once a file is corrected, the same error is not repeated in following files. M-C. Gagnon responded that a required system fix has been identified, however there is no timeline for implementation of that fix at the moment; until the fix can be implemented, the analysts are making manual corrections.

2.6 Changes to status in CPD

IPIC indicated that cases that should be dead for non-payment of fees or other reasons still have an active status such as "compliant" and asked how quickly the statuses get updated.

J. Orser responded that normally, statuses are updated on the Canadian Patent Database (CPD) within 24 hours after the status changes in Techsource or after a data correction is completed. However, in many cases, the status in TechSource is updated only several weeks past a payment/other due date, due to the internal grace period for possible payments or client responses to be received in the office and not yet processed.

J. Wilson asked if it would be possible to get the list of these grace periods to help interpret the status discrepancy in CPD. She indicated that this would be useful, for example, for an applicant or patentee to figure out the earliest date they could know the application was dead because of an error. It would also allow agents to better answer questions from their clients when they come across an apparently incorrect status on CPD.

3. Operations

3.1 Registration vs. changes of name and transfers – online status

IPIC reported that changes of name and transfer recordals appear to all be listed on the Administrative Status tab of the CPD as "Registration of a document – section 124".

J. Orser responded that in the Patent database, there is only one fee type that can be selected when the fee of 100$ is applied, no matter which type of document is provided by the client. Since that type of fee is linked to the "Registration of a document – section 124" on the CPD, this is the reason why they are all listed that way.

J. Wilson asked if this could be changed or clarified. J. Orser responded that this issue is considered in the design of NGP.

3.2 Registration vs. changes of name and transfers – non-compliant requests

IPIC reported that some users have experienced delays in trying to register or record documents because the Office has asked for clarification:

• in cases where the submitter clearly identified the desired rule (124, 125, 126) but used the wrong verb (e.g., a request to "record" a document expressly under section 124, selecting the section 124 fee)
• in cases where the submitted clearly identified the desired service and fee, but itemized the evidence or didn't use the magic word (e.g., "We hereby request that the Canadian Patent Office record assignment of the within patent filing to XXX, pursuant to the enclosed name change amendments and Articles of Amalgamation" accompanied by a single fee under section 126)

They indicated that there are also incidents when a requester attempts to have a transfer or change of name recorded and provides evidence but gets a registration in reply. They asked if it was really necessary to be absolutely precise in language when requesting one of these services. If the analyst considers the language ambiguous, can they not disambiguate some cases by referring to the fee selected by the requester?

J. Orser responded that the Office addressed being clear in these service requests in a practice notice that was published online in 2021 and available at https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/patents/patent-notices/practice-notice-detailing-requirements-recording-transfers-and-name-changes-and-registration-related. He added that in order for the analysts to process transfer and change of name requests, it is best to be as clear as possible in the requests. The analysts process hundreds of requests and providing too much verbiage may result in the analyst seeking clarification from the client, thereby delaying the process.

He clarified that it is not necessary to use precise language. For instance, requests that use the term "assignment" vs the more accurate term "transfer" or "record" vs "register" should not result a delay in processing and analysts should not be seeking clarification. He indicated that the Office will address this with the Operations team.

Speaking directly to the example provided. This is an example where the use of too many technical terms may have hindered the processing of the request. An analyst may have read that this was a request to record an assignment as well as a request to record a name change. It's speculation, but this may have caused the analyst to seek clarification regardless of whether the client identified the section of the Rules.

J. Wilson asked if including an explicit reference to the applicable section of the Patent Rules would help. J. Orser answered that it would.

3.3 Non-compliant statements referring to "legal representative"

IPIC reported that statements under section 54 of the Patent Rules have been rejected as non-complaint because they referred to the applicant being the "legal representative" instead of simply being entitled to apply for a patent. However, subsection 54(2) of the Patent Rules simply requires the application contain a statement to the effect that the applicant is entitled.

J. Orser responded that if the statement is clear in that the applicant is the legal representative of the inventor, then those statements are compliant and should not be rejected. He added that this issue would be addressed with the analysts.

3.4 Remissions and "circumstances beyond CIPO's control"

IPIC reported that some remissions are not being made for final fees when the patent issues on the first Tuesday following the end of the service standard. However, the service standard does not make an exception for this, and the decision to issue patents only on Tuesdays is within the Office's control. IPIC also asked what are "circumstances beyond CIPO's control" that impact the Office's ability to meet the service standard and result in no remission.

J. Orser responded that CIPO's Program Annex that is part of ISED's Remission Policy outlines under Section 4.1 considerations in determining whether a service standard has not been met and whether a remission is warranted. Factors that are taken into considerations are:

• The proportion by which the standard is not met
• Any circumstances beyond CIPO's control that may impact its ability to meet the standard
• Any role that the party who requested the service may have played in the standard not being met

He added that CIPO's Program Annex does not expand on what constitutes "circumstances beyond CIPO's control", but that the Program Annex of other Regulators under the ISED umbrella, i.e., Competition Bureau (CB), Measurement Canada (MC), Office of the Superintendent of Bankruptcy (OSB), Corporations Canada (CC), include explicit mention of unforeseeable event examples that would constitute such "circumstances", for example: an emergency situation, power failure, IT system outage, work stoppage.

For the specific example provided, he clarified that the service standard for payment of the Final fee is 12 weeks and indeed, the time period is from the request to the grant that is issued on a Tuesday – the delay caused by the grant happening only on a Tuesday is not part of the exceptions and counts as being part of the time period. However, there have been a number of "circumstances beyond CIPO's control" this past spring and summer, including:

• 1 day – Rogers National Network Outage – July 8
• 5 days – May 23 to May 30 – NCR and surrounding area Storm
• Virtual Machine IT failure – affecting all Incoming Correspondence Unit (ICU) employees

He added that a detailed log is kept and tracked and is considered when a service standard was missed to determine if a remission is warranted.

J. Wilson asked if there was a plan to move away from grant happening only on a particular day, noting that more frequent grants could alleviate the issues of concurrent users discussed earlier. J. Orser responded that this was not part of the current plans. J. McLean added that while it would be technically possible in NGP to grant more often, so far this has not been part of the discussions. V. Ethier indicated that this is an issue that should be looked at.

D. Nauman asked whether if, within a service standard period of 12 weeks, something happening on week 6 would affect that period, or if the consideration is only for events that happen at the end of the period, i.e., affect its outcome directly. J. Orser responded that any circumstances beyond CIPO's control and consistent within the intent of the Program Annex happening during the time period to deliver the service are deducted from the actual time it took to deliver that service; this consideration is based on the spirit on the program annex.

J. Orser reminded IPIC that in most cases the clients are not responding to the letter providing a 30-day period to refuse a remission, and that a response could speed up the process.

J. Wilson asked if it would be helpful for the client to answer when they want the remission, as opposed to just letting the time period lapse to automatically receive it. J. Orser responded that it would be, in that it would start the remission process earlier; but that given the current backlog issues at the ICU, at the moment, it would be preferable to not make that shift.

3.5 Failures at ICU?

IPIC indicated that normally, Information Officers tell inquirers checking for confirmation of receipt of their submissions (by finding their submissions on file in CDAS) to wait three weeks before making an inquiry. However, ICU is apparently not meeting this informal target. As of October 18, the ICU was reportedly processing documents submitted on September 16.

They indicated that these delays are causing problems downstream:

• abandonment letters (failure to respond to a report) being sent even though a response was timely filed
• abandonment letters being sent (failure to appoint an agent) being sent even though an appointment of agent was timely filed
• post-interview voluntary amendments take so long to be processed, examiners have to take special steps to accelerate their processing
• examiners do not have enough time to consider amendments after allowance and provide feedback to applicants when the amendment is not acceptable (e.g., an examiner only informed an agent the day before the final fee due date that an amendment after allowance filed in August was not acceptable; on top of that, the section head advised the agent that an RCE had to be filed the day before the final fee due date, even though the final fee was not paid and would not have been paid if an RCE was intended)

They added that it would be useful if the status of the ICU was updated weekly on the CIPO website so that inquirers would know how long to wait before calling CSC or filing OFM.

J. Orser responded that in the month of September, ICU received approximately 12,500 patent documents more than are currently received in a normal month. Though the team is still processing correspondence from the last days of September, this number appears to be mostly requests for examination (in light of the recent changes to the Patent Rules).

ICU's plan to increase capacity and return to normal processing times as soon as possible include, for example, hiring retired resources back; get the management and administrative team to support ICU with whatever they need – which can mean data entry, etc.; shifting data corrections from ICU to the operations team for the next few months; getting help from other lines of business; etc.

J. Wilson remarked that even before September the ICU processing time was problematic and was taking longer than 3 weeks. She asked what was the "normal processing time" that the plan was aiming to return to. J. Orser responded that the goal was to return to the original normal processing time, namely 5-10 days.

D. Lambert reminded that there have been previous discussions about a dashboard showing the current backlog or delay for each type of action, and that such a dashboard would be very helpful and reduce the volume of calls to the CSC. She asked if this dashboard was part of ITM. V. Ethier responded that one of the requirements in ITM is to have real time reporting.

V. Ethier also added that there are current issues in staffing and that increasing staff is one of the Office's priorities.

J. Orser added that the Office will look into how the status of ICU can be proactively shared, so as to reduce the volume of calls to the CSC to provide to that information upon request.

D. Nauman asked if the service standards for receiving a first examiner report would change, in light of the wave of requests for examination that happened last month.

J. Orser answered that the effects of the double cohort of requests for examination stemming from the changes in the Patent Rules associated with the Patent Law Treaty (PLT) (when the delay for request for examination was changed from 5 to 4 years after filing, causing two years of filings to have requests for examination due the same year) were already expected to be felt in 2022-2023 as well as 2023-2024 with the equivalent of roughly a year more of requests for examination filed during this time. Based on numbers currently available, it would appear that a very significant percentage of these requests for examination were filed in the final weeks before the coming into-force of the October 3, 2022 changes of the Patent Rules.

He added that additional capacity was added to the operation teams, and that the Patent Branch management is supporting a blitz in the completion of associated tasks and working very closely with ICU. This surge, albeit not the entirety of the final volume, was expected and Patent Branch is in the process of staffing examination positions across all disciplines. A poster for new examiners in the mechanical division recently closed and a poster for new examiners in chemistry is currently open; overtime hours in both examination and operations are being leveraged to their full extent to maximize capacity; the Office is looking at bringing back retired examiners; the Office is also distributing tasks to other employees.

D. Nauman asked if the delay for the first examination report should therefore be expected to remain the same in light of these measures. J. Orser responded that the service standard remains 20 months, with the performance target being 14 months. He added that a slip in the 14month target can be expected, but the delay should remain relatively similar. He however indicated that more information on this should be available at the next 2PC meeting, when the Office will be able to determine if hiring numbers met expectations.

V. Ethier added that there is a large amount of people working overtime: directors and management teams working overtime to help in operations, and people who are filling the gap for other people working on ITM. She asked IPIC to please share the Office's recruitment posters.

3.6 Performance target or service standard for acknowledgement of request for examination

IPIC indicated that it would be helpful if there was either a performance target or service standard, (with or without remission) for the sending of the courtesy acknowledgment of the request for examination, particularly since computing the examination fee is more challenging since the October change in the Patent Rules.

J. Orser responded that there was already a wide range of fees subject to a service standard and that as such it would not be desirable to add another. He added that there is an existing service standard for the request for examination.

J. Wilson asked if a performance target would be appropriate. J. Orser responded that the current need seemed to stem from the lack of capacity to verify that submissions were properly received, and that the client portal provided in NGP may reduce that need.

3.7 Other delays

IPIC asked about the cause of delays in other tasks, such as generating cover sheets of published applications. They indicated that it seems to be more frequent that when a National phase entry is made available online, the CIPO cover page is not available and is only published later.

G. Moisan added that the publication of the applications on CPD is generally longer for applications filed via the NER online solution than via other channels. J. Orser responded that prioritization of tasks having an associated service standard may be affecting delays in other tasks.

3.8 Unhelpful information officers

IPIC asked for details on the correct procedure for a CSC Information Officer to follow when they cannot answer a phone inquiry themselves. They indicated that some try to transfer the caller to the appropriate department, which is not helpful when the caller has to leave a voicemail and the department does not reply to the voicemail, prompting another call to the CSC. Some users have complained that certain officers are too quick to send the caller to someone else's voicemail. Others take notes and send an email with the query to the appropriate department, and presumably either the Information Officer or someone in the department calls back with the answer.

IPIC has also received multiple reports of an Information Officer refusing to speak to an agent's assistant concerning a national phase entry (specifically, a delay in receiving the acknowledgement letter) because they were not the agent. They asked that the Office ensures that the Information Officers understand that they can speak to a non-agent employee of a firm when an agent (or all the agents) of that firm were appointed.

Given the difficulty in obtaining clarification from CSC, and the fact that some Information Officers would just as soon transfer callers away, IPIC suggested providing specific contact information for different matters – e.g., a specific contact for PCT national, PCT international, maintenance, etc.

J. Orser responded that the CSC in collaboration with the various product lines has established and continues to refine its escalation procedures to ensure that the caller obtains the correct and factual information sought. This includes closing of the loop procedures when the CSC performs a hand-off to the product line for responding. He indicated that based on a review of recent calls, the volume of Patent calls had significantly increased in past weeks as have the number of calls requiring a hand-off to the Patent Branch for answering. The primary reasons for these calls are:

• seeking administrative status
• inquiring on the delays in receiving correspondences particularly where processing delays are greater than the published expectations

He asked whether the issue with relaying information to non-agent employees of a firm is specifically for non-laid open files, or more generally for all files. J. Wilson responded that whether the file is open or not should not be a factor.

J. Orser indicated that the Information Officers are instructed that, in the absence of a delegation of authority functionality in e-services, an authorization from the agent is required for information on a non-laid open file to be provided to non-agent employees of the firm.

J. Wilson asked how this concept could be applied to a phone call, as submitting such an authorization, for example via general correspondence, would not allow for a quick processing and same day access to the file; moreover, submitting such documentation by default on all files would be impractical.

G. Moisan pointed out that the Information Officer asks questions from the caller (details in the application) to ensure that they know the application and to validate that the clerk is from the firm of the appointed agents. J. Orser responded that he would check the CSC procedure, follow up as required and get back.

J. Wilson suggested that maybe including reference numbers on the various forms could facilitate redirection of questions. That is, if the user can point to the particular form the question is about, then the caller could have direct access to an expert who can respond to their questions.

3.9 Improving Online Feedback Mechanism (OFM) response quality

IPIC indicated that it may be helpful if the OFM form provided more granular options for characterizing online feedback, as the current selection of "Application Process" covers a lot of ground. They asked if allowing agents submitting feedback to choose a type of service with more granularity – e.g., "compliance notices", "incoming correspondence processing" would increase the chance that a query would be directed to the right person who would understand the feedback.

J. Orser responded that the feedback is already routed to the correct area internally after being reviewed by someone, and that adding more categories would likely not be helpful. He added that the OFM analysis already reveals that incorrect categories are often chosen; however, the issue is still correctly routed during triage.

J. Wilson remarked that maybe this is an issue about the quality of the responses then, as they are often not satisfactory. G. Moisan added that sometimes an acknowledgement receipt is received without enough information to know which OFM report is connected to the receipt (e.g., no application number included).

D. Nauman asked if the officer triaging the OFM requests is also keeping track of the metrics. J. Orser responded that the Office is tracking metrics from the OFM to produce a quarterly summary of how many requests were received and the topic of these requests, in order to identify the areas requiring improvement.

3.10 Zombie Commissioner's notices for maintenance fees not paid

IPIC reported incidents of maintenance fee notices being mailed long after the application/patent is irrevocably abandoned or expired. They appreciate that notices will still be sent during the reinstatement period and for a short while afterward but asked for how long after the reinstatement period this can be expected to end. They provided some examples where the application had been dead for 6 months before the next anniversary, yet late fee notices were being sent for that anniversary (e.g., anniversary date in August; last MF paid August 2020; late fee notice sent for non-payment of MF due August 2022).

J. Orser responded that this issue may be related to the delay in processing reinstatement requests and reversal of deemed expiry requests with a due care component. He indicated that in order to process these cases correctly, the Office manipulates the file into a state of good standing, process the due care request and then brings the file back to its actual state of abandonment or deemed expired, and this manipulation may be causing notices to be sent during the period the file is active.

J. Wilson responded that if this was the case, it would not be an issue because when there is a pending request for reinstatement, the applicant would need to continue paying due fees in case the reinstatement is accepted, such that the application could be in good standing after the reinstatement. She however added that this issue seems to be more generic.

J. Orser asked for additional information or examples so that the Office can look into this issue in more details.

J. Wilson asked, in the case when a due care request for reinstatement is refused, which of the payments done after the reinstatement request are refundable. In particular, she inquired about maintenance fees, the request for examination fee and the associated late fees that are due and paid during the period the applicant is waiting on the response to their due care reinstatement request. J. McLean responded that he would check and get back.

4. Examination

4.1 Confirming entry of amendments filed less than one month before Examiner's Report

If a voluntary amendment is filed less than one month before an examiner's report is mailed, the report will not be withdrawn on the basis that it was drawn up on the claims pre-amendment. IPIC asked if such a voluntary amendment is considered entered on the file, or if the applicant must re-file the amendment as part of the response to the report.

J. McLean responded that in these situations, the amendment is considered to be entered on file, and that there is no reason to re-file the amendments in the response to the examiner's report.

J. Wilson asked if a response stating that the report is not relevant because the objections are overcome by the previously filed amendment would be sufficient to be considered a good faith response. J. McLean responded that it would be if indeed the previous amendment addresses all the objections of the report.

J. Wilson asked for a clarification on Chapter 11.05.01 of the Manual of Patent Office Practice (MOPOP) that says that an amendment filed before a request for examination "will not be entered or examined until a request for examination has been received" – she asked for clarification with respect to the statement that the amendment would not be "entered".

J. McLean clarified that what was meant is that the working copy of the application is not updated until the request for examination is received. The intent was to make it clear that the changes would not be reflected on the CPD until the request for examination is received and processed. He indicated that the MOPOP section would be reviewed to see if it can be clarified and indicated that there might be inconsistencies in the use of the terminology "tab" that may be causing confusion.

J. Wilson asked if it would be possible to obtain details on the procedure on the entry of a voluntary amendment (not an international amendment under Article 19 or 34) that is filed together with a national phase entry without a request for examination.

J. Wilson also pointed out that the CPD tabs, for example the abstract tab, do not seem to be updated when the application is open to public inspection (e.g., if amended at national entry) but only at grant. J. McLean responded that the documents themselves are updated more regularly than the text tabs in CPD.

G. Moisan reported that sometimes the names of the documents on CPD do not reflect their content. J. Wilson added for example that she saw the label "due care not met" used both for the Office letter going to the client, and for the client's response. J. Orser indicated that he will look into this and get back.

S. Meunier clarified that the examiners do not use CPD and, as such, the labelling and content there do not affect the examination process. While everything on CPD is available internally to the examiners, they have more content available in their internal tools.

G. Moisan asked if they could trust that content on CPD is available to the examiners. S. Meunier said they could, as everything in CPD comes from TechSource.

4.2 Inconsistent use of Examination Search Report (ESR)

IPIC noted that the ESRs provided with the examiner's reports vary in form (i.e., the Boxes). In two examples of "Version 9" of the ESR, one had Boxes I, II and IV, while another had Boxes I, II and III; they added that most iterations seem to jump from II to IV. They asked:

• what is the correct form of the ESR?
• is there a place for an examiner to indicate that a protest or submission of prior art had been considered?

S. Meunier responded that the correct version of the ESR is now version 10; there was an error in version 9 and was fixed in version 10. The error was only in the numbering of the Box, which was corrected. The content of the boxes was correct.

He added that for the second item, an examiner bulletin (EB) addressing the removal of the publication of the submission of prior art/protest information from the ESR stated that "The "Box III: Prior Art Submissions" in the search report attached to the examiner's report is being removed. In the SR Tool, the "Reviewed Yes/No" field for prior art submissions is also being removed. Examiner can still use the "Submissions" tab as they wish for their own record keeping but are not required to use it. The prior art submissions information for prior art is already found at the beginning of the examiner's reports in which the dates of the submissions must be entered (using the current Word PERMS) and this is the only location where it needs to be published."

He however added that the above EB concerns only prior art submissions made by the applicant, and protests or filing of prior art by 3^rd party are not currently part of the examiner's report or the ESR, unless the prior art is cited by the examiner, in that case it will be identified in the examiner's report.

5. Agent-related matters

5.1 Handling of appointments of agent

IPIC indicated that agents are still reporting poor handling of appointments of agent:

• it is still taking far too long to process changes of agent – due in part to poor performance of ICU
• in one example, an appointment of agent identified two applications/patents. However, the Office only recorded the change of agent on one case, not the other
• reports that confirmations of appointment of agent and revocation letters are not being sent to the agents, even though the documentation appears online
• an appointment of one agent at a firm was recorded as an appointment of all the agents of the firm
• in applications incorrectly deemed abandoned for failure to appoint an agent in response to a notice (mentioned above – appointments were filed in a timely manner), the abandonment letter cited the grounds as a failure to file a translation, which was not the case (the applications were in English)

They added that agents continue to observe that maintenance fee analysts are not returning calls. They asked if examiners or exam support analysts check to see if there are unprocessed appointments of agent before sending reports, as such a double-check might help catch errors.

J. Orser responded that the delay of processing appointments of agent is mainly due to the processing time in the appropriate section in Patents, and that a plan has been put in place to reduce the delay under 45 days from receipt of a compliant request as a first step.

In regard to the examples provided, he added that the Office will take necessary actions, such as reminders to the staff and additional training or refreshers on the procedures to ensure more quality and consistency with this service. He added that a review of the internal process related to calls received in the maintenance section will be done to ensure that timely responses are received. He also added that a reminder will be done to the section responsible for sending the reports to ensure that there are no pending appointments of agent on file.

He also noted that the current ICU backlog issues have a significant impact on the delay for processing appointment of agents.

6. Other items

6.1 Due care

IPIC asked for the time to respond to the provisional refusal letter to be increased to three months. They reported at least one case where the letter was dispatched from the Office two weeks after the letter date, leaving insufficient time to respond (the letter was apparently re-sent with a later date).

They added that, in view of the Office's lack of meaningful guidance concerning evidence required to show due care (aside from PCT guidance directed to restoration of the right of priority), the provisional refusal letter is the first notice the applicant/patentee receives concerning the volume and types of evidence required to satisfy the Commissioner. They submitted that one month is not enough time to compile this evidence, particularly since affidavits or documentary evidence may need to be obtained from former counsel and other third parties.

J. McLean responded that this feedback will be taken into consideration, but that to date, there have been no discussions on whether the Office would consider increasing the time to respond to the intent to refuse letters to three months. He added that such an increase would require a thorough review of the current process and that right now the Office is focussed on getting through the outstanding requests. He acknowledged that some guidance with regards to evidence required to show due care is lacking and a note which will hopefully provide more information will be forthcoming.

He indicated that there was one case where a client received the intent to refuse letter two weeks after the due date and that the Office re-sent the intent to refuse letter with a new due date. J. Wilson responded that she was familiar with this file; however, it did not include any letter confirming that the initial letter was cancelled which is problematic.

J. McLean provided a general update on due care: as of last week, the Office had 62 first requests for reinstatement/reversal of deemed expiry in the queue, and 32 responses to initial intent to refuse letters. He indicated that the current service standard for reinstatement/deemed expiry requests is 6 months, but that the Office is not meeting this service standard. He added that more final determinations have been published on the Office's website and that information will be added as files are processed.

J. Wilson asked if there had been applications for judicial review yet. J. McLean answered that he did not believe there were any. V. Ethier confirmed J. McLean's response.

J. Wilson pointed out that S. Vasudev had previously said that the Office would share one application that was viewed as being the "gold standard" for due care submission and that additional guidelines would be provided, but that this had not yet been done. J. McLean responded that the Office would get back on this issue.

J. Wilson suggested that shifting to an unintentional delay requirement be considered, to align with international community, as consideration under this threshold would allow the Office to deal with these issues much easier and faster.

6.2 ITM

IPIC asked if there were plans to make access to correspondence consistent across all lines of business, as currently, patent correspondence comes by email; trademarks correspondence is working towards email delivery; users are notified of ID correspondence by email so they can log in and download it.

J. Orser responded that this is certainly the vision of the future CIPO portal and aligns with the e-service improvements that TIDB have been working towards. He added that as was mentioned during the IPIC AGM, work continues to progress well on NGP, and the Office is working towards a first production release in 2023 with specific times to be communicated once these are crystalized. This includes change management and training to support clients, as well as firms and their staff to adapt to these changes.

6.3 Correction of small entity fee payments – transitional cases

IPIC pointed to the revised chapter 2.03.03g of the Manual of Patent Office Practice (MOPOP):

The Patent Rules do not allow for the topping up of an application fee paid prior to October 30, 2019. Therefore, any top up request for such a fee will not be accepted and the application will continue to show future fees at the small entity rate.

and asked for confirmation of the interpretation of the Patent Act and Patent Rules supporting this conclusion. They indicated that subsection 3(3) of the Patent Rules refers to "the payment of a fee referred to in subsection 44(1)". That fee in subsection 44(1) is variously referred to as "the prescribed application fee" which is for the purposes of subsection 27(2) of the Patent Act, and "item 6 of Schedule 2".

They added that both before and after October 30, 2019, applicants paid an application fee pursuant to subsection 27(2) of the Patent Act. This is, in fact, referenced by subsection 44(1), and asked why this was not sufficient to enable application of subsection 3(3) to application fees paid prior to October 30, 2019 . In other words, what justifies "the payment of a fee referred to in subsection 44(1)" to be read narrowly as referring only to the fee as listed in the schedule? They asked if, since the current subsection 27(7) of the Patent Act does not impose a time limit on sending a notice to pay the application fee (provided the application is still pending), this could be used to accept a top-up of the application fee incorrectly paid at the small entity rate.

J. McLean responded that the Office's position is that there is no credible argument to use subsection 3(3) of the Patent Rules to top-up an application fee that was erroneously paid at the small entity rate. Subsection 3(3) of the Patent Rules is intended to extend periods of time. However, for the filing fee for applications filed before October 30, 2019, there was no prescribed period to make the payment; rather, the consequence of paying the fee, with the other filing requirements, was a filing date. He added that the notice under subsection 27(7) of the Patent Act does not apply to category 3 patent applications and patents granted on the basis thereof (see section 78.5 of the Patent Act).

7. Additional points

7.1 Plan for increased backlog

This was addressed in point 3.5.

7.2 PAB Decisions/Benjamin Moore decision

J. McLean indicated that there was an initial hold on certain applications right after the Benjamin Moore decision, but that the hold has now been lifted and examination is proceeding based on current guidance on all levels of court and law. He added that an expedited schedule is applied to the Benjamin Moore case in an attempt to get a decision as quickly as possible in the Federal Court of Appeal.

V. Ethier added that the Office will make sure to be totally compliant with all the decisions that are made, and that examination is performed in compliance with all of these decisions as well as the Patent Act and Patent Rules, regardless of whether the Office appealed a decision or not. The Office will ensure that any required changes in examination practice are implemented, and appropriate guidance is provided as quickly as possible following a decision.

8. Roundtable, Next meeting and closing remarks

D. Nauman pointed out that there is a current issue of sequence listings being submitted at filing on PCT applications that are being improperly categorized as being submitted after filing (Rule 13ter), and that this issue was reported via the OFM. He noted that this issue does not seem to be specific to a particular officer. J. Orser responded that the issue will be looked at when the OFM is processed, and that he will follow up with the PCT international team.

The date for the next Patent Practice Committee meeting, which should occur in February, will be set secretarially at a later date.

The meeting adjourned at 4pm.