Joint Liaison Committee - Meeting #119

Wednesday, February 24, 2010

• Attendees
• Minutes of previous meeting
• Business arising
• Ongoing items
• New business
• Other business
• Issues Covered in Previous JLC Meeting
• Specific enquiries
• Next meeting

Attendees:

1. Minutes Of The Previous Meeting

The minutes of the meeting of October 28, 2009 were approved pending the following amendment:

H. Probert commented that 4c) of the previous minutes should be amended to indicate that 4 of the section 8 requests were found not to be section 8 requests and were not, as indicated in the minutes, refused.

2. Business Arising

4c Section 8 Update

S. Vasudev, in F.Dionne's absence, provided a Section 8 update.

S. Vasudev indicated that since the last JLC, the Office has received 73 requests, completed 56 and drafted refusal letters for 15. There are currently 85 requests in the queue: 38 filed in the last 3 months, 18 between 3 and 6 months and 29 for more than 12. By the next JLC, there should be no request in the queue that is older than 6 months. The objective is to deal with all requests within 3-4 months.

The fact that a request may have been sitting for a long period of time in the queue could be an indication that a refusal letter is coming. Refusals take more time since we want to make sure that refusal letters contain adequate information should we have to face a judicial review.

Regarding the issue raised at the previous JLC by H. Probert, as H. Probert explained, this issue has been resolved.

Concerning the two cases raised by G. Silver, both had been responded to in early February and the CPD was updated accordingly.

4g Scanning Delays

S. Périard provided an update regarding scanning delays.

As of February 10, 2010 the Office is at a two week turn around time for scanning documents received in the Office. The Office will continue to work on scanning delays in an effort to maintain scanning turn around times.

4h Document Handling

S. Vasudev explained that under PCT Rule 93.1, CIPO as a receiving Office (RO) is obliged to keep records relating to each international application at least 10 years from the international filing date. In situations where a document relating to a PCT international application is requested and the Canadian RO no longer has the file, certified copies can be purchased from the International Bureau at WIPO for a fee of 50 CHF. Under PCT Rule 93.2, the International Bureau is required to retain the file relating to an international application for at least 30 years from the international filing date.

4n Consideration of Foreign Search Results

In response to two issues raised at the previous JLC, S. Vasudev indicated that 1) the language of confirmation letters in response to a request for examination had been revised to no longer request the provisions of US and EP search results and that agents should be seeing these new letters shortly, and 2) work had commenced on development of a check box-like PERM wherein specific countries or offices could be identified.

3. On-Going Items

3a Corporate Feedback Mechanism Report

A report summarising feedback received during the period October 1, 2009, to December 30, 2009, was included in the JLC members' information packages.

B. de Schneider indicated that the Office attempts to resolve the issues identified through the Client Feedback Mechanism quickly and remains committed to addressing feedback in a timely manner.

B. de Schneider summarized the feedback received and noted that the bulk of complaints continue to relate to the application process.

3b Service Standards

“Dashboard Highlights” for January 2010, and Additional Patent Statistics for January 2010 were included in the JLC members' information packages.

B. de Schneider advised the group that examination production is progressing well and remains on target. Electrical examination was showing some challenges with meeting TATs. However, the Office has responded by hiring more Examiners.

The Office is seeing a reduction of 10% from previous years on filings and requests for examination are down slightly. B. de Schneider queried the profession as to whether the statistics the Office was compiling were in line with what they were seeing in their line of business.

V. Donnelly responded by indicating she feels that corporations have reduced their filings in Canada. E.Saffman provided that biotech filings have stabilized. R. Caldwell has seen an increase in requests to abandon the application. Contrary to this observation, another member provided that over the last six months they have seen a decrease in the number of requests to abandon applications.

L. Giardina provided an update regarding the production in Examination. He indicated that for the most part, all of the disciplines will meet their goal. He indicated that next year the service standards will begin at the level they ended at this year and the Office will improve on these standards throughout the year.

S. Périard indicated that formalities is currently working on a four week turnaround time and assignments is working on a six week turnaround time. S. Périard further indicated that PCT National Entry was currently working behind their expected service standards but informed the committee that this was due to a new system implementation that took place and the PCT National Entry section is beginning to see improvements.

S Périard urged the committee to use the electronic payment method for the payment of maintenance fees. K. Ledwell indicated that there was some concern using the electronic system. If the Office provided an electronic confirmation of receipt within 24 hours he would be more inclined to use the system. Without such a confirmation he would most likely not use the electronic method for paying maintenance fees. S. Périard responded by saying that the Office does send a confirmation when a payment is received through the electronic maintenance fee system.

V. Donnelly indicated that half of her files in which she attempted to pay maintenance fees using the electronic system received an error message indicating they couldn't be paid electronically.

A participant via teleconference indicated that when a final fee and a maintenance fee is due she sends this to the office in a single action using the general correspondence procedure. She inquired as to whether it would be better to send the final fee using the general correspondence option and send the maintenance fee using the electronic payment of maintenance fee option. S. Périard responded that it would be better to use the general correspondence method for submitting the final fee and the electronic maintenance fee payment method for submitting the maintenance fee.

A. Ionescu inquired as to when they would be able to submit all fees electronically.

V. Donnelly indicated a desire to have assignments also submitted electronically.

4. New Business

4a Regulations Update

S. Vasudev provided the JLC with the following update on various packages proposing amendments to the Patent Rules.

Package 1: Includes provisions concerning the replacement of the declaration of entitlement by a simple statement and response to issues raised by the SJCSR. The amendments were published in Gazette 2, and will be in force as of October 1st, 2010. Qs and As are being finalized and the Office's objective is to publish them, with new forms and more information, a minimum of 3 months before the coming into force. The Office expects to share advanced copies of Qs and As at the next JLC for feedback.

Package 2 : The Office is in the process of putting together an alternate proposal that will take into account the comments received.

Packages 3a and 3b: These concern the Patent Agent Exam and post final action procedures. A revised proposal will be finalized shortly that takes into account all the comments received. We expect that a second consultation, this time through pre-publication in Gazette 1, will take place later this year.

4b MOPOP Update

S. Vasudev provided the following update on the revision of the MOPOP:

Chapter 9 (The Description) - public consultation was completed and comments are being considered by a working group, with the intention of presenting an analysis to the Commissioner within the coming months.

Chapter 16 (Computer-Implemented Inventions) - work is continuing, with the intention of holding a public consultation in late Spring 2010.

Chapter 14 (Unity of Invention) - work is continuing, with the intention of holding a public consultation just after the consultation on Chapter 16.

Chapter 15 (Novelty and Obviousness) and Chapter 11 (Claims) - preliminary work will begin on these chapters next month and the Office will keep the profession informed of progress through the mechanisms such as the JLC and the website as to when a public consultation can be expected. Proactive feedback from the profession is always welcome.

Chapter 21 (Final Actions) - Revisions to this Chapter may be prioritized once the Package 3 regulations are finalized and an entry into force date is set. The chapter will be completed by the coming into force date of the amended Rules.

4c PPH Update

R. Oulton provided to the Committee an update on the Patent Prosecution Highway (PPH).

The PPH pilot with the United States continues to be successful and the Office has received 868 PPH requests thus far. Canada has expanded its PPH initiative by establishing PPH pilot programmes with the Japan Patent Office (JPO), the Danish Patent and Trademark Office (DKPTO) and the Korean Intellectual Property Office (KIPO), in addition to its existing PPH pilot programme with the US Patent and Trademark Office (USPTO).

The upcoming IPIC bulletin will contain an article relating to the three new projects. There will also be updated FAQ’s specific for each project coming soon to the CIPO PPH website.

R. Oulton encouraged members of the Committee to complete and return questionnaires accompanying office correspondence and to contact her with any questions.

V. Donnelly indicated that she has filed applications through the PPH and the response time is good.

There was an indication that differences in the subject matter eligibility requirements of the IP offices, as well as unique aspects of Canada's divisional application practice and double-patenting laws, may be relevant when considering using the PPH.

4d Notice Of Allowance-Withdrawal

As explained at the meeting, this issues arises when applicants receive a notice of allowance (especially as first actions) before they have filed an amendment to the application to insert claims directed to another invention. Applicants are reluctant to file a divisional application directed to the other invention without an office action identifying a unity problem since such an office action provides a safety net against future attacks related to double patenting. The suggestion that the applications be withdrawn from allowance at the request of an agent in order to amend the claims to provide such unity objection was discussed. It was pointed out that to withdraw an application from allowance Rule 30(7) requires the Commissioner to have reasonable grounds to believe that the application does not comply with the Act or Rules. Consequently the suggestion could not be adopted.

A. Zahl inquired as to the possibility of having Examiners call the applicant letting them know they are ready to grant before a Notice of Allowance is sent. This would provide time for the applicant to review the application.

R. Caldwell provided that perhaps the Patent Rules could be looked at to see if something already exists to amend the process and it can be discussed at the next JLC. K. Ledwell agreed to look at the Patent Rules closely but also indicated that there are legitimate reasons for filing a divisional even at the Notice of Allowance stage.

D. Schwartz indicated IPIC's 21st Century Strategic Plan spoke to this issue. R. Caldwell indicated she would get a copy and perhaps the Patent Rules could be interpreted to accommodate a different practice.

4e Indefinite Defects

J. Paxton, attending on behalf of G. Silver, noted they are receiving a number of objections to terms now being considered indefinite which were previously considered definite by the Patent Office.

For example the following are now being objected to:

a) “A method according to claim X” in dependent claims is being objected to. The Examiners are asking to say “The method according to claim X”.

b) “...comprising X as an active ingredient...”. The Patent Office is alleging that “an” implied the presence of other active ingredients.

c) The term “optionally” was always accepted before, but now a number of Examiners are considering it to be indefinite.

D.Campbell requested Committee members to use the Client Feedback Mechanism (CFM) to bring to the Office's attention any objections that are exemplified by (a) D.Campbell stated that such objections should not be made. Using the CFM will facilitate the discontinuance of these types of objections by identifying where attention needs to be focussed.

D.Schwartz and D.Campbell discussed (without any immediate resolution) the relevance of Rohm & Haas v. Commissioner of Patents 30 C.PCR. 113, Ex.(c) with respect to objections exemplified by (b). D.Campbell pointed out that an opportunity to have an in-depth review of this practice will be possible when Chapter 11 of MOPOP is consulted on in the not too distant future.

R. Caldwell provided that these office actions create more work.

J. Paxton indicated the cases where these terms are used is language that comes from other associates and it is an inconvenience to amend it.

D.Campbell expressed the opinion that the term “optionally” can cause a claim to be identified when the claim already has a plurality of alternatives or if it used in a Markush claim. Consequently examiners would be correct to raise an objection of indefiniteness in these circumstances. D.Campbell also expressed the view that generally speaking the offices does not view the term “optionally” as always introducing indefiniteness and that in the simplest scenario where the claim has no alternatives, a single occurrence of the term would not be problematic. However, he questioned its use in such circumstances since the office believes an optional element could not save an otherwise defective claim. I.Clarke provided an example of the use of the term specific to chemical rings where he felt the term served a useful purpose. The discussion concluded with the understanding that the consultation of a new draft chapter 11 in MOPOP would clarify practice.

4f Correspondence sent by e-mail not received

S. Périard indicated that the Office has implemented a procedure in PCT national where the read receipt on delivery is used. If this works well, the Office will look at expanding this practice.

M. Paton indicated this option was good and it was an improvement.

4g CIPO refusing to resend Notice of National Entry instead of requiring to be reordered

S. Périard informed the group that the Office will re-send a Notice of National Entry when a client indicates they did not receive it.

V. Donnelly inquired as to the type of correspondence that can be sent via email.

M. Paton responded indicating that she sends everything electronically except international filings and she receives 90% responses by email.

V. Donnelly would like to know how someone would indicate they would like to correspond with the Office via email.

S. Périard informed the group that if they wish to correspond with the Office via email they should write a letter letting the Office know.

S. Périard will follow up and discuss at the next JLC.

4h Assignments

S. Périard pointed out that if there is one assignment to register, the client will receive a registration certificate with other document stamped on it and a letter outlining the transfer ex: the office has registered the assignment from the inventor(s) to the applicant(s) submitted with the above-mentioned letter as “other document”.

If there are two assignments, the client will receive a registration certificate indicating other document and a letter outlining the chain of title.

4i Lost Mail

S. Périard investigated the specific application numbers wherein it appears Examiner’s reports were never received by the firm. In this particular case there were two addresses on file, one in Montreal and one in Toronto.

This was confusing so to clarify the Office wrote the firm asking them to indicate which Office we should correspond with.

E. Saffman described cases where not receiving mail was problematic. It was not however a problem of receiving the wrong office mail. It appears to be more a batch mailing problem.

She is aware the Office will accept an affidavit indicating that an Examiner’s report was never received. However, E. Saffman questioned where in the Patent Rules does it give the Commissioner authority to revive an application based on an affidavit. S. Vasudev clarified that this was the Office’s interpretation and that clients must weigh their own risk. E. Saffman indicated there was no comfort in this position and requested the Office find a way to deal with the mail situation.

M. Eisen inquired as to whether we could function like Trade-marks. B. de Schneider recognized this would be beneficial but it remained out of the Office’s current priority. In fact, he was unaware this was even an issue as of late.

M. Eisen opined that there are instances where an abandonment notice is not received and the client doesn’t know why the application is now dead. S. Vasudev provided the amendments in Rule Package 2 will provide for some notification that the application is abandoned. In response to E. Saffman’s “no comfort” comment, Mr. Vasudev indicated that Office position is intended to be the exception rather than the Rule.

R. Caldwell indicated lost mail was problematic in the Ottawa Office, however, not an issue now in the Calgary Office. R. Caldwell mentioned that E. Saffman should try other options to fix the mail problem. For instance K. Lachaine provided that she uses a courier three times a week to pick up mail from CIPO.

B. de Schneider urged the Committee that if they were receiving mail intended for other Offices the Office should be informed. S. Périard further provided that there is currently 100% QC on all out going mail and as of late the Office has not heard of other firms having this problem.

A. Zahl inquired as to whether the Office could send out mail electronically as well as through the regular mail. The Office responded that this would cause problems with duplicate copies.

E. Saffman said the Office could expect a lot of status requests until the mail problem was solved.

D. Campbell indicated that there are approximately 60,000 requisitions sent every year and let the Committee know that it would be helpful if they used the Client Feedback Mechanism to let the Office know whether the problem was receiving wrong mail, not receiving mail at all or related to receiving host vs custom mail.

B. de Schneider indicated the Office would look into a mail problem button being added to the Client Feedback Mechanism.

4j Citations - Web links

S. Vasudev thanked M. Eisen for raising these issues and indicated that, as the submission was only recently received, the Office would analyse the policy issues and return to the next JLC with a more definitive response. In offering some provisional thoughts, S. Vasudev indicated that the citation of internet pages, while presenting challenges, was not strictly forbidden. Section 9.07.04 of the proposed Chapter 9 of MOPOP indicates that examiners may exercise discretion in accepting internet pages depending upon the reliability of the source and permanent retrievability of the information. S. Vasudev went on to say that prior art does not necessarily need to be retrievable to be citable (e.g. prior use) and publication dates can sometimes be verified by use of archiving sites such as the Wayback Machine.

5. Other Business

5a Duplicate Office Actions

L.P. Gravelle indicated that he has received a number of Canadian files where the most recent Office Action is an exact duplicate (except for the date) of the previous office action and it does not consider the last amendment.

K. Lachaine provided that she has also encountered the problem of duplicate office actions.

S. Périard looked into K. Lachaine's file and in this particular situation it was a clerical error. S. Périard ensured the group that employees have been reminded of the correct procedure and hopes this solves the problem. If the problem persists please let S. Périard know.

5b Cessation of PCT Transmittal Fee

S. Vasudev explained that in accordance with Rule 14 of the Regulations under the PCT, the transmittal fee is levied to compensate the receiving Office for “receiving the international application, transmitting copies to the International Bureau and the competent International Searching Authority, and performing all the other tasks which it must perform in connection with the international application in its capacity of receiving Office.” S. Vasudev noted that there is no provision under the Regulations under the PCT nor section 4 of the Patent Rules for refunding the transmittal fee. Therefore the Canadian Intellectual Property Office will cease refunding the fee in all circumstances where the processing of international applications has commenced.

S. Vasudev clarified that this situation frequently results when applicants file by fax and then submit by mail a duplicate paper copy. While the Office wishes to discourage the filing of duplicate copies, should applicants wish to file their applications in duplicate (in singular or multiple formats), the Office recommends that each submission contain a clear and explicit statement indicating that the application has been filed in duplicate. Such an indication will help to minimize the processing of these applications as separate and distinct applications. However, where the processing of the application has commenced, the inclusion of such a statement does not constitute grounds for a refund where multiple transmittal fees have been levied.

6. Issues Covered in Previous JLC Meeting

None.

7. Specific Enquiries

7a Examiner’s report - M. Eisen. This issue was solved prior to the meeting by A. Gélinas.

7b List of requirements for an acceptable substitute appointment of agent. The Office awaits further information.

7c Reproduction Department - Service Related Problem raised by G. Silver. The issue is currently being looked into by the Office. B. de Schneider asked if others were having this same issue and there was no response from the Committee.

7d Errors on the website raised by E. Saffman. It appears in some cases that the claims published on the website are the claims as filed and not the claims as granted. D. Campbell indicated that if brought to the Office’s attention we will correct the file.

It was eventually revealed the problem really occurs when a client is looking into a patent as a third party. There was concern that if a section 8 request is made, accepted and corrected but not indicated on the CPD then how is a third party to know that the claims they are seeing are not the corrected claims.

B. de Schneider indicated we would look into this issue and bring more information to the next meeting.

7e J. Paxton indicated that there is supposed to be a cloak room in the 2nd floor search room and asked the Office to look into it.

8. Next Meeting

The next meeting is scheduled to take place June 9, 2010 [at 9:30 a.m. in Room D, 24th floor, Place du Portage, Phase I, 50 rue Victoria, Gatineau QC K1A 0C9]

The meeting adjourned at 12:30pm.