cipo patent quality conversation · 4/16/2019 · – legal counsel, vbi ... workshop part 2 -...
TRANSCRIPT
CIPO Patent Quality Conversation CIPO Patent Quality Summit: Summary and Next Steps Marie Quinn – Quality Program Manager, Patent Branch
April 16, 2019
Quality is never an accident. It is always the results of intelligent
effort
- John Ruskin
“ ”
Welcome to the second CIPO Patent Quality
Conversation!
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AGENDA FOR TODAY’S
CONVERSATION • Purpose• Quality Summit Panels Workshop insights
Defining Patent Quality
Quality Factors
Publishable Metrics
• Summit Feedback• Next Steps• ISO Audit
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PURPOSE
The purpose of these conversations is
to engage you, our stakeholders,
and collaborate with you in an effort
to continually improve the quality of
our patent products, processes and
services.
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CIPO PATENT QUALITY SUMMIT
Fostering Innovation by advancing patent quality
February 26, 2019
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CIPO PATENT
QUALITY
CIPO PATENT
QUALITY SUMMIT
The CIPO Patent Quality Summit fostered innovation through enhancing patent quality by:
Engaging participants on quality relatedtopics through panel discussions
Collecting participant feedback onhow they define patent quality andwhat they would like to see in terms ofmetrics and reporting
Encouraging networking and sharing ofperspectives regarding patent quality
CIPO PATENT QUALITY SUMMIT
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CIPO PATENT
QUALITY SUMMIT
• Over 60 participants – includingstakeholders from IPIC, SMEs, industry,Government of Canada agencies, andCIPO employees
• 1 keynote speaker – Dr. Khaled El Emamdiscussed the role of IP in a successfulbusiness strategy
• 6 guest panelists – 3 panel discussions• Role of artificial intelligence in searching• Obstacles to patent quality
• 1 presentation – CIPO presentation on ourQuality Management System
• 1 interactive workshop – activities designedto gather feedback on publishable metrics
SUMMIT - BY THE NUMBERS
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CIPO PATENT
QUALITY SUMMIT
Morning
Keynote Address
Panel Discussions Search and Patent
Quality• AI, Databases, Search
tools, client andexaminer searching,comprehensivesearching, etc.
Obstacles to PatentQuality• Quality vs timeliness
vs cost, etc.
SUMMIT - AGENDA
Afternoon
CIPO Patent Quality Presentation
Panel Discussion
Listening to our Clients
Workshop Defining Patent
Quality
Prioritization ofQuality Factors
Monitoring andReporting on PatentQuality
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CIPO PATENT
QUALITY SUMMIT
Panelists
• Ian Wetherbee – Engineering Lead for Google
Patents
• Alexandra Daoud – Patent Agent and Partner at
Norton Rose Fulbright
• Berry deBruijn – Researcher, National Research
Council
• Anne-Marie Garand-Sheridan – Patent Examiner
and Search Expert
PANEL 1 – SEARCHING AND PATENT QUALITY
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CIPO PATENT
QUALITY SUMMIT
Highlights • Searcher must be able to clearly understand the
invention• Work done at outset in drafting and communication
with searcher lays the ground for a more meaningfulsearch
• Trade off between time and quality• Using the appropriate search engine is key to returning
most relevant results• Advances will be able to capture meaning of
paragraphs or full documents to find relevant hits• AI driven technologies may start to look at whole
collections at once• Confidence in ability to know when the search is done
PANEL 1 – SEARCHING AND PATENT QUALITY
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CIPO PATENT
QUALITY SUMMIT
Panelists
• Greg Vidovich – Associate Commissioner for
Patent Quality, USPTO
• Jenna Wilson – Patent Agent, Partner at Wilson
Lue, and Chair of the Patent Practice Committee
• Catherine Eckenswiller – Legal Counsel, VBI
Vaccines Inc.
• Kathleen Murphy – Director Biotechnology
Division, CIPO
PANEL 2 – OBSTACLES TO PATENT QUALITY
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CIPO PATENT
QUALITY SUMMIT
PANEL 2 – OBSTACLES TO PATENT QUALITY
Highlights
• Patents must be compliant with Act and Rules,
enforceable and valuable
• Balance between quality, cost and time
• both to prepare and examine applications
• How to measure quality?
• Quality is a shared responsibility between
stakeholders and the office
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CIPO PATENT
QUALITY SUMMIT
PANEL 3 – LISTENTING TO OUR CLIENTS
Panelists • Marie Quinn – Program Manager - Quality, Patent
Branch
• Stephen MacNeil – Member, Patent AppealBoard
• Andrée Patry – Manager, Operations Sector
• Christine Piché – Senior Director, Patent Servicesand Strategic Affairs
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CIPO PATENT
QUALITY SUMMIT
PANEL 3 – LISTENTING TO OUR CLIENTS
Highlights
• CIPO is preparing for the Patent Law Treaty Mapping updates, addition of QC steps, testing of
software, awareness Review of office correspondence and
improvements being put into place Ensure client is well aware of what steps need to be
taken• Should examiner interview service be
expanded?• Should CIPO standardize examiner’s reports?• Quality is a shared responsibility between
stakeholders and the office
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CIPO PATENT
QUALITY
WORKSHOP INSIGHTS
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12.3% 7.7%
7.7%
4.6% 4.6%3.1% 3.1% 3.1%
3.1%
26.2%
valueconsistencyvalidityenforceabletimelinessclaritycommunicationscopetrustother
WORDS USED TO DEFINE PATENT QUALITY Workshop part 1 - Defining Patent Quality
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VALUE
CONSISTENCY
VALIDITY
ENFORCEABLE
TIMELINESS
HOW DO STAKEHOLDERS DEFINE PATENT QUALITY?
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PATENT QUALITY
DEFINITION
HOW DO STAKEHOLDERS DEFINE PATENT QUALITY?
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PATENT QUALITY
DEFINITION
• An enforceable and valuable patent obtainedin a timely manner
• Validity enforceability value begets drives
HOW DO STAKEHOLDERS DEFINE PATENT QUALITY?
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PATENT QUALITY
DEFINITION
• Provide a consistent and timely process inorder to provide a valid and enforceablepatent having value for the patent holder
• Patent Quality refers to a high value propertyright stemming from an enforceable andvalid patent
HOW DO STAKEHOLDERS DEFINE PATENT QUALITY?
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PATENT QUALITY
DEFINITION
• Consistent delivery of enforceable patent rights in a timely fashion
• Quality patents are high-value enforceable rights in a timely manner
QUALITY MEANS DIFFERENT THINGS TO DIFFERENT PEOPLE
FACTORS AFFECTING QUALITY Workshop part 2 - Quality Factors
Top 6/20 Quality Factors selected:
Claims granted commensurate in scope with what theapplicant has invented and disclosed
Examination of applications and of responses from theapplicant is thorough
Application of Canadian Patent Act and Rules andCIPO practices is consistent between all examiners
A comprehensive search of the prior art is conductedby a knowledgeable examiner
Confidence in the expertise and knowledge of theexaminer
Correspondence received from the Office is easy tounderstand and free of errors
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PATENT QUALITY
DEFINITION
• Consistency and accuracy aremore important than timeliness
• Confidence in examinerknowledge is key
• Improvement of online servicesis needed
STAKEHOLDER INPUT
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PATENT QUALITY
DEFINITION
PATENT QUALITY METRICS
MEASURING AND REPORTING ON PATENT QUALITY Workshop part 3 - Publishable Metrics
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Ultimate goal: To create patent quality dashboards
Determine measureable quality attributes
Stakeholder feedback • From the list of 20 quality factors,
pick 3 and identify metrics
• Ensuring consistency:• Training frequency• Customer survey/complaints
review• Audit granted patents• Centralize review of QC• Standardize examiner reports
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PATENT QUALITY METRICS
MEASURING AND REPORTING ON PATENT QUALITY
• Ensuring error free grants:• Compiling number of grant
corrections• Tracking number of errors
originating from applicant/office• Quality audit of granted patents• Number of certificates of
correction issued per quarter• Number of re-examinations and
reissues
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PATENT QUALITY METRICS
MEASURING AND REPORTING ON PATENT QUALITY
• Ensuring excellence in clientservice:• Track number of applications
filed through website vs. paper• Compile amount of times CIPO
website malfunctions• Regular client surveys targeting
work products
MEASURING AND REPORTING ON PATENT QUALITY
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PATENT QUALITY METRICS
Quality • % examiner products compliant based
on quality control• National reports and allowances,
International search reports and opinions
Timeliness • % on time
• Office actions• Issue filing dates• International search reports and opinions,
etc.
Efficiency • Number of office actions/disposal• Number of cases awaiting action
PATENT QUALITY METRICS – Current Metrics
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PATENT QUALITY METRICS
PATENT QUALITY METRICS: Potential Dashboards
Error free grants Number of correction certificates
Training Number of training hours per employee
Quality % examiner reports compliant based on quality control
Feedback Complaints & response time
Timeliness % office actions on time
Efficiency Number of cases awaiting action
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CIPO PATENT
QUALITY
• Clients are more confident knowing that PB has a robust QMS system in place where we continually strive to improve our products
• Examiner interview service is a very
positive initiative. • more frequent • include discussion of more substantive
issues • Interview record content
SUMMIT – PARTICIPANT FEEDBACK
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CIPO PATENT
QUALITY
• Compile lessons learned from summit – Spring 2019
• Write and share Summit Report with all attendees – Spring 2019
• Develop dashboards to publish in 2020
• Align priorities with client feedback • Engage with stakeholders through
more Patent Quality conversations
SUMMIT – NEXT STEPS
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CIPO PATENT
QUALITY
PATENT OFFICE ISO 9001:2015
ISO 9001:2015
ISO CERTIFICATION
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• The Patent Branch obtained ISO certification in March 2017
• ISO 9001:2015 defines standard criteria for a Quality Management System based on the principles of consistency in meeting customer requirements and continuous enhancement of quality
ISO 9001:2015 CERTIFICATION ISO
CERTIFICATION
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• ISO certification maintained after another successful ISO Surveillance Audit in March 2019!
• Demonstrates our commitment to continuously improving our QMS
2019 SURVEILLANCE AUDIT ISO CERTIFICATION
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FEEDBACK / QUESTIONS Let us know what you think! Send us your questions through the WebEx chat box.
Ottawa Convention Centre, Ottawa, Ontario (Source: Brand Canada)
CIPO PATENT
QUALITY
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FEEDBACK / QUESTIONS
To suggest topics for an upcoming Patent Quality Conversation, please email us at: [email protected]
QUALITY CONVERSATION TOPICS
Ottawa Convention Centre, Ottawa, Ontario (Source: Brand Canada)
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Thank you