MOPOP - Chapter 21
Final Actions and Post-Rejection Practice
Table of Contents
- 21.01 Scope of this Chapter – December 2013
- 21.02 Overview – December 2013
- 21.03 Examination before a rejection – December 2013
Rejecting an application – December 2013
- 21.04.01 The Final Action report
- 21.05 Responses to a Final Action – December 2013
- 21.06 The Summary of Reasons – December 2013
- 21.07 Review of a rejected application – September 2017
- 21.08 The Commissioner's Decision – June 2016
- 21.09 Appeals of Commissioner's Decisions – December 2013
- 21.10 Prosecution following a decision of the Court – December 2013
21.01 Scope of this chapter – December 2013
This chapter addresses examination practice surrounding the rejection of an application by an examiner, the writing of a Final Action to inform the applicant of the rejection, and the review of a rejected application by the Patent Appeal Board and the Commissioner of Patents.
Where an examiner, after having previously identified one or more defects in an application and having requisitioned the applicant to amend the application in order to make it comply with the Patent Act and Patent Rules or to provide arguments as to why it does comply, has considered the applicant's response and has reasonable grounds to believe that the application still does not comply with the Patent Act or Patent Rules and that the applicant will not amend the application to comply, the application may be rejected.
A Final Action is the examiner's report that notifies the applicant that their application has been rejected and that sets forth the examiner's reasons for the rejection. In essence, rejecting an application and writing a Final Action is a mechanism that resolves impasses between an examiner and an applicant.
This chapter provides guidance on determining when a Final Action is warranted, the content of the Final Action itself, and the various post-rejection practices that lead to disposal of the application by allowance or refusal. A significant portion of the chapter details the practices of the Patent Appeal Board during the review of a rejected application by the Commissioner of Patents.
21.02 Overview – December 2013
As is discussed in Chapter 13 of this manual, the examination of a patent application involves its consideration by a patent examiner.
Where, after examining the application, the examiner has reasonable grounds to believe that it complies with the Patent Act and Patent Rules, the examiner will approve the application for allowance see section 13.11 of this manual.
Where, instead, the examiner considers that the application does not comply with the Patent Act or Patent Rules, the examiner will, in accordance with subsection 30(2) of the Patent Rules, inform the applicant of the application's defects and requisition the applicant to amend the application to comply or to provide arguments as to why it does see section 13.07 of this manual.
Examination typically proceeds through an exchange of examiner's reports and responses from the applicant. The aim of this process is to reach a conclusion as to the allowability of the application.
In some cases, the examiner and applicant will reach an impasse as to whether an identified defect truly is a defect. Where this occurs, the examiner will reject the application and notify the applicant in a Final Action.
Subsection 30(3) of the Patent Rules provides that:
Where an applicant has replied in good faith to a requisition referred to in subsection (2) within the time provided but the examiner has reasonable grounds to believe that the application still does not comply with the Act or these Rules in respect of one or more of the defects referred to in the requisition and that the applicant will not amend the application to comply with the Act and these Rules, the examiner may reject the application.
As will be seen later in the chapter, an applicant's ability to amend the application after it has been rejected may be limited. Consequently, although an application can, in principle, be rejected as soon as an impasse occurs with respect to a single defect, in practice a rejection will usually not occur if the examiner considers that continued correspondence with the applicant is serving to resolve other substantive defects.
Broadly speaking, it is desirable for a Final Action to be written when all defects have been resolved other than those on which an impasse exists. In practice, where this would unduly prolong prosecution, a Final Action can be written even though an impasse has not been reached with respect to some defects. Furthermore, where an impasse has been reached on all the substantive issues previously identified as defects, but new defects (substantive or otherwise) were introduced by the applicant, these new defects can be identified in a Final Action.
The decision as to when it is appropriate to reject an application must be made considering the overall context of examination, including the length of prior prosecution, the nature of the outstanding defects remaining, the extent to which these had been discussed by the examiner and the applicant, and whether the examiner considers it likely that further prosecution would advance the application to allowance.
Subsequent to a rejection, the examiner will review any responses to the Final Action that were made by the applicant before the expiry of the time to respond. Where the examiner does not withdraw the rejection, the Patent Appeal Board and the Commissioner of Patents will review the rejected application, possibly in light of further submissions by the applicant. Following the review, the Commissioner may allow or refuse the application, or indicate a period of time during which the application may be amended in a manner specified by the Commissioner, such that it would be allowable if so amended but will otherwise be refused.
When an application has been refused by the Commissioner, the applicant may appeal the Commissioner's decision to the Federal Court.
21.03 Examination before a rejection – December 2013
At each stage of examination, an examiner will endeavour to identify all the defects in the application and inform the applicant of these in a report in accordance with subsection 30(2) of the Patent Rules [see section 13.06 and section 13.07 of this manual].
Early in prosecution, it is possible that certain defects are interrelated, complicating their identification and resolution. Ambiguity in a claim, for example, could make it difficult to conclusively determine whether the claimed matter is novel or unobvious. As prosecution advances, the applicant's amendments and arguments in response to a requisition may serve to change the examiner's understanding of the invention. It is, thus, understandable that different or additional defects may be identified in subsequent reports.
It is also possible that an examiner may miss a defect during the analysis of the application; nevertheless it is required that the examiner identify these defects once aware of them.
As prosecution advances, it may become apparent that the examiner and applicant do not agree as to whether certain defects are present. Typically, where an applicant responds to a requisition by providing arguments as to why the application does comply but the examiner still considers that the application is defective, a further report identifying this same defect will provide a greater level of detail regarding the examiner's analysis. As appropriate, the applicant's arguments will be addressed in the examiner's subsequent report.
Where it appears that prosecution is approaching an impasse, an examiner will usually advise the applicant of this fact by indicating in the report being written that a further report on substantially the same points may be made final. Although it is not a requirement of the Patent Act or Patent Rules that such a warning be provided, it should be done whenever doing so would be reasonable in the circumstances.1
The last report written before a Final Action (informally referred to as a “pre-final” action) should provide completely elaborated arguments supporting the examiner's conclusion that the application is defective. Recognising that the applicant's opportunities to amend the application subsequent to the expiry of the time to respond to a Final Action may be limited under subsection 30(6) of the Patent Rules, it is very important to ensure that all defects have been identified in a “pre-final” action. The limitations on amending the application post-rejection provide the reason for advising the applicant that the examiner is considering making the next report a Final Action: knowing their application faces imminent rejection, the applicant may consequently wish to take special care in responding to the pre-final action.
21.04 Rejecting an application – December 2013
An examiner may reject an application where the requirements of subsection 30(3) of the Patent Rules are met, namely
- an examiner has previously identified a defect in an application, and requisitioned the applicant to amend the application in order to comply with the Act and Rules or to provide arguments as to why it does comply;
- the applicant has responded to the requisition, but the examiner considers that the application still does not comply with the Act or Rules in respect of one or more of the defects referred to in the requisition; and
- the examiner believes that the applicant will not amend the application to comply with the Act and Rules.
Having rejected the application, the examiner then notifies the applicant of the reasons for having rejected the application under the provisions of subsection 30(4) of the Patent Rules, namely
Where an examiner rejects an application, the notice shall bear the notation "Final Action" or "Décision finale", shall indicate the outstanding defects and shall requisition the applicant to amend the application in order to comply with the Act and these Rules or to provide arguments as to why the application does comply, within the six-month period after the requisition is made or, except in respect of Part V, within any shorter period established by the Commissioner in accordance with paragraph 73(1)(a) of the Act.
Considering the guidance in section 21.03, it can be understood that the analysis of the defects identified in a Final Action is to be comprehensive in nature. Identifying a defect for the first time in a Final Action, while occasionally necessary, is generally not desirable. In particular, if a major defect (anticipation, obviousness, lack of utility, non-statutory subject matter, insufficiency, etc.) was overlooked in prior prosecution, a further regular requisition identifying the defect is most likely necessary in order to allow the applicant an opportunity to have their response be evaluated prior to any rejection. If a new, significant defect was introduced with amendments made in response to the previous report, the examiner will have to exercise judgement as to whether or not a Final Action is appropriate.2
While reasonable efforts must be made to avoid identifying a defect for the first time in a Final Action, it is also necessary to consider the effect of unduly prolonging prosecution. Where a new defect is introduced by the applicant late in prosecution, it may not be appropriate to delay rejection simply to deal with it. Furthermore, where a newly identified defect is readily understandable and easily fixed (e.g. a missing antecedent, incorrect claim numbering, etc.), it may not be necessary to delay rejection.
What should not be done, however, is to ignore an identified defect in order to simplify the Final Action. The examiner must decide whether a newly identified defect requires a further report under subsection 30(2) of the Patent Rules or if it can be included in a Final Action.
21.04.01 The Final Action Report
A Final Action is a particular type of examiner's report, and will usually not follow the regular style and form of a report written under subsection 30(2) of the Patent Rules.
The opening paragraph of a Final Action will identify that it contains a requisition under subsection 30(4) of the Patent Rules, and will feature the words FINAL ACTION prominently. The report will also include an indication that the application is being rejected pursuant to subsection 30(3) of the Patent Rules.
The preamble of the report should identify, in broad terms, the defects that have led to the rejection and which claims are considered defective and which are allowable.
The entire report should be drafted bearing in mind the point of dispute. Where the examiner and the applicant agree on certain facts or conclusions pertaining to the disputed defect, this should be noted (with reference to any relevant correspondence) but it is not necessary to comprehensively revisit these aspects.3
The goal of the Final Action is to make the point of disagreement clear, to set out the applicant's position as understood by the examiner, and the examiner's reasoning for considering the application to still not comply with the Act or Rules. The Final Action should be drafted so that interested persons reading it (including the applicant, Patent Appeal Board, the Commissioner or the Court) can readily understand the point of the dispute and the examiner's reasons for concluding that the application does not comply with the Act or Rules despite any arguments to the contrary from the applicant.
Although the actual layout and presentation of a Final Action can be tailored to fit the facts of the case under consideration, the following information should be provided where relevant.
- A summary of the application, setting forth the invention as claimed with an emphasis on the relevant claims. The summary should clearly identify any aspects of the claims that are central to the impasse.
- An identification of any allowable claims.
- An identification of any relevant prior art and a discussion of the pertinent teachings of those disclosures.
- A summary of the relevant prior prosecution, setting forth in broad terms how the discussion of the alleged defect has proceeded. This section may also provide a summary of the applicant's reasons for believing the application is not defective.
- A discussion of the legal, jurisprudential and administrative considerations relevant to the impasse, particularly where these are central to the dispute.
- The grounds for rejection, which should provide a comprehensive analysis of the defects that led to the rejection, including a rebuttal where appropriate of the applicant's arguments.
- A summation, wherein the grounds for rejection are very briefly recapitulated.
It may be beneficial to divide the report into sections, using clear headings to identify what is being discussed in each section.
To the extent practical, the Final Action should be written so that it can be understood independently of other reports or responses. More particularly, pertinent arguments should not be incorporated by reference to other documents but should, minimally, be summarised in the Final Action itself.
21.05 Responses to a Final Action – December 2013
An applicant may respond to a Final Action by submitting amendments to make the application compliant with the Patent Act and Patent Rules or by submitting arguments as to why the application does comply.
Upon receipt of a response to the Final Action before the expiry of the time to respond, the examiner will review the application.
21.05.01 Responses that overcome the rejection
If, after considering any amendments and arguments submitted by the applicant, the examiner considers that the application complies with the Act and Rules, it will be allowed pursuant to subsection 30(5) of the Patent Rules, which provides that
If before the expiry of the period under subsection (4), the applicant amends the application or provides arguments and the examiner has reasonable grounds to believe that the application complies with the Act and these Rules,
- (a) the examiner shall notify the applicant that the rejection is withdrawn; and
- (b) the Commissioner shall notify the applicant that the application has been found allowable and requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice of allowance.
The notification under paragraph 30(5)(a) of the Patent Rules takes the form of an Office letter sent to the applicant by the examiner. It is a separate piece of correspondence from the notice of allowance.
21.05.02 Responses that do not overcome the rejection
If, after considering any amendments and arguments submitted by the applicant, the examiner considers that the application still does not comply with the Act or Rules, the examiner's next steps depend on whether the time to respond to the requisition has expired or not.
If the time to respond has not expired, the examiner may contact the applicant to inform them of the examiner's conclusions and to determine whether the applicant wishes to submit further amendments and/or arguments prior to the expiry of the time to respond to the requisition. This would be particularly appropriate in instances where the applicant has partially addressed the grounds for rejection and where it appears a further response could make the application allowable.
If the time to respond to the requisition has expired, the provisions of subsection 30(6) of the Patent Rules apply. Thus,
If the applicant amends the application or provides arguments within the time referred to in subsection (4) but, after the expiration of that time, the examiner does not have reasonable grounds to believe that the application complies with the Act and these Rules,
- (a) the Commissioner shall notify the applicant that the rejection has not been withdrawn;
- (b) any amendments made within the time referred to in subsection(4) shall be considered not to have been made; and
- (c) the rejected application shall be reviewed by the Commissioner.
By virtue of paragraph 30(6)(b) of the Patent Rules, any amendments made after the Final Action was sent are considered not to have been made unless the examiner determines that they place the application in condition for allowance. If, after the time for responding to the Final Action has expired, an examiner concludes that the application is still not allowable, the examiner will prepare the case for review by the Commissioner.
21.06 The Summary of Reasons – December 2013
A Summary of Reasons is a document written by an examiner in preparation for the Commissioner's review of a rejected application pursuant to paragraph 30(6)(c) of the Patent Rules. It is written only when the time to respond to the Final Action requisition has expired and the applicant's response has not overcome the reasons for rejection see 21.05.02.
In the Summary of Reasons, the examiner briefly sets out why they still do not have reasonable grounds to believe that the application complies with the Patent Act and Patent Rules. Since the rejection is being maintained, any amendments proposed by the applicant subsequent to the rejection are considered not to have been made. Consequently, the examiner's reasons for considering the application not to comply with the Act and Rules will primarily be those set out in the Final Action itself. Reasons given in the Final Action should not be comprehensively repeated in the Summary of Reasons, which (as its name implies) is intended to be a brief document.
The Summary of Reasons should identify and address any new considerations arising from the applicant's post-rejection correspondence received up to the expiry of the time to respond to the requisition, such as new arguments in support of patentability, relevant jurisprudence or changes to Office practice.
If the applicant has proposed amendments, the examiner should provide a concise analysis of the effect of these amendments. The Summary of Reasons will provide information such as whether proposed amendments would have overcome, or addressed in part, certain of the examiner's grounds for considering the application defective or would have changed the examiner's reasons for considering the claims defective. It would be particularly noted if the proposed amendments would have rendered certain claims allowable. Similarly, any defects present in the proposed amendments would be identified.
It should also be indicated if certain of the applicant's arguments were compelling, even if the arguments themselves were insufficient to give the examiner reasonable grounds to consider the application to comply with the Act and Rules. This might be the case, for example, where an applicant explains how the invention may be distinguished from cited prior art, but the arguments are based on features not defined in the claims.
In view of the above, it can be understood that the Summary of Reasons is intended to assist in the review of the application by providing a concise, high-level overview of important considerations arising from any post-rejection correspondence with the applicant as well as any information relevant to the review which was not available at the time the application was rejected.
21.07 Review of a rejected application – September 2017
A review of a rejected application is, as previously noted, required by subsection 30(6) of the Patent Rules whenever the applicant's response to a Final Action does not place the application in condition for allowance.
While the review is primarily focussed on resolving the impasse that led to a rejection, the review is also comprehensive, meaning that any apparent defects in the application, even beyond those indicated in the Final Action and/or the Summary of Reasons, will be identified at this stage.4 This point is highlighted in paragraph 30(6)(c) of the Patent Rules which states that the "rejected application" is reviewed.
It can be broadly stated that the intention of the review process is to achieve efficiency, finality, and compliance of the application with the Patent Act and Patent Rules while adhering to the principles of natural justice and procedural fairness.
The review of an application can be terminated by withdrawing the application, and will typically not proceed during periods where the application is deemed abandoned by operation of law. The review is also terminated where an application remains abandoned outside the reinstatement period.
21.07.01 Referral to the Patent Appeal Board
The Commissioner is assisted in performing the review of a rejected application by the Patent Appeal Board (PAB).5 The PAB is an advisory body consisting of a Chair and several members, each of whom is a senior official of the Patent Office with previous experience as a patent examiner. The review of a specific application is typically performed on behalf of the Commissioner by a panel of three members of the PAB. In order that the review of the application be impartial, these members must not have participated in the prosecution of the application or have previously given advice in respect thereto.
The review occurs only after the time limit for responding to the Final Action has expired and the Summary of Reasons has been prepared and forwarded to the PAB. At this point, control over the application is transferred to the PAB.
It is to be noted that the review process is an ex parte process, meaning that there is only one party to the proceedings, namely the patent applicant. The process is a continuation of the administrative procedures of the office with regard to patent applications under the Patent Act, but is performed at arm's length to the examination divisions.
21.07.02 Communication with the applicant
During the review process, an applicant can expect to be contacted by the Board several times. These communications may cover both administrative and substantive matters relating to the review.
Administrative matters include informing the applicant that the application has been transferred to the PAB and details relating to giving the applicant an opportunity to be heard.
Substantive matters include keeping the applicant informed of any matters affecting the review, including providing the applicant with a copy of the Summary of Reasons.
When a rejected application is transferred to the PAB, the applicant is informed in an initial letter from the Board. This initial letter will, minimally, notify the applicant, as required by paragraph 30(6)(a) of the Patent Rules, that the examiner's rejection has not been withdrawn see 21.05.02 and that the case has been transferred to the PAB. A copy of the Summary of Reasons see 21.06 will accompany the letter.
Where the applicant responded to the Final Action by submitting amendments, the initial letter will also confirm, per paragraph 30(6)(b) of the Patent Rules, that because the rejection was not withdrawn, any amendments received in response to the Final Action within the time referred to in subsection 30(4) are considered not to have been made.
Additional information relating to the review, including the offer of an opportunity to be heard, may be included in the initial letter or dealt with separately.
Communications from the PAB generally include a time period to respond. It is important to note, however, that a letter from the PAB is not a requisition. If it is not responded to within the time period stated, the application will not be deemed abandoned. Consequently, failure to respond to a PAB communication will not suspend the review process.
21.07.03 Issues arising during the review process
During the review, the panel may come to believe that defects beyond those identified in the Final Action are present in the application. The identification of such defects may result, for example, from the panel interpreting the application differently from the examiner, or be in view of different interpretations of jurisprudence or office practices, or be in view of new art submitted through a late-filed protest, art cited in recent foreign prosecution or a change in the Patent Act or Patent Rules.
Where a new defect is identified during the review, the applicant is given notice of the issue and an opportunity to respond, which includes the possibility of proposing amendments to address the defect. Amendments proposed by the applicant, if they correct the defect, may be later required to be made by the Commissioner in a Commissioner’s Decision under paragraph 31(b) of the Patent Rules see 21.08.03. The opportunity to respond is demanded both by the requirements of natural justice and by subsection 30(6.1) of the Patent Rules, which provides that:
If, during the review of a rejected application, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules in respect of defects other than those indicated in the Final Action notice, the Commissioner shall inform the applicant of those defects and invite the applicant to submit arguments as to why the application does comply within the time specified by the Commissioner.
Where a potential defect is identified during the review process, the panel may raise the matter directly with the applicant or may request that the examiner provide an analysis in relation thereto. In exceptional cases, the panel may also determine that a further search and analysis of the prior art is necessary in relation to the defect.
Where an analysis is requested of an examiner, the examiner's findings are presented in a Supplemental Analysis, a document similar in form to a Summary of Reasons but addressing only the issue identified by the panel.
Where a Supplemental Analysis is requested of an examiner, the applicant will be duly informed and will receive a copy of the analysis.
A response to a Supplemental Analysis, including proposed amendments, should only address the defect under consideration in the analysis.
21.07.03a Clarification of certain matters
It is desirable that the review proceed, as far as is reasonably practical, on the basis of a common understanding of the matters at issue. Therefore, in addition to the identification of new defects, it is also possible that the panel may wish to clarify certain other matters with the applicant during the review process.
Such clarifications are intended to ensure that the applicant and the panel have the same understanding of, for example, the examiner's grounds for rejection, the applicant's arguments, the applicable Office practice, or of certain relevant facts.
Where it appears to the panel that clarification is desirable, a memo will be sent to the applicant setting out the matters that, in the panel's view, may require clarification. Where the examiner's input is necessary, it may be provided in the form of a Supplemental Analysis.
The applicant will be given a period of time to respond, and may respond with written submissions or with oral arguments at the hearing.
21.07.04 Opportunity to be heard
Subsection 30(6.4) of the Patent Rules specifies that the applicant must be given an opportunity to be heard before any refusal. The applicant will therefore generally be invited to participate in a hearing. The PAB will make reasonable efforts to accommodate the applicant's schedule, but if the applicant is unable to participate in a timely hearing the review will proceed nonetheless.
The applicant is not required to attend a hearing, and may instead request that the review proceed on the basis of the written record.
Prior to any hearing, the panel will perform an initial review of the case both to ensure that the outstanding issues have been clearly identified and articulated and that there are no other issues requiring clarification, such as defects identified pursuant to subsection 30(6.1) of the Patent Rules see 21.07.03.
The purpose of the hearing is to provide the applicant with a further opportunity to develop and explain the reasons for contending that the application is not defective (on the basis of the grounds raised either by the examiner or by the PAB during the review process) or that proposed amendments overcome the identified defects. Written arguments and/or additional evidence should be presented to the panel well ahead of the hearing, to ensure the panel has sufficient time to consider them. When any new legal or technical argument or fresh evidence relevant to the grounds raised by the examiner prosecution comes to the applicant’s attention it should be presented as early as possible and not deferred until the review stage (i.e., the applicant’s best case should be made during prosecution before the examiner and not only before the PAB).
The hearing may occur in person, via teleconference or via videoconference, at the option of the applicant, and may include the assigned panel, the applicant and applicant’s patent agent and/or associate patent agent, as well as the examiner and the examiner’s supervisor.
The hearing is primarily an opportunity for the applicant to present its position in order to advance prosecution, with input from the panel.
Typically a hearing begins with an oral presentation by the applicant. The panel may pose questions to the applicant during or after the applicant's presentation of arguments, depending both on the need to intervene and the applicant's preferences. The examiner and examiner's supervisor are normally present and may be called upon by the panel to answer questions in relation to the defect(s) and any technical matters. The applicant is given an opportunity to make any final comments before the conclusion of the hearing. No cross-questioning between the applicant and examiner is permitted.
Points of fact agreed to during the hearing, or concessions made by the applicant, will be taken into account in the recommendation to the Commissioner. Although it is expected that the applicant will be prepared to address any questions posed at the hearing, it may be acceptable, should an unexpected issue arise during discussion, for the applicant to make additional submissions to the panel within a reasonable period thereafter.
Since the panel must make a recommendation to the Commissioner, no decision regarding disposal of the application may be made at the hearing.
21.07.05 Decisions without a hearing
It is not necessary in every case to hold a hearing. As noted in 21.07.04, the applicant may decline the invitation for a hearing. Where this is done, the assigned panel will review the case and provide a recommendation to the Commissioner taking into account the written record before it, including any further written submissions the applicant has provided.
It is also possible that the panel, after its initial review of the case, may conclude that the application complies with the Act and Rules. Where the Commissioner agrees with this conclusion, there is no need to invite the applicant to attend a hearing. Subsection 30(6.4) of the Patent Rules does not require a hearing where the application will be allowed.
21.07.06 Recommendation to the Commissioner
At the conclusion of the panel's review, the panel will deliberate and formulate a recommendation to the Commissioner. The panel considers the facts and law related to the particular matter before them, including any arguments and evidence adduced by the applicant during the review.
The recommendation is provided as written reasons that generally include an explanation of the invention being considered, background information on the prosecution, an identification of the issues to be decided, relevant statutory authority, pertinent jurisprudence, a summary of the positions of the examiner and applicant, a detailed analysis of the issue(s) including factual findings, and a final recommendation of the panel.
The Commissioner of Patents is then briefed on the case and reviews the recommendation prior to rendering a final decision.
21.08 The Commissioner's Decision – June 2016
The Commissioner's Decision provides reasons for arriving at the decision and explains any findings with reference to the Patent Act, Patent Rules and pertinent jurisprudence. Typically, the Commissioner adopts the panel's reasons.
In addition to its importance to the applicant, a Commissioner's Decision can also provide insight and/or guidance to applicants and patent examiners as to the current understanding of the state of the law and Office practice. Commissioner's Decisions are carefully reviewed when practice guidance is provided to examiners.
A copy of the decision is sent to the applicant (by registered mail if the application is refused, as per section 40 of the Patent Act). These decisions become part of the prosecution file and are therefore open to public inspection, except for decisions made in respect of applications filed prior to October 1, 1989 which are only published with the permission of the applicant.
A database of published Commissioner's Decisions is maintained by the Office and may be accessed via the CIPO web site.
In the following sections, the possible outcomes of Commissioner's Decisions are set out, along with the effect of each.
21.08.01 Rejection not justified and application allowable
Subsection 30(6.2) of the Patent Rules provides that
If, after review of a rejected application, the Commissioner determines that the rejection is not justified on the basis of the defects indicated in the Final Action notice and has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner shall notify the applicant that the rejection is withdrawn and that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice of allowance.
In such a case the applicant will be notified in the Commissioner's Decision that the rejection is withdrawn and that the application will be allowed.
Once the application has been allowed, it is treated in the same manner as any other allowed application see section 13.11 of this manual, with a Notice of Allowance being sent to the applicant requisitioning payment of the final fee.
21.08.02 Application refused
If upon review of the rejected application the Commissioner is of the view that the examiner's rejection is justified, or that the application does not comply with the Act or Rules on the basis of defects identified during the review process, and it is not evident that the application can be made compliant through a directed amendment per paragraph 31(b) of the Patent Rules, the Commissioner will refuse the application pursuant to section 40 of the Patent Act. The refusal will be indicated in the Commissioner's Decision which will also specify the applicable six month period in which to initiate an appeal to the Federal Court.
21.08.03 Amendments required by the Commissioner
As per subsection 30(6.3) of the Patent Rules
If, after review of a rejected application, the Commissioner determines that the application does not comply with the Act or these Rules, but that specific amendments are necessary, the Commissioner shall notify the applicant that the specific amendments have to be made within three months after the date of the notice. If the applicant complies with that notice, the Commissioner shall notify the applicant that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice of allowance.
The applicant will be notified of the necessary amendments in the Commissioner’s Decision pursuant to subsection 30(6.3) of the Patent Rules and will be invited to make the amendments pursuant to paragraph 31(b) of the Patent Rules. The amendments required in a Commissioner's Decision may be based on proposed amendments submitted during the review process, both as a result of the applicant's own initiative or as a result of defects identified during the review process. They may also be based on the Commissioner’s findings alone as to how the application can be made compliant with the Act and Rules.
If in response to the requirement for amendment the applicant does not make the necessary amendments, or makes amendments beyond those required, the Commissioner will refuse the application in accordance with section 40 of the Patent Act.6
21.09 Appeals of Commissioner's Decisions – December 2013
Where the Commissioner refuses a patent application under section 40 of the Patent Act, section 41 of the Act states that
Every person who has failed to obtain a patent by reason of a refusal of the Commissioner to grant it may, at any time within six months after notice as provided for in section 40 has been mailed, appeal from the decision of the Commissioner to the Federal Court and that Court has exclusive jurisdiction to hear and determine the appeal.
The decision of the Federal Court may be appealed to the Federal Court of Appeal and, with leave, to the Supreme Court of Canada.
21.10 Prosecution following a decision of the Court – December 2013
Following a decision of the Court, the Commissioner takes action in accordance with any resulting orders of the Court. Of note is that the Court has the authority to order the entering of amendments, per paragraph 31(d) of the Patent Rules
An application that has been rejected by an examiner in accordance with subsection 30(3) shall not be amended after the expiry of the time under subsection 30(4) for responding to the examiner's requisition except
- (d) by order of the Federal Court, the Federal Court of Appeal or the Supreme Court of Canada.
Endnotes for chapter 21
1 A further report would not be written, for example, solely to advise the applicant that the next report may be made final, where the report otherwise simply reiterates the arguments presented in the previous report.
2 A further report may not be necessary, for example, where the examiner has previously identified a defect as a non-compliance with one section of the Act or Rules, but later realizes that for the same or substantially the same reasons the defect in question results in non-compliance with a further section of the Act or Rules or that the defect should have been identified as non-compliance with a different section of the Act and Rules than that previously identified.
3 If the examiner had previously identified something as belonging to the common general knowledge, and the applicant had acknowledged this in correspondence, it would not be necessary to further substantiate that it is, in fact, common general knowledge. Similarly, if a claim with five elements was identified as being anticipated in view of a document D1, and the applicant agrees that D1 teaches four of the five claimed elements, it is not necessary to elaborate on those features in the reasons for the rejection; the point of disagreement is whether D1 discloses the fifth element.
4 Despite the fact that any apparent defects will be identified, a review begins with the presumption that the search and examination prior to the review stage is complete and comprehensive.
5 The PAB was created in a “Notice to the Patent Profession” (re: creation of the PAB, general guidelines, and hearing procedure) C.P.O.R., Aug. 4, 1970
6 Canada. (2013). Regulatory Impact Analysis Statement, Rules Amending the Patent Rules. In Canada Gazette, Part II, Vol. 147, No. 26, 18 December 2013.
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