MOPOP - Chapter 18



Protests and filings of prior art prior to grant

Table of Contents

18.01
Filings of prior art - May 2014

As per section 34.1 of the Patent Act, any person may file prior art with the Commissioner. This prior art can consist of patents, applications for patents open to public inspection and printed publications that the person believes have a bearing on the patentability of any claim in a patent application. Prior art filed under section 34.1 of the Patent Act must be accompanied by an explanation of why the art is pertinent.

As per section 10 of the Patent Rules, when prior art is received under the provisions of section 34.1 of the Patent Act, the provider will be notified that the filing of prior art has been received but will not be informed regarding any resulting action taken. The examiner will not discuss the prosecution of the application with the provider; however the provider has access to the prosecution file of the application at the time the file is opened to public inspection. The prior art is made part of the application file and the applicant is notified that a submission of prior art has been made.

If the application referred to by the person submitting the prior art is a PCT application which has not yet entered the national phase in Canada, the Canadian Patent Office will retain the submission until the date for late national entry in Canada has passed.

18.02
Protests - May 2014

In accordance with section 10 of the Patent Rules, any written communication made to the Commissioner with the stated or apparent intention of protesting against the granting of a patent, prior to it being issued, will be acknowledged by the Commissioner. The protestor will not be informed regarding any resulting action taken; however a protestor has access to the prosecution file of the application at the time the file is opened to public inspection.

Protests may develop as a result of public inspection of laid-open applications or via a search request under section 11 of the Patent Act. The protestor should identify the Canadian patent application number if possible, or the foreign patent publication number (if a request under section 11 of the Patent Act has not returned a pending Canadian application number). Any protest that fails to identify an application by number, inventor or applicant reduces the likelihood of the Patent Office locating the application and therefore reduces the effectiveness of the protest.

When a protest does not identify an application by number, the Patent Office carries out a search to identify the application to which the protest applies. If the application is found, the protest is made part of the application file and the applicant is notified of the protest. As detailed above, the protestor will also be advised of the receipt of the protest in the Patent Office; however, the application number will not be disclosed if this application is not already laid open for public inspection. When a specific application cannot be located (e.g. when the application has not yet been filed at the Patent Office or when there is not enough information in the protest to identify the application), the Patent Office will retain the protest for two years during which time the Office will continue to attempt to identify the relevant application.

18.03
Applying protests or filings of prior art - May 2014

A protest or a filing of prior art is only considered by the patent examiner after examination of the application has been requested. Information in a protest or a filing of prior art is taken into account by the examiner, and will be used during prosecution if it is found to be pertinent. In the event that a notice of allowance has been sent to the applicant but the patent has not yet issued, the pertinence of the protest or the filing of prior art will determine whether the notice of allowance will be withdrawn. Where the protest or filing of prior art calls the patentability of the application into question, the Notice of Allowance will be withdrawn and the application will be returned to the examiner for further consideration. See chapter 13 for more information on notice of allowance and withdrawal thereof.

A protest may contain affidavits. An affidavit may contain information that could raise serious questions as to whether or not a patent should be granted, or lead to documentation that could be pertinent. A protest containing an affidavit should support any allegations with dated material or give details to help locate such material. Affidavits containing allegations which are not supported by dated documentation will usually be disregarded.

18.04
Confidentiality - June 2016

Any protest or filing of prior art will become part of the laid-open application file and will therefore be made available to the public. Should a party filing a protest or a filing of prior art request that the protest or filing of prior art remain confidential, the protest or filing of prior art will be returned to the sender and will not be considered by the patent examiner. Parties filing a protest or filing of prior art should note that they cannot remain anonymous; information identifying the protestor, such as that provided in the protest or filing of prior art cover letter, will be made available to the public.


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