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: ic.qualitedb-pbquality.ic@canada.ca

QUALITY CONVERSATION TOPICS

Ottawa Convention Centre, Ottawa, Ontario (Source: Brand Canada)

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Thank you