How your patent application is processed (Page 4 of 5)

From: Canadian Intellectual Property Office

Corresponding with the Patent Office

When a patent examiner objects to the claims in a patent application, the applicant often fixes the application by changing, taking out or adding new claims.

Before you change your application, you should decide (maybe with the help of a registered patent agent) whether to go forward and make changes or simply give up the application and avoid additional costs.

At this point, you and the Patent Office will usually communicate back and forth. The examiner will either send an “examiner’s requisition” (a report that details his or her objections or requests for changes) or, in the case of a minor defect, may contact you or your patent agent by phone as part of the Patent Examination Interview Service to discuss how the application should be amended.You would then respond to the examiner's requisition or phone call with a response. This would continue until the examiner allows the application, rejects it in a "final action", or you decide to abandon your application.

If the examiner rejects your application, it will automatically go to the Patent Appeal Board for a review of the objection(s). If the examiner allows your application, you will receive your patent.

Receiving your patent

Congratulations! You sent in a well thought out application, you have dealt with any issues raised by the examiner and you are about to get your patent!

Once the Patent Office approves (allows) your patent, you will get a Notice of Allowance by mail. You have four months from the Notice of Allowance to pay your final fee. The Patent Office will put together your grant and mail it to you a few weeks after you pay the fee. For information on our performance standards, please visit this link.

During the term of your patent, someone may ask that one or more of your claims be re-examined. This could result in your patent claims being cancelled, changed or confirmed. The request must be based on public, written descriptions of your invention, and you can appeal any of the decisions.

For more information on re-examination of a granted patent, see chapter 30 of the Manual of Patent Office Practice or contact CIPO.

Appealing a refusal

If an examiner rejects your patent application, the Patent Office will send you a report called a “final action”. When you receive a final action, you have a last chance to change your application. (Please see Chapter 26 of the Manual of Patent Office Practice for more information.)

The Patent Appeal Board (PAB) will study the final action and all the evidence that goes with it. As the applicant, you may ask that the Patent Office put together an oral hearing. The PAB, after hearing from everyone involved, will make a recommendation to the Commissioner of Patents.

The Commissioner of Patents will look at all the evidence and then make a decision. This will include a brief statement about the reasons for the decision. If the Commissioner supports the examiner's opinion, the Patent Office will tell you about the reasons and you will have a chance to change your application so that it follows the Patent Act and Patent Rules.

If the Commissioner decides that the examiner's rejection was not right, the Patent Office will return the application to the examiner for further prosecution.

An applicant may appeal a decision of the Commissioner of Patents to the Federal Court of Canada.

Review — How your patent application is processed

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