Patent Practice Committee Meeting PB/IPIC – Tuesday,

June 11, 2024

Tuesday, June 11, 2024 - 1:00 – 3:00 p.m.

Hybrid format: videoconference + in person meeting at 50 Victoria Street, Gatineau, Québec, Phase I, 4th floor boardroom.

Attendees

Co-chairs: Virginie Ethier and Jenna Wilson

Members: Scott Vasudev, Jeffrey Orser, Eric Lafontaine, Dominique Lambert, Jeff Leuschner, Jean-Charles Grégoire, Gabrielle Moisan

Secretariat: Marie-Claude Gagnon, Helena Forbes

Items

1. Introduction

CIPO welcomed everyone to this hybrid meeting.

2. CIPO updates

2.1 IGC Diplomatic Conference

CIPO reported that on

May 24, 2024

, WIPO Member States approved a new IP Treaty related to genetic resources and associated traditional knowledge. The final text establishes a mandatory patent disclosure requirement that requires patent applicants to disclose the country of origin or source of genetic resources and/or the Indigenous Peoples or local community providing the traditional knowledge associated with genetic resources, if the claimed inventions are based on the genetic resources or associated traditional knowledge. CIPO does not have any information to share at this time on the possibility of Canada signing or ratifying the Treaty.

2.2 Input for consultation on term adjustment

2.2.1 Amendments to Patent Rules

CIPO reported proposed amendments to the Patent Rules and various other regulations were published in Canada Gazette Part 1, on

May 18, 2024

. The consultation is open for 45 days and will close on

July 2, 2024

.

CIPO expressed thanks for the comments received at the meeting on May 30 th and looks forward to the official submissions.

2.2.2 Due Care

CIPO reported that the numbers of new reinstatement requests on a year to year basis are within a stable range but there is no apparent and definitive downward trend.

The office is improving its efficiency in processing and assessing the requests and observations.

A judicial review was brought to Federal Court in the matter of Taillefer vs. The Attorney General of Canada (2024 FC 259) in relation to the application of the due care standard with respect to the payment of maintenance fees and, on

February 16, 2024

, after a finding that the Commissioner's Decision was reasonable, and there was no breach of procedural fairness, the case brought before the Federal Court was dismissed. The case is currently being appealed by the Applicant to the Federal Court of Appeal.

There are currently 3 more judicial reviews that have been brought before the Court. As of yet, they have not been heard.

In responses to two questions that were raised at the Feb meeting:

• IPIC asked if the frequency of affidavits was known. After investigation, CIPO confirmed that they do not keep statistics on how many cases include an affidavit in their requests for reinstatement or reversal of deemed expiry.
• IPIC also asked if incorrect information from the Client Services Centre was a factor in these issues. After investigation, CIPO indicated that CSC misinformation did not play a pivotal role because the guardrails of the prescribed requirements established by the Rules is constant.

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2.3 PPH Update

CIPO reported that in January 2024, a pilot was conducted by sending PPH invitation letters, along with partially pre-filled PPH forms, to 100 randomly selected eligible applications with a US granted family member, forming an invite group. Concurrently, a control group consisting of 100 randomly selected applications who did not receive these letters was established, facilitating a comparative analysis. The aim was to understand if some applicants could be "nudged" to request accelerated examination under the PPH using targeted invitations.

After 3 months, a review indicated a significant increase in the invitation group (12 vs 2), representing a significant increase in PPH requests among the invite group applications. Furthermore, some of these applications have subsequently been allowed by the examiner, which is viewed as a positive outcome.

CIPO also recognizes the feedback that was provided in response to the pilot letters, particularly in regards to concerns about issuing the letters absent knowledge of the client's filing strategy and potential confusion with the use of the term "invitation" as well as the use of CIPO's resources. CIPO has considered this feedback and remains open to further comments.

CIPO is considering next steps, including expanding the PPH pilot and welcomes additional feedback on client experience with the invitation letters and any suggestions for better implementation and improvement going forward. Applications from France were noted as a possible area of expansion, based on commonalities in language and existing agreements between Canada and France.

IPIC remarks

IPIC questioned the randomization, given that several firms seemed to have received a large percentage of the invitations. IPIC noted that multiple invitations seem to have been sent to the same applicant, which they theorized might have skewed the randomization.

IPIC suggested that it is uncommon for applications to originate in France, as opposed to the EPO. IPIC further suggested changing the wording of the letter, if the PPH pilot is expanded, in order to mitigate some of the previously identified issues.

2.4 Final Action trends

CIPO shared some trends for the divisions on Final Actions. These numbers showed the number of Final Actions sent out by the different divisions for the years between 2019-2024. Of note, these trends showed that Electrical has a larger proportion of Final Actions than the other divisions, and that there was a trend downward in Final Actions sent out by the Office since 2019. It was theorized that the lower numbers of Final Actions in 2024 may be due to the recent focus on First Actions.

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2.5 Information Technology Modernization (ITM) project

CIPO noted that user testing has identified and resolved several bugs. Due to the complexity of patents as a domain, there has been substantial communication required between CIPO experts and the programmers to ensure that requirements are understood. CIPO assured IPIC that there will be continued investment and development post-launch.

CIPO stated that the go live date is planned for July 15 th. On this day, the MyCIPO patents portal will allow for filing of NER and maintenance fee payments; however, General Correspondence will still be available at least until the full functionality of the MyCIPO patents portal is deployed. IPIC noted that it had been previously stated that they would get 12 weeks warning before go live. CIPO replied that it was necessary to launch the system to avoid the high volume of the fall and to ensure the support of the technical contractors. They also noted no date would have zero risk.

In response to IPIC's questions about when the answers to the previous webinar questions going to be circulated, CIPO indicated that a document containing questions and answers in both official language will be made available to both in person and online attendees.

In addition, CIPO indicated that there would be two upcoming webinars shortly which would also be recorded. The first webinar (one on June 13 th in English, one on June 14 th in French will explain changes to the Canadian Patents Database (CPD) and IP Horizons as a result of the launch of NGP. The second webinar will share key information and dates of the MyCIPO Patents deployment (one on June 19 th in English, one on June 20 th in French). There would additionally be a phased approach to launch with a to-be confirmed 4-8 weeks of stabilization post-launch, to deploy the full access of the MyCIPO patents portal to all users. CIPO stated that there will be substantial support for users with the advent of the new system. There will be individuals at CSC specifically assigned to answering questions about NGP. In addition, there will be a command center staffed with programmers to address bugs that are identified. These programmers will be the individuals who have assisted with training.

CIPO further indicated that June 26 th would be the last day for MyCIPO patent onboarding and June 28 th would be the last day to request an activation code for maintenance fee payments using the current maintenance fee payment tool. Subject to confirmation, July 4 th is the planned last day to file through the current NER solution or use the current maintenance fee payment tool. Data migration will commence on July 5 th; during this data migration period, the legacy system will be decommissioned. Also, during this period:

• internal back-end systems will be down
• the CPD and IP Horizons will be unavailable
• document order requests and up-to-date status of patent applications will not be available,
• only date stamping will be available for incoming correspondence, and
• outgoing correspondence, including examiners' responses, will also not be sent out during this period, and will accordingly be dated when they are sent out after the data migration period. CIPO confirmed that these dates are set at the end of day. CIPO clarified that as the version of the NER solution included in the MyCIPO patents portal is distinct from the current NER solution, content is not carried over from one to the other. Thus, users must submit their drafts and download any submitted content they want to keep by end of day July 4th at the latest. CIPO also noted that while these dates may be subject to variability, these are the conservative estimated dates.

CIPO noted that although the new system may appear to be less sophisticated in some ways, it is actually more advanced. While the current NER solution requires human interaction before the application is fully entered into TechSource, the submissions made via MyCIPO patents portal, including NER filings, are sent directly into the backend system. CIPO further noted that prioritization of the work to be done has required compromises, but that they have tried to be transparent to users, in the end goal of delivering the best product to the patent community.

IPIC asked whether there will be an increase in the resources of General Correspondence processing. CIPO confirmed that additional resources had already been trained, and also noted that service standards had been increased last year, and will continue to be monitored in anticipation of and following the launch. CIPO further indicated that they will communicate the advent of additional issues, such as system outages, should these occur.

IPIC noted that there is a cost for users to redefine their processes to respond to examiner's reports; thus, it is imperative to understand what changes are happening and when. CIPO replied that they have prioritized usability, and that the user testers should help in mitigating these concerns. CIPO further observed that in NGP, documents are stored directly into the document management system, eliminating office errors in characterizing documents during the storage step. However, this advantage implies more rigid choices on the users' side, so that documents can be fit into the established categories. CIPO further noted that training had commenced from a readiness perspective.

IPIC questioned how staff will become aware of issues, if functionality is missing, and further noted that time will be of the essence in resolving such issues. CIPO replied that different communications are already in place (such as the list serve), and that, further, an incident management process is being established. CIPO further indicated that a number of exercises have been undertaken to anticipate pre-emptively what could go wrong and develop alternative communication methods.

IPIC requested that CIPO consider expanded hours for the CSC, particularly for users on the West Coast. CIPO replied that they would consider extended hours for the CSC. IPIC further noted that there will most likely be a wave of requests on July 4 th, prior to the data migration period, and questioned how actions such as maintenance fees would be processed, if inputted at the last minute. CIPO replied that payments made using the current maintenance fee payment tools are automatically processed and as such do not require manual interaction; in addition, any submission made using general correspondence during the "down" period will, as usual, have an electronic receipt generated automatically on submission, but the associated task(s) would not be actioned until ICU can enter the submission into the new system, starting on the 15 th.

In response to IPIC's questions about Twitter/X or a mailing list, CIPO further noted that no new channels would be added, other than the support one already mentioned.

Finally, CIPO observed that TechSource is 27 years old, and thus, there was a definite need for replacement to mitigate operational risks and enable service improvements. CIPO reminded IPIC that previous webinars showing the navigation of the new system are recorded and available on CIPO's YouTube channel. CIPO indicated that operations training has already begun on the new system, and training for examiners will begin shortly.

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3. Digital Services CIPO Website

3.1 Documents from bulk submissions not appearing in CDAS

Issue:

IPIC requested a follow up on this issue, raised in the February 2024 meeting.

CIPO's response:

CIPO reported that they do not have a fix for this issue yet. The bug appears to be related to a safeguard.

3.2 Delays in generating cover sheets for patent applications

Issue:

IPIC indicated that the issue of WIPO documents being improperly added to file histories, as addressed in the June 2023 PPC meeting (item 4.1) was ongoing. Two applications were provided as examples.

CIPO's response:

CIPO reported that as of

June 10, 2024

, there is no more backlog in generating cover pages for laid-open applications. The inventory for PCT application is 28 and for National applications is 53.

For the first example application, it was noted that the cover page has been on the CPD since

2023-02-24

.

The delay in the publication of the second example application's cover sheet was mostly due to the internal process and not because the WIPO publication could be seen.

Broader discussion:

IPIC noted that in cases where laid open dates occur on a weekend, the public cannot access them until the week, resulting in a discrepancy. CIPO replied that NGP will address this for NGP applications, and applications will be accessible on the date they come into NGP.

3.3 MOPOP updates

Issue:

IPIC asked whether the Office is planning to update MOPOP with updated subject matter guidance, and will there be any changes compared to the draft published for consultation? They also noted that the response in the consultation had indicated the guidance required more examples—particularly relating to AI.

CIPO's response:

CIPO reported the office is planning to update MOPOP with updated subject-matter guidance in view of the decisions involving Benjamin-Moore. There will be changes compared to the draft that was published for consultation both with regards to the Benjamin Moore decisions and in response to comments received during that earlier consultation.

CIPO is also planning to include new material regarding plants as well as to incorporate changes to medical uses following from the 2024 FCA 23 decision. CIPO intends to solicit feedback from the public on those changes in fall 2024, if all progresses efficiently from the NGP perspective.

Broader discussion:

CIPO reported that given the pressing need to publish a new version of MOPOP in view of the Benjamin Moore decisions, it will not be possible to establish working groups prior to the consultation and publication. That said CIPO will ensure that there is enough time to provide proper feedback to MOPOP. There may be opportunities after the publication of MOPOP to initiate discussions on patentable subject-matter.

On the subject of examples, these are difficult to craft as there is a tendency to draw conclusions that are not present. In effect, each application is assessed separately with the relevant evidence coming into play.

While CIPO will assess the examples in other jurisdictions for probative value, they generally find that each is tuned for their particular practice and so does not translate well into the Canadian landscape.

IPIC clarified that they were suggested using the examples provided from foreign jurisdictions rather than the discussion and analyses from the foreign offices. CIPO suggested that they could have further discussions in the fall, and this could be a route that could be investigated. IPIC further suggested additional examples could be helpful to examiners too.

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4. Operations - Business Processes

4.1 Alarming phrasing in courtesy letters

Issue:

IPIC noted that text in courtesy letters could be misleading and provided an example which read "your application, which was advanced for examination under subsection 84(1) of the Patent Rules, has been revoked as per your letter […]. All subsequent actions will therefore occur in their routine order." IPIC requested that free text authored by analysts be proofread to ensure that meaning is clear. IPIC noted that grammar and phrasing in both French and English should be beyond reproach as these communications are viewed by applicants and counsel all over the world.

CIPO's response:

CIPO noted that a template letter that is used by employees to ensure clean and clear language. The language provided by the agent in the example is not the language that exists in the template.

4.2 SFA courtesy letters

Issue:

IPIC inquired whether letters had been sent in all relevant cases. They indicated that they had had reports that some applicants had not received these letters, although in some cases, they were found in CDAS but not sent to the agent.

CIPO's response:

CIPO confirmed that the letters have been sent in all relevant cases at the end of March 2024.

4.3 Available for licensing

Issue:

IPIC highlighted previously raised concerns that applicants requesting their patents to be marked as available for licensing in the CPD have had their requests overlooked, requiring remedial steps. They inquired whether the Office can suggest best practices (how to submit, how to phrase the request) in order to minimize these errors?

CIPO's response:

CIPO responded that the requests must be sent using one of the official method of correspondence. The Patent Office has no suggested language to provide.

The Patent Office will do a reminder to the unit responsible to create the tasks for Patent Operations in order to minimize these errors.

CIPO further remarked that the new portal will have a specific service request for this. It will be available in the portal to the group having full access, and will become available to all upon full ITM launch. CIPO noted that this is a good example of where clients will be able to communicate more clearly with the office using the new portal.

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5. Examination - Practice

5.1 Reminders regarding 27(4) defects

Issue:

IPIC inquired whether there had been any further reminders regarding 27(4) defects or other issues in Exam Bulletins, and asked CIPO to share if there had been.

CIPO's response:

CIPO reported that there have not been any further reminders regarding 27(4) defects in Exam Bulletins.

5.2 Acceptable phrasing in Beauregard and computer system claims

Issue:

IPIC provided an example of a computer-implemented method for which the independent claim disclosed "a computer-implemented method" comprising a step of "receiving, via a processor" and then dependent claims disclosed

• "A computer system comprising a processor configured to implement the method of any one of claims 1 to 7" and
• "A computer program product comprising a computer readable storage medium storing program code which, when executed by a processor a a computer system, causes the computer system to implement the method of any one of claims 1 to 7." A defect was raised with respect to double inclusion of the term "a processor". IPIC noted that this is common phrasing for computer-readable medium (CRM) claims, and while it is true that the processor element is repeated, they doubted this is actually unclear.

IPIC further contended that CRM preambles may also come in various forms, but still have the required components. They noted that some such claims now attracted Section 2 objections. IPIC observed that these examiners seem to be ignoring the actual language of the claims, and/or requiring that the claim explicitly recite "non-transitory", and/or requiring that the language exactly match the examples given in MOPOP. IPIC asserted that none of this is correct.

CIPO's response:

CIPO thanked IPIC for raising this issue. CIPO stated that they always strive to be as consistent as possible. CIPO noted that they would look at this in more detail and make any clarifications with examiners, if and where needed.

5.3 "Improvements" to the functioning of a computer

Issue:

IPIC questioned why this appears to be the only test employed by examiners when they have decided that subject matter is at issue in a computer-implemented invention?

IPIC asserted that not every invention need "improve" the state of the art; it is sufficient to provide the public with a "useful choice", as the SCC quoted in Consolboard.

IPIC contended that the current guidance has resulted in tunnel vision in examination. Even if the Office's intent was only to provide a helpful guide that might be applicable in some cases, between the post-Amazon and post-Choueifaty guidance "improvement" guide has turned into the sole test used to determine patent eligibility. They noted that this is precisely what the FCA warned about in Amazon (see paragraph 53).

CIPO's response:

CIPO replied that the improvement to the functioning of the computer is a factor in the assessment of patentable subject-matter of computer-implemented inventions, but it is not the sole factor at play. The assessment follows the principles of the courts with the aid of factors that help focus the issue. For instance, another important factor involves how the claimed subject-matter integrates a generic computer into a broader machine or method that has physicality.

The factor of an improvement to the functioning of a computer plays an important role in the assessment of computer-implemented inventions in other jurisdictions, something that the FCA in Benjamin Moore states should not be determinative but at least worthy of consideration.

The reference to Consolboard relates to the question of utility and not of patentable subject-matter. It is very clear from the chapter on utility in MOPOP that providing another option in a field relating to the subject-matter of the invention is sufficient to fulfill the criteria of utility.

Broader discussion:

IPIC requested clarification on what provides physicality. CIPO replied with the example of a sensor. IPIC further contended that there is a real need for a good discussion and working examples. IPIC observed that there is a significant difference in CIPO's and IPIC's respective interpretations of patentable subject-matter. IPIC continued that they would like to have some opportunity, such as a consultation, to explain their perspective about why certain things are problematic and limiting. CIPO noted that it is important to be able to determine an interpretation that can be explained to all examiners to ensure consistency.

5.4 Working group to create examples of statutory inventions

Issue:

IPIC strongly recommended that CIPO host working groups with the profession to develop additional examples of statutory inventions, especially in the machine learning field before any further consultation is held or MOPOP is updated to reflect examination guidance for patentable subject matter. The last time there was a consultation IPIC observed that there were insufficient examples to provide useful guidance.

IPIC suggested working from examples already published by the USPTO and JPO.

CIPO's response:

This was discussed in Section 3.3 above.

5.5 Withdrawal of examiners' reports

Issue:

IPIC contended that the conditions under which withdrawal is permitted are too restrictive. They asked whether the Office would consider relaxing these administrative rules?

One recent example is a case in which an obviousness defect relied on a combination of two prior art references—but the second reference was clearly uncitable against the application, even if the application's priority claim was disqualified. The request to withdraw the report was refused since the applicant was capable of responding with argument.

By contrast, applicants can often have US office actions with such errors withdrawn.

CIPO's response:

CIPO responded that while it is regrettable that the quality of this report was not the best, the office takes the position that prosecution moves forward rather than backwards. In such a situation there is no thought to relaxing the rules.

The contrast to the US appears to be detailed in MPEP 710.06 but it would not be relevant to this situation where the prior art document is cited accurately even if it was potentially not relevant to the analysis. CIPO has decided to rely on the interview service and interview records to deal with situations of inaccurate citations.

Broader discussion:

IPIC commented that this is particularly troubling in reference to RCE's when no relief or exception is provided in such cases. They asked if some exception could be introduced to waive the RCE fees in such cases.

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6 Conclusion

The date for the next Patent Practice Committee meeting is set for November 12; it will be determined later if the format will be hybrid.

The meeting adjourned at 4h02.

| Acronyms | Definitaion |
| --- | --- |
| CDAS | CIPO documents access system |
| CIPO | Canadian Intellectual Property Office |
| CPD | Canadian Patents Database |
| CRM | Computer-Readable Medium |
| CSC | Client Services Centre |
| EPO | European Patent Office |
| FCA | Federal Court of Appeal |
| IGC | Intergovernmental Committee |
| IPIC | Intellectual Property Institute of Canada |
| ITM | Information Technology Modernization |
| JPO | Japan Patent Office |
| MOPOP | Manual of Patent Office Practice |
| NER | National Entry Request |
| NGP | Next Generation Patents |
| PCT | Patent Cooperation Treaty |
| PPC | Patent Practice Committee |
| PPH | Patent Prosecution Highway |
| RCE | Request for Continued Examination |
| USPTO | United States Patent and Trademark Office |
| WIPO | World Intellectual Property Organization |

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Date modified:

2024-11-06