Joint Liaison Committee - Meeting #124

Thursday, October 20, 2011

Attendees

1. Minutes of the Previous Meeting

The minutes of the meeting of June 16, 2011 were approved with the following amendment:

The year was added to the date on page 1 of the French version of the minutes, as it had been noted by N. Pellemans to have been omitted.

2. Business Arising

(from June 16, 2011 meeting)

3b USPTO dashboard

At the previous JLC meeting of June 16, 2011, the Office had asked IPIC members' opinion regarding the usefulness of the information provided in the USPTO dashboard of service statistics. A. Lajoie explained that the Office is looking to provide a clearer and improved picture of the service which it provides. If IPIC members have any suggestions, they may e-mail them to the Office, preferably before the next JLC meeting in February so that ideas may be considered before the publication of service standards of the next fiscal year 2012/2013. D. Campbell added that the USPTO dashboard provides various kinds of data, including information on workloads and service standards, and the Office would like to know what information IPIC members would find useful to have.

L.-P. Gravelle indicated that he would canvass IPIC members for ideas.

4h Handling of Special Order Applications

This item pertained to the Commissioner having established a time limit of three (3) months to respond to examiners' requisitions with respect to patent applications benefiting from advanced examination under Section 28 of the Patent Rules. At the previous JLC meeting, M. Eisen had asked if there was anything preventing the issuance of guidelines for extensions of time as seen in the Trade-marks branch. S. Vasudev noted that the Trade-marks branch does indeed provide information on specific situations in which extensions of time may be provided. He added that the Patent Branch will look at providing similar information and that this item will stay on the JLC meeting agenda, with an update to be provided at the next meeting.

H. Probert indicated that some examiners' reports for special order applications have stated that there is a 3-month time-limit for a response while others have stated that there is a 6-month time limit to a response. S. Vasudev responded that reports for all special order applications are to state that the time-limit to a response is 3 months and he asked that special order application numbers for any reports indicating that the time-limit is 6 months be provided to the Office.

3. Ongoing Items

At the outset of these items, A. Lajoie indicated that, in future JLC meetings, the first four items 4a to 4d under New Business will be displaced to this juncture of the agenda, as items 4a to 4d pertain to Ongoing Items.

3a Corporate Feedback Mechanism report

The JLC was provided with an electronic copy of a report titled "Patent Branch: April-August 2011 Results". Included in the report was a section titled "Online Feedback Mechanism", providing an overview of the patent-related feedback received via the Online Feedback Mechanism on CIPO's external website for the period of April 1, 2011-August 31, 2011.

During this period, 97 feedback transactions were recorded for the Patent Branch, of which 79 were complaints, 3 were comments, 14 were requests and 1 was a compliment. The 79 complaints were categorized as follows: 32 were related to mail/documents not yet received, 32 were related to the application process, 6 were related to the Canadian Patents Database, 5 were related to the examination process, 2 were related to customer service and 1 was related to each of payment and fees and IP rights. A. Lajoie indicated that the Office appreciates the feedback and the opportunity to fix any problem issues that are identified. L.-P. Gravelle added that, for new members of the JLC, items discussed in the JLC meetings are those that affect the profession as a whole. The online feedback mechanism is an efficient and effective means of bringing any particular issues that may arise to the Office's attention.

3b Service standards

The electronic copy of the report titled "Patent Branch April-August 2011 Results" contained sections titled "Service Commitment Results" and "Production Volume Statistics".

L. Giardina summarized Patent Examination's "Service Commitment Results" for April to August 2011. Patent examination service standards for provision of an international search report and written opinion, provision of an international preliminary report on patentability and first action and subsequent action turnaround times (TATs) have been met. Of note, first office action TATs are reported as the percentage of applications awaiting in the inventory, while subsequent office actions are reported as percentage completed.

M. Paton had asked whether the division to which the examiner of a given case belongs could be indicated in an acknowledgement of a request for examination or in an office action, as it is not always obvious which division is responsible for a given subject matter. L. Giardina indicated that the Office may modify the examiner's signature block to indicate with an abbreviation the division and section to which the examiner charged with a case belongs.

S. Périard summarized Patent Operations' "Service Commitment Results" for April-August 2011. Results were presented as percentages of applications meeting a particular service standard. In the periods of April-June and July-August, issue of a filing date within 4 weeks upon receipt of an application meeting filing requirements was achieved in 98.5% and 97.4% of cases, respectively. Issue of a confirmation date of national entry for PCT applications within 8 weeks upon receipt of an application meeting entry requirements was achieved in 95.2% and 75.2% of cases, respectively, with the ground lost during the summer months being regained presently. Issue of ownership registration certificates was achieved in 89.8% and 95.2% of cases, respectively.

4a Regulations Update

S. Vasudev provided the JLC with an update on Regulations and the Rules amending the Patent Rules.

Due to new government priorities, there has not been a lot of movement in this regard since the previous JLC meeting. However, the Office continues to try to move forward on Package 3a of the Rules amending the Patent Rules, which has a view to simplifying and clarifying final action procedures, Package 3b of the Rules, which is aimed at harmonizing the examination processes for qualification of patent and trademark agents and Packages 2a and 2b, directed to simplifying operational processes. All of these packages are in a relatively advanced stage, and the Office is trying to make them ministerial and government priorities.

4b Section 8 Update

C. Evans provided a Section 8 update.

Since the last JLC meeting, due to fewer resources being available during the summer months, the pending inventory of Section 8 requests has seen an increase. A triage of Section 8 requests will allow a distinction between requests relating to Office errors and those due to client errors. In addition, two separate mechanisms of correction are being advanced, one of which dealing with errors in applicants' names. For pending section 8 requests, clients may receive a letter instructing them to contact Raouf Ali Ahmed regarding the alternative mechanisms of correction. More concrete information will be provided at the next JLC meeting.

4c MOPOP Update

C. Evans provided a MOPOP update.

At present, there are four MOPOP chapters under revision.

The consideration of comments from the public consultation on MOPOP Chapter 14 (Unity of Invention) has been finalized, and the Office is preparing to present the revised draft of the chapter to the Commissioner.

The Office would like to have a public consultation on MOPOP Chapter 21 (Final Actions) to run in parallel with the consultation in Canada Gazette I on Package 3a of the Rules amending the Rules.

The internal consultation on MOPOP Chapter 15 (Novelty, Obviousness and Double-patenting) is complete, and the Office is preparing for a public consultation which is expected to begin sometime between late November and early 2012.

MOPOP Chapter 17 (Biotechnology) is well into the pre-internal consultation drafting stage. It is hoped that internal consultation will take place by the end of 2011 and public consultation will take place in 2012.

Due to other resource pressures, no start date can be provided at this time for revision of MOPOP Chapter 11.

4d PPH Update

K. Murphy provided the JLC with a PPH update.

The PPH request forms have been updated online, and clients are asked to use the new versions for the sake of consistency and error reduction. The PPH agreements with Denmark, Japan and Korea have been extended for an additional two years and will be ending September 30, 2013.

As of October 17, 2011, Tania Nish is replacing Enji Al-Saber as PPH coordinator. As of October 1, 2011, the number of PPH requests is as follows: 1773 through the CIPO-USPTO agreement, 58 through the CIPO-JPO agreement, 7 through the CIPO-DPMA agreement, 4 through the CIPO-KIPO agreement, 1 through each of the CIPO-NBPR and CIPO-DKPTO agreements and 16 through the PCT-PPH (CIPO ISA/IPEA) agreement for a total of 1860 requests.

In terms of examination statistics as of September 1, 2011, grant rate for PPH, PCT-PPH and non PPH applications is 81.8%, 100% and 49.4%, respectively. First action allowance rate for PPH, PCT-PPH and non PPH applications is 51%, 83% and 7.5%, respectively. For PPH and PCT-PPH applications, the average pendency to first action is 3 months, while the average pendency to first action for non PPH applications is 18-32 months depending on the discipline. The average pendency to final decision is 5.1 months, 1.1 months and 43.0 months for PPH, PCT-PPH and non PPH applications, respectively. The average number of office actions per final decision is 0.6, 0.2 and 1.5 for PPH, PCT-PPH and non PPH applications, respectively.

More information related to the PPH processes can be obtained from CIPO's website under the Patents screen, as well as from the JPO website which maintains a "PPH portal" for all PPH agreements.

M. Paton asked if CIPO planned to expand the PCT-PPH to include cases where the USPTO acts as the ISA/IPEA, as the USPTO will be accepting cases for PCT-PPH where CIPO has acted as the ISA/IPEA. K. Murphy responded that CIPO does not have plans to expand their PCT-PPH at this time.

D. Andrade observed that the service standard for provision of a first action for a PPH application is 3 months. He wondered at what point the Office should be contacted if no first action has been received in that time. K. Murphy responded that if no first action for a PPH application is received within 3-4 months, the PPH coordinator should be e-mailed.

A. Lajoie noted that use of the PPH offers great benefits, especially when the time required to bring a PPH application to finality, which is about 5 months, is compared to that same time required to bring a non-PPH application to finality, which is 43 months. S. Vasudev added that the Commissioner was in Geneva for the WIPO General Assemblies and that planning for a pilot PPH agreement with the UKIPO is in the initial stages.

I. Clark observed that 49% of PPH applications still have a first action report and wondered what such actions generally contain.

K. Murphy responded that data regarding the defects identified in these examiners' reports is collected. Sometimes the defects are related to jurisprudence that is unique to Canada. There are instances where prior art is found, however this occurs less frequently. C. Evans added that such reports can also be related to minor informalities such as incorporations by reference and unidentified trade-marks and other non-compliance issues requiring correction. H. Probert affirmed that most reports deal with formalities but that a substantial number relate to practice subsequent to the Amazon court decision as well as objections under subsection 27(3) of the Patent Act due to inclusion of statements regarding the "spirit of the invention".

4e Post-Amazon.com Practice Guidance

K. Ledwell opened this item with a question regarding the process by which the Post-Amazon.com practice notice was issued. Notably, when revisions are made to MOPOP chapters, input is gathered from the public. However, in the case of this practice notice, no such input was requested. He further opined that CIPO's stance with respect to software patenting is inconsistent with other jurisdictions and also with CIPO's mission of encouraging innovation. Mr. Ledwell added that the Federal Court recognized that CIPO has adopted a policy of limiting the allowability of software patents and that the practice notice merely changes the wording and name of the test for patentability.

A. Lajoie responded that the Amazon.com case is a unique situation, the case being presently before the Court. The practice was prepared taking into account the legal opinion of the Department of Justice and so as to be consistent with the factum presented in court, preserving the integrity of the Crown. Ms. Lajoie added that CIPO's position is not a personal stance against any technical field. The Office is looking for clarity and consistency with respect to the test to apply regarding patentable subject matter, with each case being examined based on its own merit. Clarification on this issue will be from the Court. C. Evans noted that guidelines in Chapter 16 of MOPOP form the basis of the practice regarding patentable subject matter, and that this practice does not say that anything related to software is unpatentable, but rather requires a determination of the effect that software has on a machine.

L.-P. Gravelle asked the reason for which it took so much time to issue the practice notice, and also questioned the rationale behind issuing the notice at all since the decision by the Federal Court of Appeal will be rendered soon.

A. Lajoie answered that the legal opinion from the Department of Justice was required for the drafting of the guidance. She added that, at the previous JLC meeting, the Office was asked to explain why examiners were not working on cases to which the Amazon.com case is relevant, and it was explained that examiners needed guidance for moving these cases on to the next step in examination.

A. Brett asked whether CIPO has the right to continue to follow its current practice. D. Andrade added that the law that stands is the decision by the Federal Court, and that CIPO appears to be acting in compliance with the factum that is arguing that the law is wrong.

C. Evans responded that the Department of Justice and the Attorney General came to a legal decision as to what is the state of law and based that decision on a number of Court decisions. A. Lajoie affirmed that CIPO is following the law and that the Amazon decision is not considered in a vacuum but rather in the context of many Court decisions.

L.-P. Gravelle concluded this item by reminding IPIC members that, in terms of responding to reports following the practice notice, nothing prevents them from arguing what they consider to be the law.

4f Change of Title (by CIPO for the title on Page 1)

J. Pivnicki had submitted a question regarding CIPO's practice where an application is allowed and the title on page 1 of the application differs from that on file. In such cases, CIPO notifies the applicant that the title on file has been changed to that found on page 1 and that, should the applicant wish to revert back to the title used during the prosecution of the application, the title may be amended after allowance with the standard $400 amendment after allowance fee applying. Mr. Pivnicki argued that this is a clerical matter which should be completed with an amendment after allowance with no charge to the applicant, as per subsection 32(1) of the Patent Rules.

S. Périard affirmed that this is CIPO's practice as of January, 2009 and that the Office would be reviewing this practice. C. Evans indicated that a disagreement between the title in the description and that found in the petition of an application is not a defect in and of itself, because Rule 80 of the Patent Rules only pertains to the title in the description. Therefore, the title that is chosen for the patent is that which is found in the description at allowance.

M. Paton observed that when, on national entry, a voluntary amendment is submitted requesting that the title of the application be changed, the notice of national entry that is issued still indicates the title at the time of PCT publication and not that of the amendment. She wondered if clients should be concerned about this discrepancy.

C. Evans responded that the filing certificate is not a binding document, however where the notice of allowance indicates a different title, clients should get in touch with the Office.

A. Lajoie indicated that the Office will follow-up on these issues and they will appear under "Business arising" at the next JLC meeting.

4g General statement regarding the "scope of the invention"

J. Pivnicki had noted that objections under subsection 27(3) of the Patent Act were appearing in Office actions to statements in the description which broadly refer to the spirit and scope of the invention or which passingly mention the claims. He wondered why such objections were now being made.

D. Campbell responded that this item pertains to the revised MOPOP chapter 9, which has been in effect since December, 2010. Specifically, section 9.05.06 of MOPOP chapter 9 deals with statements in the description which expand the scope of the claims. The section sets out 3 example statements, one where phrasing is acceptable and two others where the phrasing is unacceptable. The practice originates from the Free World Trust decision, which indicates that these statements cannot be used to widen the scope of the claims.

An IPIC member via conference call noted that there have been instances where examination staff has requested that applicants delete such paragraphs appearing at the end of applications, and then a request is later sent by the Office indicating that the application is incomplete since the last paragraph appears to be missing. C. Evans asked that the numbers for applications where this has occurred be provided to the Office, and added that such cases likely arise from a misunderstanding as to whether the page where the paragraph had been found had been intentionally left blank.

A. Brett argued that the Free World Trust decision deals with claim construction and does not say what can or cannot be stated in the description. L.-P. Gravelle agreed that the decision deals with purposive claim construction and does not say that "spirit of the invention" statements must be removed from the description. H. Probert added that objections to such statements are especially onerous where applications are on the PPH and these objections are the only thing holding up the allowance of the applications.

D. Campbell thanked the IPIC members for their opinions and explained that these statements suggest that the scope of the claims does not constrain what the invention is and therefore creates a defect in the description, which must fully describe the invention. While paragraphs indicating that the preferred embodiments should not be construed as limiting the scope of the claims may be acceptable, references to the "spirit of the invention" are a different story.

G. Silver asked whether statements referring to "equivalents" would be objectionable. C. Evans responded that it may not be clear what an "equivalent" is, and the description should not allude to aspects which have not been described.

D. Campbell concluded this item by indicating that MOPOP makes clear what statements are not acceptable and that where examiners' reports are not consistent with MOPOP, clients should use the client feedback mechanism to report such inconsistencies.

5. Other Business

No such items were identified at this juncture of the meeting.

6. Issues Covered in Previous JLC Meetings

No issues covered in previous JLC meetings wee discussed at this juncture.

7. Specific Enquiries

Prior to the meeting, concerns had been addressed over a specific case where the client felt that the examiner was practising piecemeal prosecution.

At this juncture, D. Andrade argued that piecemeal prosecution is not a problem that is limited to one case but is, rather, a broad issue.

A. Lajoie asked that specific cases be identified so that the Office can target the problem. C. Evans indicated that examiners do their best in the short amount of time which they are given to examine an application. He added that, in some cases, a new defect may arise in view of a modification or clarification in Office practice.

K. Lachaine referred to specific cases where corrections are made to filing certificates and notices of national entry, but in the process of such corrections, the Office has made further errors. In another case, an assignment had not been filed yet recordable certificates had been issued. S. Périard asked that Ms. Lachaine provide her with the identities of the specific cases so that the problems could be rectified.

8. Delayed to Next Meeting

No items were delayed to the next meeting.

9. Date of Next Meeting

The next JLC meeting will take place on Thursday, February 16^th, 2012 [at 1:00 pm in Room D, 24^th floor, Place du Portage, Phase I, 50 rue Victoria, Gatineau QC K1A 0C9].

The meeting adjourned at 2:45 pm.