Archived — Record of discussion: Joint Liaison Committee

Minutes - Thursday, November 15, 2012

Chair: Christine Genge, Smart & Biggar

Attendees

CIPO

Mesmin Pierre, JLC — ID Co-chair (Director)
Lynne Pelletier (Manager, Business Operations)
Francine Bouthillier (Manager, Planning and Resource Management)
Rita Carreau (Manager, Technical Policy)
Micheline Vincent (Project Manager, IT Projects)
Tracey Fitzpatrick (Program Officer)
Alan Troicuk (Senior Counsel)

CIPO Observers

Kathleen Bracci (Program Officer)
Carla Giannetti (Supervisor, Examination)
Layla Askari-Farahani (Examiner)
Suzanne Provencher (Communications Officer)

IP Profession

Christine Genge, JLC – ID – Co-chair (Smart & Biggar)
James Longwell, (Gowling, Lafleur and Henderson) * via teleconference
Alain Provost (Robic) * via teleconference
Curtis Behmann (Borden, Ladner Gervais)
Kimberley Lachaine (Kirby, Eades, Gale, Baker)
Philip Oliver for Susan Chao (MBM IP Law LLP)
Taiji Yoshino (Nelligan O'Brien Payne)
Clark Holden (Osler, Hosken & Harcourt, LLP) * via teleconference
Stephen Perry (Perry & Currier)
Kent Fincham (MacRae & Co)
Ian Paul Goodman (Shapiro Cohen) * via teleconference
Jennifer Jannuska (Deeth Williams) * via teleconference
Jean-Charles Grégoire (Marks & Clerk)

Absent

Christopher Hunter (Norton Rose OR S.E.N.C.R.L., s.r.l./LLP)
Peter Everitt (Ridout & Maybee LLP)
Michel Sophia (Bereskin & Parr LLP/S.E.N.C.R.L., s.r.l./LLP)

1. Welcome and Introduction

(C. Genge)

Welcome to everyone
There is a Webinar coming up at the end of the month on Design rights in Canada and the US. Details were sent via email.

2. Introductory Remarks

(M. Pierre)

All CID Staff are being invited to participate in the Webinar on Design rights in Canada and the US. This will be the first event in our new ID Speaker Series for staff.

Human Resources

Two new Examiners joined us in September and are working through our Training and Development Program. There is also a new Processing Clerk working with the branch, and two retirees have come back to help keep up with the processing.

Statistics

So far this year, the Office is on par with the number of applications from last year, having received approximately 2500.
1900 designs have been registered, down from 2200 at this time last year.
Maintenances are up from 932 at this time last year to 1400 this year.
The Office is looking into making up to date statistics available online, in order to be transparent, and communicate more frequently. We are waiting for input on the possibility from our IT team.

C. Genge asked how far back the stats are from.
M. Pierre responded that they are from September 30th.
J. Longwell asked about the Speaker Series.
M. Pierre responded that the Office is looking to the community of experts to share their knowledge and experience with CID staff every month or two.

3. Presentation on Updates to Electronic Services

(M. Vincent)

It has been noted that the minutes from the ad hoc JLC meeting that took place last July have not yet been sent out. They will be sent out shortly (note that the minutes were sent out on November 15th, 2012).
At the ad hoc meeting, members were presented with a summary of changes that have been requested:
- The Interface between Patents, Trademarks, Industrial Designs and Copyrights will all have the same look.
- XML upload will be available where applicable.
- It was proposed that in the case of Industrial Designs, the description field be broken into sections; description of the design and description of the images.
- When images are not submitted in the proper format, there will be a conversion tool and users will be able to preview the converted images.
- We consulted on the possibility of issuing filing certificates electronically.
- We are looking into assigning file numbers immediately.
Members provided positive feedback on the possibility of auto population, the idea of dividing the application into sections, certificates being available online.
Members requested the ability to send images in PDF format.
The Office is currently reviewing the requests with the IT Developers, and hopes to begin development with a goal of a summer 2013 release date. Further updates will be available at the spring 2013 meeting.
The interface for the Copyright online application has been developed at a high level. The goal for implementation is spring 2013.
For general e-services, we are in the requirements gathering stage.
Oracle 11-G is progressing well. The Copyright update will be released in December. There is not yet a release date for the Industrial Design update.
J-C Grégoire asked if there would be a way to amend an application that was filed electronically.
M. Vincent responded that this is part of the plan. The Office would like to have integration with applications and DesignPlus.
C. Genge asked if the Copyright application would have the same look and feel.
M. Vincent responded yes.
C. Genge asked if members would be able to see the prototype in development.
F. Bouthillier responded that this is in the plans. The Office is currently trying to find a way to do this.
M. Pierre suggested that the ad-hoc meetings continue between now and implementation.
F. Bouthillier and C. Genge both agree.
The Office will continue with small improvements between now and then.
Updates will be provided as they become available.
S. Perry asked if the Office had given any thought to electronic office actions.
M. Vincent responded that the Office is looking into whether this would be possible to implement.
C. Genge asked for clarification on the Oracle Project.
M. Vincent explained that the internal databases are all built on Oracle forms. Up until now they have all been server based. CIPO is switching to web-based applications. These are simply internal changes that will facilitate implementation of other changes in the future.
C. Genge asked if Industrial Designs would be the first product line to be updated.
M. Vincent responded that Copyright would be first, followed shortly by Industrial Designs.

4. Updates on Industrial Design Practices

(R. Carreau; L. Pelletier)

Delay of Registration (R. Carreau)

Changes to office practices have been delayed because of the Oracle update.
The Office is still working on the Delay of Registration practice change.
The Office is proposing to start the delay on the date of allowance, but would like to know when agents would be most likely to file a delay i.e. upon filing or would it depend on the circumstances?
C. Genge and C. Behmann both responded that it would generally be upon filing.
R. Carreau explained that upon receipt, the Office would acknowledge the request for delay. Upon allowance, the Office would send a notification that the delay is beginning.
C. Genge noted that the Office may receive an increase of requests for delay in order to trigger a notice of allowance.
M. Pierre stated that a goal of the Office is to reduce pendency.
C. Behmann suggested publishing statistics for applications with no delay request.
R. Carreau noted that the Office currently has very few requests for delay of registration, and asked if it was a rare thing for clients to need additional time before going to market.
C. Genge responded that it is the exception, but that clients may wish to file a delay for certainty.
R. Carreau asked if applicants in certain sectors would be more likely to request a delay of registration.
C. Genge responded that pharmaceuticals require approval before their release, which may necessitate a delay.
C. Behmann added that the same situation could apply to food products.
M. Pierre explained that the CIPO's Guiding Principles are Transparency, Client Service and Certainty. The Office wants to provide clients with what they require.
J. Longwell asked if there were any statistics on delay of registration in terms of what type of clients use this service.
F. Bouthillier responded that the Office has not yet done an analysis of this information.
M. Pierre acknowledged that this may help the Office to understand what is driving the request.
L. Pelletier asked if it would be useful to include associations in a notice of allowance (especially those that the Office has associated without a request from the client).
C. Genge responded yes, this would be helpful .
R. Carreau explained that the Office would only be able to provide this information in relation to files being handled by the same agent.
C. Behmann asked for clarification if this would only be done for files with delays of registration.
R. Carreau responded affirmatively.
K. Bracci asked Christine if it would be likely that delay requests would be made just for the purpose of receiving a notice of allowance.
C. Genge responded that she did not know.
K. Bracci noted that it is our understanding from past conversations that in addition to the rare situations previously mentioned, delays are also required for the purpose of filing divisionals, and she asked if this was accurate.
C. Genge responded yes.
K. Bracci asked if there were any other reasons for applicants to request a delay of registration besides those already mentioned.
C. Genge responded that there were no other reasons she could think of.

Accelerated Examination (R. Carreau)

With regards to Accelerated Examination, the Office has agreed to implement a new practice to do an earlier search in the case of priority, where a certified copy of the priority filing certificate has been voluntarily submitted, which supports the claim to priority. This change will take effect in the new fiscal year since IT changes will need to wait until the Oracle upgrade is completed.

Divisional applications (L. Pelletier)

Further to an inquiry at the last JLC – ID meeting, it is part of the Office's practices to link parent and divisional applications in the DesignPlus system to register on the same date. The wording of Examiner's reports has been updated to clarify that all parent and divisional applications will be registered together regardless of whether or not it was requested. The Industrial Design Office Practices (IDOP) will also be updated shortly. An email will be sent out to mailing list subscribers to let them know when the update has been done.

Priority Filing (L. Pelletier)

At the last meeting, it was brought up that there was inconsistency between the priority filing information found on the filing certificate and in the registration package.
This was a training issue. Staff has been retrained in this area. If any problems, agents are invited to contact the Supervisor of Search and Processing (Adam Racine: adam.racine@canada.ca).
K. Lachaine brought up that she has seen examples where the address was correct on the filing certificate, but incorrect on the registration certificate.
L. Pelletier asked that she send any examples of this situation to her at (lynne.pelletier@canada.ca)

5. International Activities

(F. Bouthillier, R. Carreau, A. Troicuk)

Locarno Union (F. Bouthillier)

The Pilot Working group is working to develop an indexing system to complement the Locarno classification system based on the visual features rather than the functional features.
Canada is an observer, but is actively participating.
The Group will proceed and will report to the committee of experts.
The committee has requested an action plan by the end of December, followed by a true pilot testing.
The meeting last meeting also looked at proposals to the changes of the 9th Edition of the Locarno Classification.
The 10th Edition of the Locarno Classification has been published in the final report.
The paper version will be available in June 2013. This will be the last paper version. The electronic version will be available in December 2013. The changes will take effect on January 1, 2014.
All of the reports are available on the following link.
C. Genge asked if CIPO is moving to join the Locarno Union.
F. Bouthillier responded that CIPO is trying to stay abreast of what is going on, and would be implementing a concordance with Locarno into its system to help clients. CIPO has, however, not yet decided whether or not it will join.

Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) (R. Carreau)

The most recent meeting took place in September, with most of the time being devoted to industrial design, namely work to harmonize administrative requirements with a view towards an eventual ID Law Treaty. The meeting began with a review of the study completed by the WIPO Secretariat on the impact of implementing an industrial design treaty, particularly the impact on developing countries. The study was based on a survey of all IPOs, as well as ID practitioners and filers in member states.
Although the majority of member states were satisfied with the study, developing countries (such as Egypt, Brazil, India and South Africa) expressed that the survey did not address their particular needs in terms of cost and their capacity to implement such a treaty, and asked that the survey remain open for further work.
Discussions continued with a detailed review of draft articles and draft regulations. Up to this point, Canada has been mostly in compliance with the provisions with a few exceptions. After these discussions, the language of the draft provisions still remained quite broad and decisions on certain options in the text will need to be made going forward.
In terms of next steps, some member states led by the European Union supported a recommendation to convene a diplomatic conference as early as possible.
Without a mandate to negotiate a treaty, Canada remained neutral throughout discussions.
Canada has since obtained a mandate to actively participate in discussions at the next SCT meeting in December and in future negotiations.
A.Troicuk commented that Canada will need to look carefully at the grace period provisions, representative for service requirements, as well as other technical points.

The Hague Agreement (A. Troicuk)

There is presently no government decision for Canada to join the Hague Agreement.
The Hague Agreement currently has approximately 60 members. The US and Japan are planning to join in the near future.
CIPO has prepared a Gap Analysis to determine the legal and technical implications of adhering to the Hague Agreement. This document was sent out to JLC – ID members via email on November 8, 2012.
Any comments on this document or regarding the impact on the Canadian system are welcome.
Some issues relating to the differences between the Canadian and Hague systems will require further thought and analysis. For example, in Canada, the way in which the finished article is identified in the title is of importance for the assessment of the originality of the design and for determining the scope of protection of a registered design. The Hague Agreement requires an indication of the product or products which constitute the industrial design or in relation to which the industrial design is to be used; however, this product information would not appear to necessarily match the information provided by the Canadian requirement to provide a title. Given the importance of the title in the Canadian system and the inability for Contracting Parties under The Hague Agreement to refuse an international application for not satisfying requirements as to form or contents, the consequence of this divergence is potentially significant.
C. Genge responded that she would review the document. She will follow up by the end of the calendar year on the preferred approach for providing feedback.

6. Presentation of Association Internationale Pour la Protection de la Propriété Intellectuel (AIPPI) Survey Results

(C. Behmann)

The AIPPI recently established a standing committee on designs.
A design questionnaire was sent to various international AIPPI groups.
Due to the low number of replies, the questionnaire may be resent.
In general, it was agreed that the definition of design includes shape and appearance in general. There is no reference to beauty, and designs could be either 2 or 3 dimensional forms.
Overlapping with other IP rights is generally allowed.
Registration is necessary in all responding jurisdictions except for the EU.
Registration requirements all include some type of graphic representation.
There are no specific rules regarding novelty and infringement.
The term of protection for responding jurisdictions ranges from 10-25 years.
Most national groups are satisfied with the level of design protection, but agree that there is insufficient use of designs.
R. Carreau asked about the background of the committee.
C. Behmann explained that since there are similar committees in AIPPI for other areas of protection it was decided that a similar committee for designs should be established. The first step was to determine what other countries felt was important and to address gaps in design.

7. IPIC ID Committee Items

(C. Genge)

Delay of registrations

C. Genge asked if it was possible to retroactively make corrections.
L. Pelletier responded that agents are welcome to bring any of these files to the attention of the Supervisor of Search and Processing (adam.racine@canada.ca) and the Office would try to address them.

Date of Abandonment

C. Genge asked: What is the policy on determining the date of abandonment if it falls on a weekend?
R. Carreau responded that the date of abandonment in Office communications is the actual date, whether that is a weekday or a weekend day. In the case where the abandonment date falls on a weekend, it is the Office's practice to not abandon files until the Monday.
C. Genge explained that in Patents it is their practice in the above example to indicate in their communications that the date of abandonment is the Monday date.
K. Lachaine did not agree or at least was not aware of this patent practice.
K. Fincham noted that in ID the practice is not the same as in Patents. A time limit can fall on a weekend, and they will accept the response on the Monday. In the case where a time limit falls on a Saturday, his firm will submit the response on the Friday to avoid legal risk, since the ID Act and Rules do not provide for extension of a time limit that falls on a Saturday to the next business day.
R. Carreau agreed that the ID Act and the Interpretation Act do not strictly cover extensions of time limits for Saturday in the same way as for Sunday, although as indicated in CIPO's correspondence procedures, the practice of the ID Office is to accept the response on the next business day.

Objections on drawings

Examiner's objections to drawings are often unclear.
L. Pelletier responded that she would speak to the Exam team to remind them that they should be tailoring standard paragraphs to suit the circumstances.

8. Round Table

K. Fincham noted that he occasionally receives a report indicating that the application contains more than one design, but that the report does not identify which designs are considered to be separate.
K. Bracci responded that this may have happened in cases where there is an extremely large amount of variants and/or articles, many of which are very different in appearance. The Office should be identifying which designs are considered to be separate. Examiners will be reminded of this.
M. Pierre expressed his thanks for the feedback and an informative meeting. The Office will be following up with JLC-ID members regarding the new speaker series.
F. Bouthillier clarified the service standards for turn around times:
- Filing to conform – 2 weeks (3 weeks is the published standard)
- Filing to first action – 5.6 months (8 months is the published standard)
- Filing to registration – 9.3 months (there is no published standard)
M. Vincent explained that the Office often receives questions regarding the online application. The description field currently only allows 3900 characters. The Office is working on this, and hopes to have it resolved shortly. An email will be sent to subscribers once this is corrected.

9. Closing Remarks