MOPOP - Chapter 23


Disclaimer, re-examination, reissue and corrections of clerical errors

Table of Contents

23.01
Disclaimer – December 2015

Disclaimer is a mechanism whereby a patentee may, at any time during the life of a patent, amend a patent to claim less than that which was claimed in the original patent. It is used where the patentee has, "by any mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public", made a specification "too broad" by claiming more than the inventor invented or subject-matter to which the patentee had no lawful rightFootnote 1 (subsection 48(1) of the Patent Act). A disclaimer is not limited to a whole claim or claims. A part of a claim may be disclaimed, Footnote 2 provided that the disclaimer does not extend the scope of the claim or any claims depending on the claim.Footnote 3

A filing of a disclaimer is a renunciation of subject-matter. A disclaimer is also a clear and unequivocal statement that the original patent claims are too broad and thus invalid.Footnote 4

23.01.01
Filing a disclaimer

To file a disclaimer, Form 2 of Schedule I of the Patent Rules must be completed and filed with the Patent Office along with the appropriate fee set out in item 13 of Schedule II of the Patent Rules (subsection 48(2) of the Patent Act and section 44 of the Patent Rules). In completing Form 2, the patentee must follow the precise form of subsections 3(1) and 3(2), which specify the subject-matter disclaimed. The expression "...with the exception of the following:" in Form 2, subsection 3(2) indicates elements of the claim(s) remaining after the disclaimer, and cannot be used to reformulate or redefine the invention disclosed and claimed.Footnote 5

23.01.02
The roles of the Patent Office and the Courts

The filing of a disclaimer does not involve any examination of the subject-matter of the claims by the Patent Office. The Patent Office only ensures that the disclaimer has been filed in the prescribed form and manner in accordance with subsection 48(2) of the Patent Act and section 44 of the Patent Rules. As long as the disclaimer is filed in the proper form and manner, and the prescribed fee has been paid, the Commissioner has no discretion to refuse to record it.Footnote 6

The onus of showing that the disclaimer satisfies all the requirements of subsection 48(1) of the Patent Act rests with the patentee. Furthermore, there is no presumption of validity of the disclaimer. Footnote 7 The validity of the disclaimer depends on: the state of the mind of the patentee at the time of preparation of the specification; Footnote 8 whether the disclaimer is made in good faith and not for an improper purpose; Footnote 9 the length of time between discovering a problem with the patent and the filing of a disclaimer; Footnote 10 whether the disclaimer broadens the scope of the patent; Footnote 11 whether the disclaimer recasts an invention; Footnote 12 or, whether the disclaimer adds a new and different combination by the addition of elements to the claim.Footnote 13

If the courts determine that the disclaimer is invalid, the disclaimed claims must return to how they were prior to the disclaimer. However, the disclaimed claims as they stood prior to the disclaimer are invalid Footnote 14 on the basis of being overbroad by admission of the patentee. Footnote 15

23.01.03
Effect of a disclaimer

Disclaimers do not normally affect any court action pending at the time they are made (subsection 48(4) of the Patent Act).

Following a disclaimer, the remaining claims are deemed to be valid for the matter not disclaimed, i.e. in their disclaimed form (subsection 48(6) of the Patent Act). Thus a claim which is overly broad which has not been adjudged to be invalid may be saved from a finding of invalidity if a valid disclaimer is filed but only if filed in a timely way. Footnote 16

The disclaimer is unconditional. The existing claims of the patent are the claims as amended by virtue of the disclaimer, and the only invention protected by the letters patent is that defined by such existing claims. Footnote 17

23.02
Re-examination - December 2015

The purpose of re-examination is to provide a relatively summary and inexpensive alternative to an impeachment process by litigation or an opportunity for a patentee to have the Patent Office reconsider the claims of an issued patent. Footnote 18

As noted by the Federal Court in Prenbec v Timberblade, re-examination proceedings are less comprehensive in nature than an impeachment action (para. 48). For example, unlike an action, a re-examination proceeding is limited to issues arising from the prior art supplied by the requesting party. Additionally, the re-examination board does not possess the means to test the credibility of contested issues of fact (para. 34) that are available to a Court, such as by hearing from live witnesses under cross-examination (para. 47). Footnote 19

The re-examination process is set out in sections 48.1 to 48.5 of the Patent Act. Any person, including the patentee, may request re-examination of any claim or claims of a patent issued after October 1, 1989, at any time during the life of the patent, based on prior art. This applies to patent applications filed before October 1, 1989 which issued thereafter.

Upon receipt of an acceptable request for re-examination in accordance with subsections 48.1(1) and (2) of the Patent Act, re-examination proceeds in one or two stages, depending on the outcome of the first stage, both of which are ex parte in nature. If the requester is also the patentee they will participate in the second stage. In cases where the requester is not the patentee, any submissions from the requester beyond the filing of an acceptable request will not be acknowledged or taken into account during re-examination.

The first stage involves a preliminary decision by a re-examination board established by the Commissioner of Patents as to whether the request raises a substantial new question of patentability. The preliminary decision includes the re-examination board's reasons as to why a substantial new question of patentability is or is not raised by the request.

Where a substantial new question of patentability has been raised, the second stage involves the re-examination of the patent based on this question.

In the re-examination process, the board is not an adverse party as would be a competitor in an impeachment proceeding. The board's role is rather that of an adjudicator in an administrative context. The expertise of its members may be taken into account in any determinations which are made as part of the board's statutory duties. Footnote 20 In making factual determinations based on the record before it, such as who is the ordinary person skilled in the art and what was the relevant common general knowledge, there is no burden on a re-examination board to seek out and locate independent evidence to support these conclusions. Footnote 21 Such determinations are considered by a reviewing court based on a reasonableness standard and taking into account the board's expertise. Footnote 22

The Patent Appeal Board is tasked with the administration of the re-examination process as part of its duties.

23.02.01
The request

A written request for re-examination must be filed with the appropriate fee (see Schedule II, Part III, item 14 of the Patent Rules) and, if the requester is a small entity, a small entity declaration (subsection 3(6) of the Patent Rules).

The request must be based on prior art consisting of patents, applications for patents open to public inspection or printed publications (subsection 48.1(1) of the Patent Act). The request must set forth the pertinence of the prior art and the manner of applying the prior art to the claim or claims for which re-examination is requested (subsection 48.1(2) of the Patent Act). For example, the request may discuss why a particular claim is rendered anticipated under section 28.2 of the Patent Act in view of a prior art document.

The request, including copies of the prior art, must be provided in duplicate unless the requester is the patentee or the request is filed in electronic form (section 45 of the Patent Rules). In the case of duplicate copies one is for the re-examination board and the other for the patentee.

Any request for re-examination and the subsequent proceedings are made part of the electronic office file associated with the issued patent.

Upon receipt of a request for re-examination, a member of the Patent Appeal Board reviews the file on behalf of the Commissioner of Patents to ensure that the requirements of subsections 48.1(1) and 48.1(2) of the Patent Act and section 45 of the Patent Rules have been satisfied.

If the request satisfies these requirements and the requester is someone other than the patentee, then a package containing a copy of the request and a copy of the prior art is sent to the patentee. If the requester is the patentee, no such package is sent (subsection 48.1(3) of the Patent Act).

At the same time, the Commissioner of Patents establishes a re-examination board (subsection 48.2(1) of the Patent Act). The board must consist of not fewer than three persons, at least two of whom must be Patent Office employees. Generally, the re-examination board is composed of a Patent Appeal Board member serving as chairperson, and two patent examiners from the examination division to which the patent relates. The re-examination board members must not have participated nor advised in the examination of the application from which the patent issued.

Once the re-examination board is established, the patentee is informed of the composition of the board by the Commissioner who takes no further part in the re-examination process. Footnote 23

Receipt of an acceptable request for re-examination and establishment of the re-examination board initiates the first stage of the re-examination process.

In the event that a request for re-examination does not satisfy the requirements of subsection 48.1(1) or 48.1(2) of the Patent Act or section 45 of the Patent Rules, the requester is so notified.

Examples of unacceptable requests are those which do not detail the pertinence of the prior art and the manner of applying said art to the claim or those which are based on material which would not qualify as "prior art" under section 48.1(1) of the Patent Act. At a minimum, an acceptable request should articulate the relationship between the features of the prior art and those of the claims for which re-examination has been requested.

A failure to include a duplicate copy of the request would also make the request unacceptable if the requester is not the patentee or the submission is not electronic. However, if a required duplicate copy has not been provided, the requester will be contacted and given the opportunity to provide one in order to complete the request. Likewise, if the requester is a small entity and has omitted a small entity declaration, the declaration may be submitted without resubmitting the entire request for re-examination.

Non-compliant requests for re-examination may be corrected and resubmitted without the requirement for a further fee. A request for re-examination is not considered to have been made until it is compliant with the requirements of the Patent Act and Rules. As such, no further action on the merits of the request is taken until an acceptable request is submitted.

If a request is compliant in respect to some claims but not for others, i.e. if the pertinence of the prior art is only discussed in relation to some of the claims requested for re-examination, then notification, establishment of the re-examination board and initiation of the first stage of re-examination will commence for the claims for which the request is compliant. The patentability of the claims for which the request is not compliant will not be further considered in the re-examination process.

The grant copy of a patent should never be submitted to the Patent Office when requesting re-examination.

23.02.02
First stage of re-examination: determination as to a substantial new question of patentability

Within three months of establishment, the re-examination board must determine whether a substantial new question of patentability affecting any claim of the patent for which re-examination has been requested is raised by the request for re-examination (subsection 48.2(2) of the Patent Act). This is a threshold question which must be answered before any further re-examination of the patent can continue.

In order to raise a substantial new question of patentability the request must present an issue relating to the validity of one or more claims that was not previously considered during the prosecution of the application that resulted in the patent for which re-examination has been requested, and that was not considered during any other prior proceeding involving the patent. The issue must also not be so closely related to one previously considered such that it is not a substantial new question.

A substantial new question of patentability is most often raised by prior art that was not on record during the original prosecution. However, if prior art is so similar to that which was considered during examination that it would be applied in the same manner, there would not be any material effect on the record and substantial new question of patentability would not be established.

A substantial new question of patentability may be based on the same prior art considered by an examiner during the original examination so long as the requester is able to satisfy the board that the prior art was not applied in the same manner by the examiner (i.e. that a substantial "new" question is raised). For example, a piece of prior art may have been considered during examination as having been applicable as an anticipatory reference under section 28.2 of the Patent Act. As part of a request for re-examination the same piece of prior art might be used in combination with one or more other pieces of prior art to make a case for obviousness of a claim under section 28.3 of the Patent Act.

In the absence of evidence from the record as to how an examiner considered the prior art during prosecution (e.g., the application was allowed without an office action) the board will not presume that the prior art was considered in the same manner as outlined in the request.

If the re-examination board determines that the request for re-examination does not raise a substantial new question of patentability, the requester is so notified. This notice, which takes the form of a letter from the board, will include reasons as to why the board has reached such a conclusion. Such a decision by the board is final and not subject to appeal or review by any court (subsection 48.2(3) of the Patent Act).

In the event the board determines that the request for re-examination raises a substantial new question of patentability, the patentee is so notified in a letter which includes the board's reasons (subsection 48.2(4) of the Patent Act). These reasons are not limited to the arguments set out by the requester in the request for re-examination.

The patentee may reply within three months to the board's notice with submissions relating to the patentability of the claim(s) of the patent for which notice was given (subsection 48.2(5) of the Patent Act). At the same time, a patentee may submit proposed amendments to the patent to address the question of the patentability of the claim(s), so that the proposed amendments are before the board for the second stage of re-examination (subsection 48.3(2) of the Patent Act).

During all stages of the re-examination proceeding, if the requester is not the patentee, the board may send the requester copies of the correspondence from the board to the patentee as a courtesy.

23.02.03
Second stage of re-examination

The re-examination of the patent based on the substantial new question of patentability begins upon a reply from the patentee or upon the expiration of three months from the notification from the board of a substantial new question of patentability (subsection 48.3(1) of the Patent Act).

In the event that there has been no reply from the patentee, as a courtesy the board will send a letter indicating that the re-examination of the patent has begun. The board will also advise the patentee that absent any further submissions a decision will be taken and a certificate of re-examination issued under subsection 48.4(1) of the Patent Act.

During the re-examination proceeding, there may be opportunity for multiple exchanges with the patentee in relation to the issues raised by the request. Letters from the board will set out the board's preliminary opinions on the patentability of the claims which are subject to re-examination and any proposed amendments made by the patentee. Final determinations on patentability are reserved until the issuance of a certificate of re-examination.

The patentee may propose any amendment to the patent (subsection 48.3(2) of the Patent Act), including amendments to the description and/or drawings. Any new claims proposed during re-examination must be numbered consecutively beginning with the number immediately following the number of the last claim of the issued patent (section 45.1 of the Patent Rules).

No amendment or new claim shall enlarge the scope of a claim of the patent (subsection 48.3(2) of the Patent Act). This provision is taken to mean that at a minimum any claim proposed during a re-examination proceeding must include all the features of the broadest independent claim of the patent. In other words, any proposed claim may not broaden the scope of protection in some respects even if the claim is narrowed in other respects.

As part of the exchanges between the board and the patentee during a re-examination proceeding the patentee may make submissions orally and/or in writing. Oral submissions may be conducted in person, via teleconference or via videoconference, at the option of the patentee.

Pursuant to subsection 48.3(3) of the Patent Act, the second stage of re-examination must be completed within twelve months.

23.02.04
Completion of re-examination

The determinations of a re-examination board are functionally equivalent to a decision of the Commissioner of Patents under section 40 of the Patent Act. They are in essence a re-determination of the validity of the claims of the patent, Footnote 24 although within the particular circumstances set out in section 48 of the Patent Act.

As such the re-examination board, like the Commissioner, must be satisfied that the patentee is not "by law" entitled to a claim of the patent in order for it to be cancelled. The same criteria would apply to a decision of the board not to incorporate a claim or other amendment into the patent with the additional requirement that such an amendment not enlarge the scope of a claim of the patent as per subsection 48.3(2) of the Patent Act.

Upon completion of the second stage of a re-examination proceeding, the re-examination board will issue a certificate of re-examination which is delivered to the patentee by registered mail (subsections 48.4(1) and 48.4(2) of the Patent Act). The certificate affects the original patent by:

  1. (a) cancelling any claim of the patent determined to be unpatentable;
  2. (b) confirming any claim of the patent determined to be patentable; or
  3. (c) incorporating in the patent any proposed amended or new claim determined to be patentable.

If a certificate of re-examination indicates that an independent claim is cancelled from a patent, this does not mean that the text of the independent claim is no longer considered part of any dependent claim that refers to it. The cancellation of such a claim is a removal of the scope of protection afforded by the claim, not its text per se.
If any amendments have been proposed to the description and/or drawings which are determined to be permissible by the board under subsection 48.3(2) of the Patent Act, the incorporation of these amendments will be noted in the certificate of re-examination as well.

Accompanying the certificate of re-examination will be a decision from the board in the form of a letter to the patentee outlining the reasons for the board's determinations in the certificate.

Also accompanying the certificate of re-examination will be a registration certificate indicating that the certificate of re-examination issued by the board has been registered against the patent. In this way, the certificate is attached to the patent (subsection 48.4(2) of the Patent Act).

As a result of the re-examination proceeding a new cover page is generated for the patent indicating that the patent has been re-examined. The certificate of re-examination and any amendments to the patent are stored in association with the new cover page both in the Patent Office electronic file and on the Canadian Patent Database.

23.02.05
Effect of the re-examination certificate

The effects of the certificate of re-examination are set out in subsection 48.4(3) of the Patent Act, namely :

[w]here a certificate…

  1. (a) cancels any claim but not all claims of the patent, the patent shall be deemed to have been issued, from the date of grant, in the corrected form;
  2. (b) cancels all claims of the patent, the patent shall be deemed never to have been issued; or
  3. (c) amends any claim of the patent or incorporates a new claim in the patent, the amended claim or new claim shall be effective, from the date of the certificate, for the unexpired term of the patent.

Thus, the invalidity of a claim or claims as a result of re-examination is retroactive. However, the addition or amendment of claims has the effect of rights only being available for those claims for the remaining term of the patent.

The above effects do not apply until the appeal period has expired (see next section), and if an appeal is taken from the board's decision, the above effects only apply to the extent they are reflected in the final judgment of the courts (subsection 48.4(4) of the Patent Act).

Where the claims undergoing re-examination are confirmed, then said claims remain as issued for the unexpired term of the patent.

23.02.06
Appeals from re-examination

A decision of the re-examination board that accompanies a certificate of re-examination can be appealed by the patentee to the Federal Court (subsection 48.5(1) of the Patent Act). The appeal must be taken within three months from the date that a copy of the certificate of re-examination is sent by registered mail to the patentee (subsection 48.5(2) of the Patent Act).

23.03
Reissue - April 2017

Reissue is a mechanism provided by section 47 of the Patent Act for correcting a "defective or inoperative" patent. Subsection 47(1) of the Patent Act sets out the conditions wherein a new reissued patent may be granted to a patentee.

The purpose of the reissue provision has been described as being to provide that kind of relief which courts of equity have always given in case of clear accident and mistake in the drawing up of written instruments. Footnote 25

It is important to note that in accordance with the provision that the Commissioner of Patents "may" cause a new patent to be granted, the granting of a reissue is a discretionary measure. However, such discretion can only be exercised once the conditions of subsection 47(1) have been met. Any application for reissue which does not fall within the statute must be refused. Footnote 26 Any such exercise of discretion must also be compatible with the purpose of the reissue provision, as noted above. Footnote 27

23.03.01
Time limit for filing an application for reissue - April 2017

Subsection 47(1) of the Patent Act requires that a patent be surrendered within four years from its date of grant in order to obtain a reissue. This has been interpreted as requiring that an application for reissue be filed within four years from the grant of the original patent. Footnote 28 The surrender of the original patent referred to in subsection (1) is considered to take place at the time the application for reissue is submitted in accordance with Form 1 of the Rules, but only to take effect if a new patent is issued.

The original patent should never be returned to the Office for the purpose of a reissue.

23.03.02
Patent must be "defective or inoperative" - December 2015

Pursuant to subsection 47(1) of the Patent Act, the Commissioner may cause the issue of a new or amended patent (a "reissue patent") whenever a patent is deemed "defective or inoperative". At a minimum, this means that, due to some error, the original patent failed to fulfil the applicant's intent upon grant. Footnote 29 As a result, the patentee has been granted a patent that fails to represent that which the applicant truly intended to have been covered and secured by it. The words "defective or inoperative" in the sense used in subsection 47(1) of the Patent Act do not equate to a "defect" in relation to the compliance of a patent with the Patent Act and Rules for validity purposes. A patent may be valid in all other respects, yet nonetheless fail to express what the applicant had intended.

Under subsection 47(1) of the Patent Act, there are two reasons why a patent can be deemed defective or inoperative: (1) insufficient description and specification; and (2) the patentee having claimed more or less than the patentee had a right to claim as new. Thus, the "defectiveness or inoperability" of the patent potentially affects the scope of protection of the patent or how well the patent describes the invention.

The words "defective or inoperative", however, do not encompass the reissue of a patent that has been judicially declared invalid, Footnote 30 or a patent for which all rights have lapsed.

A reissue application is not a means for reopening the prosecution and permitting a patentee to amend a patent as they would amend a patent application during its normal prosecution. Footnote 31 Nor does it permit a patentee to unilaterally narrow the scope of protection as would filing a disclaimer—a reissue application must satisfy the requirements of subsection 47(1) of the Patent Act.

23.03.02a
The error and the intent of the applicant

The reissue provision exists to correct an "error" that "arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention" (subsection 47(1) of the Patent Act). Such an error must be one whereby the patent for which reissue is sought fails to express the intended invention; Footnote 32 that is the patent fails to state something or misstates something.

A patentee seeking reissue must show that due to "inadvertence, accident or mistake" a result that was other than what was intended by the applicant – as of the date of issuance – occurred. Mere support in the original patent for the proposed amendments is insufficient to establish intent. Footnote 33 The patentee must establish that the issued patent does not accurately express the applicant's intention with respect to the description and specification of the invention. Similarly, in cases where an original patentee has assigned his right to a patent, the assignee must still establish that the issued patent does not accurately express the intent of the applicant of the original patent. In all cases, if it is obvious that the intent of the applicant was completely fulfilled, a reissue is not justified. Footnote 34

This is usually the most difficult part of the reissue provisions to satisfy, as there must be evidence that an error did in fact occur during the prosecution of the original patent. There also must be evidence of what the applicant had intended the original patent to say.

Mere allegation of an error is not evidence of that error. It is not evidence from which the Commissioner or a court can conclude that an error was made. Footnote 35

It is the evidence as a whole that is considered; such evidence can include, for example, the text of the patent itself, evidence of actions taken during the prosecution of the original patent application Footnote 36 and of corresponding patent applications in this and other jurisdictions Footnote 37 and evidence of communications indicating intended actions that were never taken, etc. To be of practical use, the evidence must pre-date the issuance of the original patent. Footnote 38

The onus lies with a patentee to prove that an error occurred during the prosecution of the patent application through inadvertence, accident or mistake; the extent of prior patent experience of the applicant/authorized correspondent may be taken into consideration. Footnote 39 It is presumed that the applicant's intent has been fulfilled by the issued patent, Footnote 40 which presumption may be rebutted by sufficient evidence to the contrary. For example, a patentee may allege that certain claims were cancelled from an application by mistake, but the record may show that this was done in the face of an identified defect from an examiner or to avoid conflict or to avoid prior art. Footnote 41 Unless a patentee can prove that such an action was not to have been taken, it is presumed to be indicative of the applicant's intent.

The intent has to be that of the applicant, but the error could have been made or caused by anyone (which can include the patent agent or authorized correspondent) during prosecution of the original patent. Footnote 42

A mistake in interpreting the law may lead to an error in a patent. However, in order to fall within subsection 47(1) of the Patent Act such an error must have led to a patent which fails to represent the applicant's intent. Footnote 43

23.03.03
Insufficient description and specification - December 2015

A patent defective or inoperative for insufficient description and specification is one lacking textual or graphical matter or including the wrong textual or graphical matter, contrary to the intent of the inventor upon grant. A failure to: accurately claim or describe the invention; claim subcombinations; include dependent claims; or, include claims to different categories of invention could be indicative of a patent defective or inoperative for insufficient description and specification.

23.03.04
Claiming more or less - December 2015

A patent defective or inoperative by reason of the patentee claiming more or less than he had a right to claim as new is one that results in the claims protecting more or less subject-matter than the patentee had intended. Since the description and drawings affect the scope of the claims, an error involving these parts of the patent could also result in the patent being defective or inoperative for claiming more or less than the patentee had a right to claim.

23.03.05
Same invention - December 2015

Whatever defect a patentee seeks to rectify in the patent by an application for reissue, any "amended description and specification" made by the patentee must be directed to the "same invention ... for which the original patent was granted" (subsection 47(1) of the Patent Act).

Although section 38.2 of the Patent Act does not apply to the reissue process, its requirements (see chapter 19 of this manual) are considered to be analogous to those of subsection 47(1) for a reissued patent to be for the "same invention".

Accordingly, all matter in a reissued patent must find support somewhere in the description, drawings or claims of the original patent. Footnote 44 However, there is no requirement that an invention sought to be protected by reissue need be directed to the same inventive concept as the claims of the original patent. Footnote 45

Subject-matter sought to be added that is inferable from the original description, drawings or claims would comply with the "same invention" requirement of subsection 47(1) of the Patent Act. Footnote 46 Matter that is admitted to be prior art would be acceptable as well. Footnote 47

23.03.06
The application for reissue - April 2017

An application for reissue must include a Form 1 of Schedule I of the Patent Rules, completed as per the instructions (section 43 of the Patent Rules). Sections 3, 4 and 5 of Form 1 set out the patentee's case for granting a reissued patent. The application for reissue must also include an amended description, set of drawings and/or set of claims. All changes introduced by the amendments must be consistent with the defects identified in Form 1. Footnote 48 The patentee should also submit the most relevant available evidence (see section 23.03.02a of this manual).

The original patent should never be returned to the Office for the purpose of a reissue.

23.03.06a
Form 1 of Schedule I

In section 3 of Form 1 the patentee must identify specifically how the patent is defective or inoperative. This discussion can refer to problems with the claims, description or drawings. The issues must be linked with an insufficiency of description and specification or the patentee having claimed more or less than he had a right to claim as new (see sections 23.03.03 – 23.03.04 of this manual).

Section 4 of Form 1 must illustrate how the error arose which led to the patent specifying something other than what was intended. It is here that the patentee must demonstrate that an error occurred, in the sense that the patent document does not accord with the intent of the applicant Footnote 49 (see section 23.03.02a of this manual). Section 4 of Form 1 should refer to any applicable submitted evidence when explaining how the error arose and how the patent document does not accord with the intent of the applicant.

Section 5 of Form 1 details when and how the patentee became aware of the error leading to the application for reissue. The error must have been discovered after the patent was issued Footnote 50 since if an applicant allowed a patent to grant with full knowledge that an error had occurred during the prosecution, such an act would normally be taken as a deliberate one and thus as reflecting the applicant's intent. In some cases wherein the discovery of the error occurred after payment of the final fee but before issue of the patent an application for reissue may also be acceptable given an appropriate explanation. Note that the circumstances described in section 5 of Form 1 may also be relevant to the determination of whether the applicant's intent was truly unfulfilled by the original patent.

23.03.07
Examination of an application for reissue - April 2017

Unlike disclaimers, an application for reissue can result in the widening of a patent's scope; the scope of protection can be increased, thereby affecting the bargain with the public. The Patent Office must therefore examine and approve any application for reissue. Footnote 51

Given the retroactive effect of reissued patents (subsection 47(2) of the Patent Act), it is important to ensure that an application for reissue meets the requirements of section 47 of the Patent Act. Footnote 52 The Reissue Board, consisting of senior patent examiners from the various examination disciplines, oversees the complete reissue application process and is tasked with ensuring that applications for reissue meet those requirements.

For any submitted application for reissue the Reissue Board first verifies that the application for reissue complies with the requirements of section 47 of the Patent Act as detailed in sections 23.03.02-23.03.05 of this manual. This verification will involve a review of the application, proposed amendments and submitted evidence as well as the record of prosecution in the Patent Office and, if applicable, foreign patent offices. If the application complies with the requirements then an examiner of the relevant art verifies that the reissued patent would comply with the rest of the Patent Act and Rules. This verification is analogous to the examination of a patent application and may identify any defect that would be applicable during said examination.

If the Reissue Board or examiner finds the reissue application to be noncompliant with the Patent Act and Rules, an office letter explaining why will be issued. The patentee may respond by arguing and clarifying points, providing further evidence (which will be put on file), and/or by amending the proposed description, drawings and/or claims. The response should address the issues identified in the office letter.

However, sections 3 to 5 of Form 1 may not be amended other than to correct obvious typographical errors; section 47 of the Patent Act does not permit amendments to Form 1 that change the reasons for reissue.

If an impasse is reached between the patentee and the Reissue Board or the examiner, the reissue application may be referred to the Patent Appeal Board, who will make a recommendation to the Commissioner of Patents.

A patentee should present the best evidence upon filing Form 1. All issues and evidence should be before the Reissue Board and examiner prior to any referral to the Patent Appeal Board. Further, before an application is forwarded to the Patent Appeal Board, all deficiencies therein with regards to the Patent Act and Rules must have been identified by the Reissue Board and examiner, even if an impasse occurs in the initial stage of examination before the Reissue Board.

A reissue application does not go abandoned for failing to respond to an office letter within a certain time period, and thus there are no corresponding reinstatement fees. On the other hand, failure to respond in a timely manner can result in the reissue application being forwarded to the Patent Appeal Board and the Commissioner of Patents.

A patentee may always end prosecution by withdrawing the reissue application.

If the application for reissue is found acceptable by both the Reissue Board and the examiner, the patent will be reissued with an “E” document code. If the original patent was issued on the basis of an application filed after October 1, 1989 then the reissued patent will have the same patent number as the original patent; original patents issued on the basis of applications filed before said date will be reissued with a new patent number in the one million series. If the application for reissue is found acceptable the Office will send the patentee a new patent.

23.03.08
Multiple applications for reissue - December 2015

A patentee may file separate applications for reissue in respect of distinct parts of the invention covered by the original patent being reissued (subsection 47(3) of the Patent Act). This could result in multiple reissued patents. As with other applications for reissue, each separate application must be filed within four years of the original grant date. The separate reissue applications must all have been filed before the effective date of surrender of the original granted patent, i.e. before the grant of a reissued patent based on any one of them.

This section is permissive in that it allows the patentee to file multiple applications for reissue. The Commissioner of Patents will not call for division of an application for reissue, whether the granted patent appears to have been granted with more than one invention, or an additional invention is being claimed by reissue so that the reissue will contain more than one invention. Under 36(2.1) of the Patent Act, the Commissioner can only call for division of a patent application before the issue of a patent on the original application. Similarly, subsections 36(2), 36(3) and 36(4) of the Patent Act also do not apply to reissue applications.

Each separate application for reissue under subsection 47(3) of the Patent Act must be independently patentable as covering separate inventions in order to ensure that double patenting does not arise. Where multiple reissue applications co-exist for the same patent, yet do not cover separate and distinct parts of its invention, only one reissued patent (at most) can be granted.

While separate applications for reissue may be filed under subsection 47(3) of the Patent Act, the requirements of subsection 47(1) of the Patent Act must still be met in order to justify reissue. That is, an error must have occurred which led to the intent of the applicant of the original patent not having been fulfilled, which now results in the necessity of two or more separate reissued patents.

23.03.09
Reissue of a reissued patent - December 2015

A reissued patent may itself be reissued provided that the application to reissue is filed within four years of the date of grant of the original patent (not of the reissued patent), and provided that the invention sought to be protected by reissue is directed to the same invention for which the original patent was granted.

23.03.10
Effect of a reissued patent - December 2015

The effect of reissue is retroactive and rights exist with respect to the reissued patent as if they had been in effect as of the original grant date (subsection 47(2) of the Patent Act).

A reissued patent may not be withdrawn after it has been issued in favour of the original patent.

Any pending action is not affected by a reissue "to the extent that its claims are identical with the original patent" (subsection 47(2) of the Patent Act). In this context "identical" is taken to mean "of the same scope". Footnote 53

No additional maintenance fees apply to a reissue application (subsections 100(2), 155(2) and 182(2) of the Patent Rules). However, maintenance fees remain payable on the original patent until it reissues (if it reissues), and then become payable on the reissued patent under the same conditions as the original patent (subsections 101(1),(2), 156(1), (2) and 182(3), (4) of the Patent Rules), that is, in accordance with the maintenance fee due dates that apply to the original patent (see chapter 24 of this manual).

23.03.11
Appeal from a refusal to grant a reissue - December 2015

Although not explicitly provided by the Patent Act, a refusal to grant a reissue by the Commissioner of Patents is subject to appeal to the Federal Court under section 41 of the Patent Act. Footnote 54

23.04
Clerical error corrections under section 8 of the Patent Act - December 2015

A clerical error is an error that arises in the mechanical process of writing or transcribing. Footnote 55

Clerical errors in any instrument of record at the Patent Office may be corrected at the discretion of the Commissioner under the provisions of section 8 of the Patent Act. Footnote 56 Instruments of record at the Patent Office include patents, patent applications, PCT national phase applications, petitions, assignments and other documents available in the Patent Office.

It is noted that clerical errors in the specification or drawings of a patent application are commonly corrected by amendment during prosecution as long as the correction fulfills the acceptable subject-matter requirements of such an amendment (see section 19.04 of this manual).

The correction of clerical errors originating from the patentee or applicant require payment of the prescribed fee (Schedule II, Part IV, Item 19 of the Patent Rules). The fee is levied for the processing of the request by the Patent Office and does not depend on the acceptance or refusal of the correction. Refunds of fees paid with a request for clerical error correction are not mandated by section 4 of the Patent Rules, but may be provided if the request for correction is not processed.

Third parties willing to point out possible clerical errors originating from the patentee or applicant should contact the patentee, the applicant or the patent agent of record.

Clerical errors originating from the Patent Office can be discovered during quality control verification, examination or other procedures at the Patent Office, or from observations made by the applicant, the patentee or a third party. Generally, the patentee or applicant will be contacted before any such clerical error is corrected. Since this type of correction arises from an internal procedure, no fee is levied. Similarly, no fee is levied for clerical errors originating from mistakes made by foreign patent offices, including international authorities.

23.04.01
Requesting correction of a clerical error under section 8

There is no form for requesting the correction of clerical errors under section 8 of the Patent Act. The patentee or applicant requests the correction by:

  • describing the corrections being sought in a letter to the Commissioner, with reference to the patent or application number and the instrument of record to be corrected;
  • explaining the circumstances that led to the error that may justify why the error is clerical; and,
  • if the clerical error originated from the patentee or applicant, paying the prescribed fee (Schedule II, Part IV, Item 19 of the Patent Rules).

The grant copy of a patent should never be submitted to the Patent Office when requesting a correction.

When a clerical error request is made without the payment of the prescribed fee and the Patent Office determines that this fee is required based on the facts, the Patent Office notifies the patentee or applicant that a fee must be paid to proceed with the consideration under section 8 of the Patent Act.

23.04.02
Processing of a section 8 clerical error correction request

The Commissioner will review each request for correction under section 8 of the Patent Act according to the circumstances of the particular case.

The Commissioner will initially determine whether or not the error is clerical in nature in an instrument of record of the Patent Office. The circumstances leading to the error detailed in the request will be used to help make this determination. Factors that will be weighed in this determination include:

  • whether the document being corrected is an instrument of record at the Patent Office; and,
  • whether the error has arisen out of the mechanical process of writing or transcribing; for instance errors in translation, of antecedence or of omission Footnote 57 generally do not arise out of the mechanical process of writing or transcribing.

If it is determined that a clerical error exists, the discretion of the Commissioner will be used in deciding whether or not to make the correction. Footnote 58 The extent to which the requested correction affects the rights of others will be one of the factors weighed by the Commissioner in this decision.

If the error is determined to be non-clerical in nature or the Commissioner has exercised discretion in refusing to make the correction, the requester will be informed in writing of the reason(s) for the refusal to perform the correction.

If the Commissioner determines that the error is clerical and elects to make the correction, the requester is informed by an office letter that the correction has been made and receives a certificate of correction listing all the changes applied to the instrument of record. For a granted patent, the certificate of correction is accompanied by a copy of the cover page and all pages affected by the correction, each bearing the official stamp "Section 8 Correction see certificate - Correction - Article 8 voir certificat." The Patent Office records are corrected accordingly.

23.04.03
Effect of a section 8 clerical error correction

The instrument of record and the certificate of correction thereof must be read in conjunction. Since the validity of an instrument of record in the Patent Office is not affected by a clerical error therein (section 8 of the Patent Act), the instrument of record is deemed to have been present in the corrected form upon its submission to the Patent Office. In other words, the correction of the clerical error has effects retroactive as if the correction had been in effect as of the date that the instrument of record was filed with the Patent Office.

23.05
Clerical error corrections under section 35 of the Patent Rules - December 2015

A clerical error is an error that arises in the mechanical process of writing or transcribing Footnote 59.

Clerical errors in any document relating to an application other than the specification, a drawing or a document effecting a transfer or change of name, can be corrected under section 35 of the Patent Rules during prosecution of the application as long as the error was that something other than what was obviously intended was written.

There is no fee associated with requests for corrections under section 35 of the Patent Rules.

23.05.01
Requesting correction of a clerical error under section 35

There is no form for requesting correction of a clerical error under section 35 of the Patent Rules. The applicant requests a correction under section 35 of the Patent Rules and describes the correction to be effected, the patent application number and the document relating to the application to be corrected.

23.05.02
Processing of a section 35 clerical error correction request

The Commissioner will review each request for correction under section 35 of the Patent Rules according to the circumstances of the particular case.

Based on the requested correction, the Commissioner will determine whether the correction is to an obvious clerical mistake. In doing so, the Commissioner will determine whether what is currently written in the document is obviously not what was intended and further that the correction is what was obviously intended. If there is any ambiguity about what the error should be corrected to then the error is not an obvious clerical error.

If the Commissioner determines that the error is not an obvious clerical error, then the requester will be informed in writing of the reason(s) for the refusal of the correction request.

If the Commissioner determines that the error is clerical and obvious, the requester is informed by an office letter indicating that the Office records have been corrected.

23.05.03
Effect of a section 35 clerical error correction

After correcting a clerical error in a document in a patent application under section 35 of the Patent Rules , the document is deemed to have been present in the corrected form upon submission to the Patent Office. In other words, the correction of the clerical error has retroactive effects as if the correction had been in effect as of the date that the document relating to an application was filed with the Patent Office.



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