Joint Liaison Committee - Meeting #120

Wednesday, June 9, 2010

Attendees

1. Minutes of the Previous Meeting

The minutes of the meeting of February 24, 2010 were approved with the following amendments/clarifications:

• A portion of text (referring to email correspondence) erroneously listed under 4g was moved to 4f. A handout of the correction was provided at the meeting.
• Under 3b (Service Standards), it was clarified that the phrase, "corporate is not filing in Canada", was referring to corporations not filing.
• R. Caldwell noted that she was not aware that CIPO was awaiting further information relating to item 7b. The information will be made available for the next JLC meeting.

2. Business Arising

2a Electronic payment of fees (JLC #119 Item 3b)

V. Donnelly received an email from S. Périard indicating that the error messages when paying her maintenance fees electronically were due to her firm having two Percs (identification numbers/addresses) on file with CIPO. The Office has corrected the problem and V. Donnelly will retry submitting the fees.

S. Périard urged clients to use the electronic payment channels and noted that any issues with this system are a high priority for CIPO. If you have any problems, don't hesitate to contact the Office.

2b Correspondence sent by e-mail not received (JLC #119 Item 4f)

S. Périard provided the JLC with an update on not receiving correspondence sent by email. A tracking system is being used to make sure email has been opened/received by the recipient. When filing electronically you will be asked whether you want to correspond by email or via regular mail. Even when filing by paper correspondence you can give an email address in the letter and indicate that you would like an electronic reply.

V. Donnelly asked if she can submit an additional email address as a backup. S. Périard said not at this time.

2c Lost Mail (JLC #119 Item 4i)

B. de Schneider provided the JLC with an update on lost mail, indicating that CIPO is aiming to add a "mail related problems" button on the Client Feedback Mechanism (CFM).

R. Caldwell used the CFM recently and found it useful and received a quick response. She suggested adding a "question" option under the heading where you specify the nature of the feedback (currently only comment/compliment/complaint). She also stated that the Committee would appreciate hearing about trends noted by the CFM.

A. Ionescu mentioned that perhaps not many people are aware of the CFM, and is concerned that if the use of the mechanism increases, will CIPO be able to cope? B. de Schneider suggested that the CFM has been promoted at every JLC meeting and IPIC should work to promote the CFM to its members. CIPO will endeavour to keep up with any increased demand.

2d Citations - Web Links (JLC #119 Item 4j)

S.Vasudev provided the JLC with a follow up on a previous question from M. Eisen regarding using web links as citations. Reinforcing earlier remarks that internet pages are citable, S. Vasudev noted that using the Internet as a source of prior art when assessing whether an invention is patentable can be problematic since it is often difficult to ascertain precisely when information on websites became available to the public. The Office considers that using Internet citations is acceptable provided that the date of a particular disclosure can be reliably determined. This is reflected in section 9.07.04 of proposed Chapter 9 of MOPOP which states that "examiners may exercise discretion in citing internet pages depending upon the source and the permanent retrievability of the information". Acceptance of an effective date of publication can be determined by evidence such as the date of posting listed in the publication, or a date of archiving on an internet resource such as the Internet Archive (Wayback Machine).

A. Ionescu asked what the Office position is with respect to citations from Wikipedia. S. Vasudev answered that the Office does not ban the use of this website. The Office position is that this web resource is not wholly reliable and should only be used to demonstrate general knowledge and not as a source of relevant prior art information.

M. Eisen asked how one can ever reliably ascertain a publication date of a website citation. S. Vasudev responded that the determination can be discretionary and that a corresponding printed publication would be a more reliable indicator. C. Evans added that archiving tools are generally independent third party tools that can accurately and reliably verify document publication dates.

G. Silver asked what the basis is for a reference to be "permanently retrievable", since, for example, even books go out of publication. C. Evans replied that the term "permanent" is still being reviewed and might not appear in the final version of MOPOP Chapter 9 (reliably retrievable may be preferential).

2e Errors on website (JLC #119 Item 7d)

S. Périard provided the JLC with an update on errors on the Canadian Patent Database (CPD) website. A procedure is in place to trigger an update to the claims posted on the CPD when there is any amendment after grant (so that even Section 8 amendments will be reflected in the posted claims). Use the Client Feedback Mechanism if you notice a discrepancy.

2f Cloak Room (JLC #119 Item 7e)

B. de Schneider noted that the cloak room on the 2nd floor of the search room has been cleared and is available for use.

2g Consideration of Foreign Search Results (JLC #118 4n)

This item was not on the original agenda.

R. Caldwell raised an earlier issue regarding the consideration of foreign search results noted by D. Schwartz when he questioned whether it is possible to no longer request the provision of US and EP search results in the confirmation letters issued by the Office in response to a request for examination. S. Périard responded that a new letter template has been created, but it has not yet been implemented due to IT issues changing host generated correspondence.

C. Evans commented that the change is not related to Rule 29, but rather to Office efforts to not requisition information that is already readily available on the Internet.

S. White asked if there is a way to know if the examiner has viewed the US and EP search results in the event that they are not submitted by the applicant. C. Evans replied that a short paragraph is being discussed for the beginning of a report to indicate what prior art has been viewed by the examiner (and possibly the search strategy). G Silver noted that agents might continue to submit the US and EP prior art for specific litigation reasons until there is some clear indication.

3. New Business

3a Regulations Update

K. Rooney provided the JLC with an update on the Regulations.

Package 1: Includes provisions concerning the replacement of the declaration of entitlement by a simple statement and response to issues raised by the Standing Joint Committee for the Scrutiny of Regulations (SJCSR). The amendments were published in Part II of the Canada Gazette (link on CIPO website), and will be in force as of October 1^st, 2010.

The Office is currently working on a webpage that will include a backgrounder, Q & A, important links and all of the updated forms (i.e. the petition). They should be published by the end of June or beginning of July.

Package 2: Work on Package 2 continues but on a lower priority path. The Office has revised the package from that which was consulted upon in January/February of 2009. The second consultation is planned for early 2011, this time through pre-publication in Gazette I.

Packages 3a and 3b: These concern the Patent Agent Exam and post final action procedures. A proposal has been finalized which took into account all the comments received. It is expected that a second consultation, this time through pre-publication in Gazette I, will take place later this year.

K. Rooney informed that as announced on CIPO's website, a new initiative is being developed to expedite the examination of patent applications related to green technologies. This service, similar to what is commonly referred to as a "special order", will be available to all patent applications related to green technologies. To benefit from the service, the applicant will simply need to submit a declaration stating that their application relates to a field of technology, the commercialization of which could help resolve or mitigate environmental impacts or to conserve the natural environment and resources. The regulatory amendment process is underway and CIPO hopes to be able to consult on the proposed regulatory amendments in the fall. Prosecution acceleration will be the same for both special orders and green technologies.

E. Saffman asked if there would be a fee for a green application. K. Rooney replied no.

3b Section 8 Update

K. Rooney provided a Section 8 update. Since the last JLC the Office has received 69 requests, completed 47 and drafted an additional 22 refusal letters. There are currently 64 requests in the queue: 8 filed in the last 3 months, 38 between 3 and 6 months and 18 for more than 12 months.

All section 8 requests have been reviewed and a preliminary decision has been made. The review of drafted refusal letters is the bottleneck in the process and has become a priority. Steps have been taken (enlarged review panel, i.e. PAP Program Manager and Examination Program Manager) to address the backlog.

3c MOPOP Update

C. Evans provided a MOPOP update. Working on three chapters at once seems to be the operational limit.

Chapter 9 (Description) should be presented to the Commissioner this summer, and by the next JLC it will be clearer when it should come into force.

Chapter 16 (Computer Implemented Inventions) will go for public consultation very shortly.

C. Evans is still awaiting completed comments from a recent teleconference with IPIC regarding Chapter 14 (Unity of Invention). The aim is to have a public consultation shortly after the Chapter 16 external consultation.

C. Evans noted that some feedback on MOPOP revisions has led him to believe that the Office should slow down the frequency of the chapter revisions to give the profession some "breathing room" between public consultations. He hopes to allow about a four month gap between revisions in the future.

In view of the Patent Rules amendment for post final action procedures, Chapter 21 (Final Action Practice) will require amendment.

Chapter 17 (Biotechnology) will need to be reopened to remove some redundant information and to update some pharma and monoclonal antibodies subject matter related to recent case law. C. Evans stated that Chapter 17 work would begin in September, but he is not yet sure of the timelines.

3d PPH Update

K. Murphy provided the JLC with an update on the Patent Prosecution Highway (PPH). CIPO presently has PPH programs with the USPTO (985 applications), JPO (9), KIPO (0), and DKPTO (0). Any feedback on why the numbers are low for KIPO and DKPTO would be appreciated.

To ensure proper processing of a PPH application, K. Murphy asked that the PPH request form be the upper most sheet in the correspondence (if submitted along with a voluntary amendment, request for examination, etc...).

If applicant is submitting a request to have an application opened to public inspection before the expiry of the confidentiality period, the timeline for receiving a first office action will be 90 days from the date the application is laid open (rather than the date of the PPH request) since, according to PPH requirement d), "The CIPO application [must be] open to public inspection".

The FAQs have been updated on the CIPO PPH website and are specific to each of the four CIPO PPH projects. Client feedback is encouraged through the use of the questionnaire accompanying the office correspondence related to your PPH request, through the PPH page on the CIPO website, or by emailing the PPH project manager directly at pph@ic.gc.ca.

R. Caldwell asked when the US PPH pilot will next be reviewed. K. Murphy responded that it ends on January 28, 2011 and CIPO is currently reviewing the pilot in anticipation of its continuing after the January end date.

In response to a question from H. Probert, K. Murphy confirmed that PPH request forms should still be submitted as separate documents from voluntary amendments and request for examinations (i.e. not all combined in one document, but still together).

B. de Schneider commented that he was recently at the USPTO and under the direction of David Kappos the USPTO is now setting PPH goals and making progress with the program by intending to make better use of it.

V. Donnelly asked if there were any plans for a PPH with the EPO. B. de Schneider noted that in the past the EPO did not seem interested, but that sentiment has changed. Now CIPO is awaiting a newly appointed president of the EPO before broaching the topic. CIPO has initiated PPH discussions with Germany. Finland and Spain have requested PPH discussions with CIPO.

3e Recordal certificates

S. Périard provided the JLC with an update on recordal certificates. Beginning on August 23^rd, a system fix will be in place to allow the certificates to be properly recorded.

A. Zahl asked if CIPO will correct and reissue certificates. S. Périard said CIPO will look at addressing the issue in a sensible, efficient and cost effective manner.

A. Zahl asked if CIPO could loosen the requirement for either a witness or evidence to record an assignment. K. Lachaine responded that the Patent Act specifically requires it.

S. Vasudev noted that CIPO is in the midst of a broad review of the entire inventorship issue.

3f Replacement for Declaration of Entitlement

K. Lachaine asked for details on what CIPO expects as a replacement for the declarations of entitlement?

K. Rooney responded that CIPO is currently working on a webpage that will include a backgrounder, Q & A, important links, and new forms that will incorporate the new statement that will replace the current declaration of entitlement. K. Rooney anticipates that this webpage will be completed and posted by the end of June or beginning of July.

3g Prosecution and Grant after expiry of the 20 year patent term

In response to questions raised by D. Schwartz, S. Vasudev provided comments on prosecution and grant after the expiry of the 20 year patent term. S. Vasudev stated that the Patent Office takes the position that prosecution of an application can continue up to 26 years from the filing date, after which point the prosecution is moot. The additional 6 years comes from the limitation period of s. 55.01 of the Patent Act which states, "no remedy may be awarded for an act of infringement committed more than six years before the commencement of the action for infringement." Therefore, S. Vasudev responded to the questions raised by D. Schwartz as follows:

• Q: Will CIPO issue a patent if the date of issue is more than 20 years from the filing date? A: Yes.
• Q: May the final fee be paid after expiry of the 20 year term? A: Yes.
• Q: May a response to an Examiner's Report be filed after the 20 year term has expired? A: Yes.
• Q: What happens if a response is not timely filed? Is there a requirement to reinstate the application? It would not appear that an application that is no longer pending may become abandoned. A: The Office considers the application to still be pending and therefore the abandonment and reinstatement provisions are still applicable.

A. Ionescu asked if this was just a theoretical situation or if CIPO expected this outcome. S. Vasudev indicated that there are some cases where this is a real possibility.

3h Trivial Sequence Listing objections

S. Vasudev provided an update on the issue raised by D. Schwartz regarding trivial sequence listing objections. The Patent Office is presently reviewing the entire operational procedure with respect to sequence listings and the comments by D. Schwartz concerning trivial objections will be incorporated into that review.

The Office position is that it will not requisition correction of "trivial" matters if those are the only defects in the sequence listing. However, if the Office requests correction of a more substantive defect then all defects, including seemingly trivial ones, will be included in the requisition. The threshold between trivial and substantive is if the error creates confusion.

S. Vasudev noted that the examples provided by D. Schwartz would appear to be objections of trivial matters and these are unfortunate exceptions as opposed to being representative of Office practice. Employees involved in the processing of sequence listings have been reminded of the Office practice concerning trivial objections.

3i Trivial objections in Examiner's reports

I. Robert provided an update on the issue raised by D. Schwartz regarding an Examiner's Report raising only a Rule 84 objection based on a passage in the description referring to the claims.

I. Robert stated that while the cited passage provides no support for the claims, there was support for the claims elsewhere in the description, so the objection under Section 84 should not have been made. But if there had not been support for the claims elsewhere in the description, the fact that the objection was not raised in the previous examiner's report would have been immaterial. Examiners, being human, sometimes do not notice a defect. If the defect is noticed later, then the examiner has to object to it, even if doing so reveals that the examiner had made a mistake in the previous report. Compliance with the Act & Rules is certainly more important than hiding a mistake.

In regard to the broader issue of focusing the examination on "important matters of substantive patentability", when preparing Quality Standards for National Examination, CIPO looked closely at the Australian Quality Standards, among others. However, the Patent Act & Rules do not give the option of ignoring part of them. None of the Rules are identified as "minor rules". If the application does not comply with the Act & Rules, the examiner has to bring it up in an objection.

Standard 3.1, includes a note stating that "Clarity matters do not extend to minor defects of grammar or spelling which do not lead to ambiguity (i.e. which would not give rise to an objection under subsection 27(4) of the Patent Act). An examiner should not delay an application from allowance merely to clean up trivial defects of language." So an examiner can ignore a minor issue, but "minor issue" is defined as something that does not actually contravene the Patent Act & Rules. If there was a lack of support for the claims, that would certainly not be a minor issue.

S. White asked if examiners are encouraged to phone agents if there are only minor issues with an application. I. Robert responded that phone calls for minor corrections can create problems in that there is no deadline to respond and information can be lost or delayed and often does not lead to a time gain over simply issuing an Examiner's Report.

3j Office Actions

A. Ionescu raised a concern with Office practice related to unity of invention objections. The specific case for discussion involved the examiner identifying 38 alleged distinct inventions with respect to a single claim. A. Ionescu asked if the unity objection in this case is at the Examiner's discretion, or "must" the examiner raise a unity of invention objection even if there is no serious burden on the examination of the alternative claiming? If the members or elements of the alternative claiming share a "common utility or activity" and are closely related must the utility be unobvious in order to have a single invention? In the case of alternative claiming what is the Patent Office position, especially having regard to Judges' articulated principle that "Applicant has the right to claim his invention as he sees fit"?

C. Evans commented that CIPO is presently amending chapter 14 (Unity of Invention) of the MOPOP and it would be premature to address specific issues relating to alternative claiming since the revision is still ongoing. Synergy effect is an area that needs work and CIPO is looking at a balanced and sensible approach to the issue. Comments from IPIC will be welcomed during the public consultation period.

A. Ionescu noted that the US examiner only found four or five separate inventions during prosecution, and questioned why CIPO would employ such a pedantic approach. C. Evans replied that he could not comment on the specific thinking of a particular examiner.

A. Ionescu commented that nowhere in the unity PERM does it say that the applicant can argue the unity objection. C. Evans indicated that Rule 30(2) allows the applicant to provide arguments as to why the application does comply, and as a result, since it's clear that arguments can be made to traverse an objection, CIPO doesn't usually include such a statement.

R. Caldwell added that the IPIC comments on Chapter 14 of MOPOP will be presented to CIPO this week, and urged CIPO to use a more practical approach to unity. R. Caldwell suggested taking into account the unity practices of other jurisdictions, since unity objections with a large number of alleged inventions only drive the applicant away from the patent process.

3k Patent statistics

A. Ionescu proposed publishing certain patent statistics regularly. A. Ionescu was thanked for his input and CIPO will see where enhancements might be beneficial.

Dashboard Highlights for March 2010, Additional Patent Statistics for March 2010, and an Online Feedback Mechanism summary for patents 2009-10 were included in the JLC members' information packages.

B. de Schneider commented that many of the statistics proposed by A. Ionescu are available in CIPO's annual report or through WIPO. Some stats suggested by A. Ionescu are basically 0% and, thus, are not reported. A report outlining statistics related to published service standards will be produced quarterly. Beginning next fiscal year, subsequent office action timing will be reported quarterly against published service standards. One problem with certain data is that CIPO's annual report doesn't get tabled until late in the year or into the next year, therefore delaying the release of some statistical analysis. B. de Schneider will investigate releasing some statistics earlier in the summer if possible.

B. de Schneider reminded that info can always be requested via Access to Information.

4. Other Business

No such items were identified.

5. Issues Covered In Previous JLC Meetings

No such items were identified.

6. Specific Enquiries

6a New office practice

A. Ionescu inquired about changes in the title that now require payment of the amendment after allowance fee (contrary to MOPOP chap 19.03.06). K. Rooney discussed this issue with A. Ionescu prior to the meeting.

6b Courtesy letters

A. Ionescu inquired about the Office providing a Courtesy Letter requesting an Entitlement Declaration by fax or e-mail, in situations when the requisition is sent shortly before the deadline.

S. Périard called A. Ionescu regarding this matter.

7. Delayed To Next Meeting

7a Amazon Decision

This topic was pushed to the next meeting since M. Eisen was not present in person.

8. Next Meeting

The next meeting is scheduled to take place October 27, 2010 [at 9:30 a.m. in Room D, 24^th floor, Place du Portage, Phase I, 50 rue Victoria, Gatineau QC K1A 0C9]

The meeting adjourned at 11:15AM.