MOPOP - Chapter 13


Examination of Applications

Table of Contents

13.01
Scope of this chapter – June 2015

This chapter covers the examination of regularly filed and national phase applications. Information regarding the examination of International applications can be found in chapter 22.

13.02
Request for examination – June 2015

Under the Patent Act, an application is not examined automatically. Rather, Canada operates on a system of deferred examination, wherein an application is only examined upon request.

In accordance with subsection 35(1) of the Patent Act, a request for examination may be made by any person, as long as it is in the prescribed manner and accompanied by the necessary fee (set out in item 3 of Schedule II of the Patent Rules). The Commissioner of Patents may also, under subsection 35(2) of the Patent Act, require an applicant to request examination of an application.

If a request for examination is made by a third party, the Office will inform the applicant of this fact.

Section 95 of the Patent Rules states that the following information must be included with a request for examination:

  1. (a) the name and address of the person making the request;
  2. (b) if the person making the request is not the applicant, the name of the applicant;
  3. (c) information, such as the application number, sufficient to identify the application.

According to section 96 of the Patent Rules, a request for examination must be made before the expiry of the five-year period after the filing date of the application or, in the case of a divisional application, the later of this five-year period and the six-month period after the date on which the divisional application is actually filed.

If a request for examination is not made or the request for examination fee is not paid within the prescribed period or within the time specified in a notice sent by the Commissioner under subsection 35(2) of the Patent Act, the application will be considered abandoned in accordance with paragraph 73(1)(d) or 73(1)(e) of the Patent Act, respectively [see also chapter 20 of this manual].

13.03
Advanced examination - June 2015

Applications are generally examined sequentially according to the date on which the request for examination was made.Footnote 1 There are however mechanisms by which an application may be advanced out of routine order: "special order" advanced examination; advanced examination of applications related to green technology; and the Patent Prosecution Highway.

13.03.01
Advanced examination (special order)

Under subsection 28(1) of the Patent Rules, the Commissioner of Patents shall advance an application for examination out of its routine order on the request of any person who pays the fee set out in item 4 of Schedule II of the Patent Rules, where the Commissioner determines that failure to advance the application is likely to prejudice that person's rights. Applications that are subject to advanced examination are commonly referred to as "special order" applications.

In accordance with subsection 28(1) of the Patent Rules, a request for advanced examination (special order) can only be granted if the application in question is open to public inspection under section 10 of the Patent Act and a request for examination has been made pursuant to subsection 35(1) of the Patent Act.

Although a third party may request advanced examination of an application, subsection 10(2) of the Patent Act specifies that only the applicant may request that an application be opened to public inspection before the expiry of the confidentiality period. A request to advance examination made by a third party will only be held for consideration if the application is scheduled to be opened to public inspection within three months of the request. A decision to advance the examination of the application out of its routine order will only be made once the application is open to public inspection. If the request for advanced examination is submitted by a third party more than three months before the application is scheduled to be opened to public inspection, the request will be refused. The Office will inform the applicant of the request by letter.

A request to advance examination will not be considered if the application in respect of which the request was made is incomplete [see Chapter 5 for completion requirements].

Once an application is advanced out of its routine order, this order will generally apply for the duration of prosecution; however, subsection 28(2) of the Patent Rules specifies that an application will be returned to its routine order if:

  1. (a) the Commissioner extends, under subsection 26(1), the time fixed by the Patent Rules or by the Commissioner under the Patent Act for doing anything in respect of the application; or
  2. (b) the application is deemed to be abandoned under subsection 73(1) of the Patent Act whether or not it is reinstated under subsection 73(3) of the Patent Act.

A person who requested advanced examination can also request that advanced examination cease, in which case the application will be examined in its regular order. The fee for requesting advanced examination is not refundable under section 4 of the Patent Rules.

13.03.02
Applications related to green technology

Under paragraph 28(1)(b) of the Patent Rules, examination of a patent application which is related to green technology can be advanced out of routine order upon request. The applicant must submit a declaration stating that the application relates to technology "the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources." No additional fee is required.

In accordance with subsection 28(1) of the Patent Rules a request for advanced examination for an application related to green technology can only be granted if the application in question is open to public inspection under section 10 of the Patent Act and a request for examination has been made pursuant to subsection 35(1) of the Patent Act.

13.03.03
The Patent Prosecution Highway (PPH)

Examination of applications having family members with claims that are granted or determined to be allowable in other jurisdictions may be eligible to be advanced out of routine order via the Patent Prosecution Highway (PPH). In order for an application to qualify for the PPH, the PPH request must be received before examination has begun and the application in question must be open to public inspection. No additional fee is required.

13.04
Examination - June 2015

The purpose of examination is, at each stage, to perform a thorough analysis of the patent application to determine whether it complies with the requirements of the Patent Act and Patent Rules. After receiving a request for examination an examiner will analyse the application taking into consideration the originally filed application and any amendments that have been received in the Patent Office.

After having performed this analysis, the examiner will either allow the application in accordance with subsection 30(1) of the Patent Rules or issue a report detailing the application's defects in accordance with subsection 30(2) of the Patent Rules. Where a report is to be issued, it should be as comprehensive as possible, to enable the applicant to make informed decisions regarding the continued prosecution of their application and, if possible, to place the application in a condition for allowance [see section 13.11].

Note that an application for which examination has been requested may be examined prior to being laid open to public inspection under section 10 of the Patent Act, but an examiner will not approve an application for allowance until it has been laid open.

13.04.01
Examination of the abstract, description and drawings

A detailed discussion regarding examination of the abstract, description and drawings can be found in chapters 8, 9 and 10 of this manual, respectively.

13.05
Examination of the claims using purposive construction - June 2015

In Canada (Attorney General) v Amazon.com Inc, the Federal Court of Appeal observed that, during examination, Supreme Court jurisprudence "requires the Commissioner's identification of the actual invention to be grounded in a purposive construction of the patent claims".Footnote 2

The application of the principles of purposive construction to the examination of a patent application must take into account the role of the patent examiner and the purpose and context of examination.Footnote 3

In Free World Trust and Whirlpool, the Supreme Court outlined that purposive construction is performed by the court to objectively determine what the person skilled in the art would, as of the date of publication of the patent application and on the basis of the particular words or phrases used in the claim, have understood the applicant to have intended to be the scope of protection sought for the disclosed invention.Footnote 4

Once a claim has been purposively construed, that construction is used to determine whether the claim complies with the Patent Act and Patent Rules. Where there is no disagreement as to the construction of a claim, the examiner may choose not to provide the detailed purposive construction analysis in a report.

13.05.01
Steps of purposive construction

When examining a claim, an examiner must read the claim in an informed and purposive way. Prior to construing a claim an examiner will:

  1. Identify the person of ordinary skill in the art [see chapter 15]; and
  2. Identify the relevant common general knowledge of the person of ordinary skill in the art at the time of publication [see chapter 15].

The above steps provide the context in which the claim is to be read. Once the context is determined the examiner will:

  1. Identify the problem addressed by the application and its solution as contemplated by the inventor [see 13.05.02b]; and
  2. Determine the meaning of the terms used in the claim and identify the elements of the claim that are essential to solve the identified problem [see 13.05.02c].

13.05.02
Considerations for claim construction

Claim construction during examination therefore requires an examiner to interpret each claim in a structured manner whereby the examiner will:

13.05.02a
Use a fair, balanced and informed approach

The specification as a whole is addressed to the person skilled in the art and, as such, provides the context in which the claim should be read and informs the meaning of the terms recited in the claim and the nature of the invention.Footnote 5 Upon a purposive construction the terms of a claim will be given specific technical meanings in light of the common general knowledge of the person skilled in the art.Footnote 6 Thus, in order to arrive at a fair, balanced and informed understanding of the subject-matter of a claim, it is critical that a purposive construction of the claim be performed considering the specification as a whole as read through the eyes of the person skilled in the art, against the background of the common general knowledge in the field or fields relevant to the invention at the time the application became available to the public.

During examination, the necessary foundation of knowledge for performing a purposive construction of the claims is found in submissions from the applicant and the knowledge of an appropriately experienced examiner.Footnote 7

13.05.02b
Identify the problem and solution

The purpose of the Patent Act is to provide exclusive rights to an inventor for a new and useful invention in exchange for a disclosure that allows the public to use or operate the invention as contemplated by the inventor. Thus, recognizing that a patentable invention is an inventive solution to a practical problemFootnote 8, it follows that an invention must be disclosed (and ultimately claimed) so as to provide the person skilled in the art with an operable solution.

The identification of the problem and the solution provided by the invention informs the purposive construction of the claims.Footnote 9

The identification of the problem faced by the inventor is guided by the examiner's understanding of the common general knowledge in the art and by the teachings of the description.

The common general knowledge in the art provides the baseline of information to which the description is expected to add. The person skilled in the art will read the specification in the expectation that it sets out something beyond the commonly known solutions to commonly known problems.

It must be borne in mind that the applicant is not required to explicitly state the problem and solution. Paragraph 80(1)(d) of the Patent Rules makes this clear, stating that the description shall:

describe the invention in terms that allow the understanding of the technical problem, even if not expressly stated as such, and its solution.

Consequently, the identification of the problem and its solution may be an integrated exercise, i.e. the manner in which the solution is described can help inform the problem, and vice versa. For example, a significant focus in the description on certain details of the solution may assist in the identification of the problem, while a relative absence of emphasis on certain aspects of the solution may likewise suggest the problem lay elsewhere. Where the applicant is explicit as to the nature of the problem, examination should generally proceed accordingly unless doing so would be unreasonable on an informed reading of the application in light of the common general knowledge.

The examiner will give consideration to what the inventor states about the background of the invention, the "objects of the invention", any specific problems, needs, limitations or disadvantages known in the art or discovered by the inventor, etc. in identifying the problem faced by the inventor.

While claim construction during examination must remain anchored in the language of the claims, it "cannot be determined solely on the basis of a literal reading" of the claims.Footnote 10 A properly informed purposive construction must consider the application as a whole.

Not only must one not lose sight of the fact that the claims must be interpreted in light of the description, a claim-based analysis "does not mean that the Commissioner cannot ask or determine what the inventor has actually invented, or what the inventor claims to have invented. On the contrary, these are relevant and necessary questions in a number of contexts, including novelty, obviousness, and patentable subject matter".Footnote 11 This is consistent with the recognition in Free World Trust of the need to avoid "the pitfalls of language" so as to ensure the inventor receives "protection for that which he has actually in good faith invented".Footnote 12

13.05.02c
Determine which elements of the claim solve the identified problem

One aspect of purposive construction is the identification of the essential elements of the claim. The identification of the essential elements of a claim cannot be performed without having first properly identified the proposed solution to the disclosed problem. Without having first considered the problem and solution, the identification of essential elements would be circular - it would begin and end with the language of the claim, contrary to Free World Trust which recognizes that elements can be found to be non-essential if at the date of publication of the patent, the skilled addressee would have appreciated that a particular element could be substituted or omitted without affecting the working of the invention.Footnote 13

Ultimately, some element or combination of elements defined in the claim must provide the solution. One must, however, approach each claim with an understanding that not every element that has a material effect on the operation of a given embodiment is necessarily essential to the solution. Some elements of a claim define the context or the environment of a specific working embodiment, but do not actually change the nature of the solution to the problem.Footnote 14

Note that while the identification of the essential elements is performed in light of the knowledge of the art at the date of the publication of the patent specification,Footnote 15 this does not mean that one can simply conclude that the essential elements of the invention are those that distinguish the claimed subject matter from the prior art.Footnote 16 That is, an element is not necessarily essential merely by the fact that is not found in the prior art. Likewise, an element cannot necessarily be deemed non-essential merely because it is part of the CGK. An element is essential if it is required to provide the solution to the problem, regardless of whether or not it is known.

Having identified the problem and solution, and defined the essential elements in the claims, an examiner may conclude that the claim either omits an essential element or includes non-essential elements.

Where it appears, having considered a claim in light of a fair reading of the description, that an element essential to the operation of the solution has not been defined in the claim, the claim may be defective for over breadth (i.e. lack of support) and/or for lack of utility.

In certain cases, an examiner may consider elements included in a claim of an application to be superfluous (non-essential) to the solution to a given problem. The mere presence of a superfluous limitation is not a defect as such, although the inclusion of such an element could render a claim defective (for example if its presence results in ambiguity).

It must be recognized that while the Office considers superfluous elements to be non-essential and not relevant to the determination of a claim's patentability during examination, if an applicant maintains such an element in the claim through to grant a court might later construe it to be essential when applying the "self-inflicted wound" factors of purposive construction as identified in Free World Trust and Whirlpool.Footnote 17

An invention is an element or a combination of elements that provides a solution to a problem. Where a claim includes solutions to more than one problem it includes more than one invention.Footnote 18

If a claim includes solutions to more than one problem, examination should focus on one solution to a problem in performing the purposive construction. The initial choice of solution should be guided by the description, selecting the solution given the greatest emphasis by the inventors. If it becomes necessary to consider a different solution, the analysis should be undertaken anew.

On occasion it may be the case that elements or sets of elements in a claim do not interact with each other to achieve a unitary result; this may reflect an "aggregation" rather than a combination.Footnote 19 A consideration of the problem and solution emphasized by the inventor in the description may assist the examiner to select only the element or set of elements that work together in the claim that provide the operable solution.

13.05.03
Examination once the claims have been construed

In most cases, an examiner reading a claim will automatically ascribe appropriate meanings to the terms of a claim in light of the teachings of the description and the examiner's technical expertise. It is not necessary to explain these conclusions in a report, unless it becomes apparent that there is some relevant disagreement between the examiner and the applicant as to the significance of certain terms. In such instances, it is only necessary to explicitly address the construction of the contested terms.

Similarly, in some cases it will be possible to conclude that a claim does not comply with the Patent Act or Patent Rules without explicitly determining whether a given element is or is not essential. A prior art document that discloses all the elements of a claim, for example, will anticipate the claimed subject-matter regardless of whether each element is essential or not. Here again, examiners are not required to detail in reports parts of their analysis that are not in issue.

Where an examiner's conclusions regarding a specific element are relevant to the identification of a perceived defect, the examiner should provide reasons to support their conclusions, e.g. emphasize the identified problem and solution and those elements essential to providing that solution.

Once the claims have been purposively construed, the essential elements can be analyzed to determine if they clearly define subject matter that complies with the Patent Act and Patent Rules. Specific requirements are discussed in the following chapters of the MOPOP:

Requirements for the clarity and form of the claims are covered in Chapter 11.

Subject matter and utility are covered in Chapter 12.

Novelty, obviousness and double patenting are covered in Chapter 15.

13.05.04
Examples of purposive construction

The following examples apply the guidance set out in this section to a determination of statutory subject matter.

Example 1:

An application is directed to a known skillet and a known spoon, where the skillet and spoon each incorporate a "specific identifier" in the form of a feature common to both products. The description indicates that it is known in the art to provide silicone grips on spoon handles to improve a user's grip on a spoon, and that it is known to include a silicone grip on a skillet handle to help insulate the handle. The application discloses that by incorporating the specific identifier in the handles of both products, a consumer is likely to buy the two products together due to the recognition of the specific identifier. The description indicates that the specific identifier has aesthetic appeal and that embodiments include a raised logo molded into the silicone and a specific striped pattern.

Claim:

1. A kit comprising:

  1. a spoon comprising a silicone-wrapped handle, wherein the silicone on the handle provides increased grip for a consumer, and wherein the silicone on the handle comprises a specific identifier;
  2. a skillet comprising a silicone-wrapped handle wherein the silicone provides insulation to the skillet handle, and wherein the silicone on the handle comprises the specific identifier;

    wherein the specific identifier comprises a raised logo.

Analysis:

Person of ordinary skill in the art (POSITA)

The POSITA is considered to be a person who is skilled in the design, production and manufacturing of cookware including the fields of metal working, forging, and plastic moulding. The POSITA is knowledgeable in the field of marketing.

Common general knowledge (CGK)

The description states that the use of silicone on spoon handles to improve the grip is CGK and that the use of silicone on skillet handles is widely known as an insulator. Though an examiner could independently verify that the use of silicone on cookware is CGK, if an applicant explicitly states that certain knowledge is CGK the examiner may take such statements at face value. Methods of moulding silicone grips on cookware are well known. Methods of moulding logos and various patterns in silicone are common general knowledge.

The Problem

It is clear from the description that the problem the inventor has set out to solve is to influence a consumer to associate one product (the spoon) with another product (the skillet). Considering the statements made in the description and the common general knowledge, improving the grip on the spoon and insulating the skillet handle were not part of the problem that the inventor set out to solve.

The Solution

Though the applicant has claimed the silicone-wrapped handles and refers to the respective benefits that they confer to the spoon and skillet, these benefits are not material to solving the problem of leading a consumer to associate the two products together. The solution to the problem the applicant has set out is the provision of the specific identifier on both products.

What are the essential elements?

As the specific identifiers are the only elements of the claim that provide the solution to the problem outlined in the description, the specific identifiers are the only essential elements of the claim.

Is the claim statutory?

The specific identifiers are features having a purely intellectual or aesthetic significance which do not affect the practical functioning of the products. The examiner will therefore identify a defect under section 2 of the Patent Act since the only essential elements of the claim are the specific identifiers; the claims therefore do not define a statutory invention [see chapter 12 of the MOPOP for a discussion of statutory subject matter].

Example 2

An application is directed to a portable playpen for outdoor use. The description states that such playpens having no legs and flexible undersides are well known for use on slightly uneven terrain, such as in a park, as the flexible underside can conform to the terrain. The application discloses that the inventors set out to improve these playpens by adding a feature that would determine whether or not the playpen installation is stable and alert a parent if the installation is not stable. They have added several sensors at particularly chosen locations about the center of the playpen to gather data to calculate a stability factor. If the stability factor is below a predetermined threshold, an alarm attached to the playpen will sound.

Claim:

1. A method of determining the instability of an outdoor playpen comprising:

providing a playpen with sensors adhered to positions X, Y and Z;

measuring the vertical and horizontal load at each sensor;

calculating an overall stability factor for the playpen using the data collected by the sensors; and

sounding an alarm if the stability factor is below a predetermined threshold.

Analysis:

Person of ordinary skill in the art (POSITA)

The POSITA is knowledgeable in the field of children's furniture design, production and manufacturing, and in the fields of force measurement and electronics.

Common General Knowledge (CGK)

Outdoor playpens having flexible bottoms to allow them to conform to the contours of uneven terrain are well known. It is also known that various types of sensors can be incorporated into products to calculate various values.

The Problem

It is clear from the description that the problem the inventors wanted to solve was determining whether or not an outdoor playpen having a flexible bottom is stable when placed on uneven terrain.

The Solution

The solution as detailed in the description is to adhere sensors to locations X, Y and Z of the playpen, measure force data at each sensor, calculate a stability factor from the data, and sound an alarm when the stability factor is below a predetermined threshold.

What are the essential elements?

In order to solve the problem of determining whether or not an outdoor playpen is stable, the following elements of the claim are considered essential: adhering sensors to locations X, Y and Z of a playpen, measuring the force at each location, calculating the stability factor for the playpen using the data collected by the sensors, and sounding an alarm if the calculated stability factor is below a predetermined threshold.

Is the claim statutory?

Yes. The essential elements of adhering the sensors at locations X, Y and Z, measuring the force at each location and sounding the alarm are statutory elements that have a practical application.

Example 3, Scenario a):

An application is directed to a new board game in which game pieces are moved by players around the spaces on a 3-dimensional board depending on the number resulting from a roll of a dice. The board has a mechanized arm with a claw at one end that rotates around the board; depending on the orientation of the claw and the position of the piece, the claw will either knock over the player's piece or pick it up and place it in a different area of the board.

Claim:

1. A board game comprising:

a 3-dimensional game board comprising a pattern of spaces; the board comprising a mechanized arm that is rotated around the centre of the board by a motor, said arm comprising a claw that can be positioned in two orientations, either horizontal or vertical; and

a plurality of game pieces, wherein each piece comprises a means to interact with the claw when in the horizontal orientation thereby allowing said claw to pick up said piece.

Analysis:

Person of ordinary skill in the art (POSITA)

The POSITA is a designer and manufacturer of board games and is also knowledgeable in the field of mechanical engineering.

Common General Knowledge (CGK)

Board games in general are well known and the manufacture of 3-dimensional game pieces is CGK. Mechanical devices are also CGK.

The problem

The problem that has been identified in the description is the need to create a new board game.

The solution:

The solution as detailed in the description is the provision of a new board game that requires a plurality of game pieces and a 3-dimensional board comprising a mechanized arm and claw.

What are the essential elements?

The elements that are required to obtain the solution are the pieces and the 3-dimensional board comprising the mechanized arm and claw.

Is the claim statutory?

Yes. The essential elements, (the 3-dimensional board, the game pieces, and the mechanized arm and claw) provide a practical solution to the problem.

Example 3, Scenario b):

Ten years after the introduction of the board game of Example 3, Scenario a) into the market, the game has achieved commercial success and is well known world-wide. The inventor has filed a new application for an improved board game that now has additional instructions printed on the spaces of the board (e.g. move ahead three spaces, back two spaces, etc…). The improved board still comprises the original mechanized arm and claw.

Claim:

A board game comprising:
a 3-dimensional game board comprising a pattern of spaces;
said board comprising a mechanized arm that is rotated around the centre of the board by a motor, said arm comprising a claw that can be positioned in two orientations, either horizontal or vertical;
and a plurality of game pieces, wherein each piece comprises a means to interact with the claw when in the horizontal orientation thereby allowing said claw to pick up said piece;
wherein 20% of the spaces comprise instructions on where to move a particular game piece.

Analysis:

Person of ordinary skill in the art (POSITA)

The POSITA is the same as that of Example 3, Scenario a) above.

Common General Knowledge (CGK)

Board games are CGK. The particular 3-dimensional board, pieces, mechanized arm and claw disclosed in the application are all CGK. The use of instructions on the spaces of a board game is CGK.

The problem

As detailed in the description, the problem is defined as finding an improved method of playing the game.

The solution:

The instructions printed onto 20% of the squares provide the solution to the identified problem.

What are the essential elements?

While the claim defines the game board, the pieces, and the mechanized arm and claw, these merely provide the context of the invention. They do not change the nature of the solution to the problem. The element that is essential to solve the identified problem is the inclusion of instructions on 20% of the spaces on the board.

Is the claim statutory?

No, the essential element is the inclusion of instructions that are printed on the spaces. The instructions are mere printed matter, which is not patentable subject matter.

Example 3 Scenario c):

Ten years after the introduction of the board game of Example 3, Scenario a) into the market, the game has achieved commercial success and is well known world-wide. The inventor has filed a new patent application for an improved game board having small hydraulic pistons at each corner of the board. The pistons are used to elevate and lower each corner of the board during the game so that the 3-dimensional characteristics change (i.e. the board is tilted) resulting in a changing interaction between the claw and the game pieces.

Claim:

A board game comprising:
a 3-dimensional game board comprising a pattern of spaces;
the board comprising a mechanized arm that is rotated around the centre of the board by a motor said arm comprising a claw that can be positioned in two orientations, either horizontal or vertical;
said board comprising a hydraulic piston at each corner to elevate or lower the corners thereby tilting the board;
and a plurality of game pieces, wherein each piece comprises a means to interact with the claw when in the horizontal orientation thereby allowing said claw to pick up said piece.

Analysis:

Person of ordinary skill in the art (POSITA)

The POSITA is the same as that of Example 3, Scenario a) above.

Common General Knowledge (CGK)

Board games are CGK. The particular 3-dimensional board, pieces, mechanized arm and claw disclosed in the application are all CGK. Hydraulic pistons per se are CGK.

The problem

The problem outlined in the description is defined as finding an improved method of playing the game.

The solution

The solution to the problem is the inclusion of the hydraulic pistons at each corner of the game board so that the board can be tilted during game play.

What are the essential elements?

The board, pieces, arm and claw provide the context for the solution to the problem but are not essential elements that lead to the solution contemplated by the inventor. The essential elements are the hydraulic pistons which allow the tilting of the game board and which can cause the interaction between the claw and the game pieces to change.

Is the claim statutory?

Yes, the essential elements (the hydraulic pistons) provide a new practical application to the game board.

13.06
Search of the prior art - June 2015

Patentability must be assessed in view of the prior art, and it is therefore necessary for the relevant prior art to be identified. The prior art, broadly speaking, includes all information, in any form, made available to the public in Canada or elsewhere prior to the claim dateFootnote 20, with a limited exception for information disclosed by the applicant or those obtaining information from the applicant (see paragraph 28.2(1)(a) of the Patent Act). In practice, however, the prior art relied on during examination generally comprises published patent documents, journal articles, textbooks, manuals and the like.

An application for patent in Canada may result from a national filing or from entry into the national phase of an international application filed in Canada or elsewhere under the Patent Cooperation Treaty (PCT).

The scope of the search of the prior art performed by a Canadian examiner at the national phase is determined in part by the extent to which relevant prior art has been identified in any earlier searchesFootnote 21. Further, examiners are not required to search claimed matter that is determined to be non-statutory, to lack practical utility or that is not supported by the application as filed (e.g. where new matter has been introduced contrary to subsection 38.2(2) of the Patent Act).

Where claimed matter is not required to be searched for any of the foregoing reasons, but it is evident from the specification as a whole that a claim to related subject-matter requiring a search could be made, a search should generally be performed on this related matter. By way of example, a claim to a method of medical treatment need not be searched, but if it is clear that a statutory claim could be made on related matter (such as a related use), this matter should be searched.

Where the claimed subject-matter has been the subject of a comprehensive international search by an International Searching Authority, a Canadian examiner will nevertheless perform at least a search of Canadian patent documents to identify documents relevant to double-patenting or to anticipation under paragraphs 28.2(1)(c) and 28.2(1)(d) of the Patent Act.

An examiner will typically consider available foreign search results to avoid unnecessary replication of work. Where the results of a foreign search are relied on in a report, the report should indicate which documents were identified in a foreign search.

Whenever the examiner deems it appropriate, a further search may be undertaken. This search need not be restricted to Canadian patent documents, and can be performed on any database or other search tool to which the examiner has access. Searches are generally limited by some combination of dates, keywords, and International Patent Classification (IPC) codes of relevance to the claimed matter.

In keeping with the purpose of an examiner's report, it is desirable for all relevant prior art to be identified at the time of the first report. Nevertheless, given the sheer quantity of prior art now available it must be acknowledged that in practice documents may be missed, or that at the early stages of examination the relevance of some documents may not be fully appreciated. It is also possible that, in view of amendments to the claims or arguments presented by the applicant, it becomes necessary to rely on additional prior art.

Where, for any reason, relevant prior art is identified during the course of prosecution, it is incumbent on the examiner to cite this prior art against the claimed invention.

13.07
Examiner's reports - June 2015

An examiner's report is an examiner's official means of communicating with an applicant. A report will contain at least one requisition as well as information provided to clarify the scope or content of each requisition. A report will also indicate the time limit within which the applicant must respond to each requisition in order to avoid abandonment. [For more information on abandonment and time limits see Chapter 20 of this manual.]

Under subsection 30(2) of the Patent Rules, where an examiner has reasonable grounds to believe that an application does not comply with the Patent Act and Patent Rules, the applicant must be informed of the application's defects and must be requisitioned to amend the application to comply or to provide arguments as to why the application does comply. Where an examiner has identified one or more defects, these will be detailed in the report and, for the purposes of paragraph 73(1)(a) of the Patent Act, they are considered to be a single requisition. The beginning of this requisition can generally be identified in a report by text such as "The examiner has identified the following defects in the application". The requisition ends with a paragraph such as "In view of the foregoing defects, the applicant is requisitioned, under subsection 30(2) of the Patent Rules, to amend the application in order to comply with the Patent Act and the Patent Rules or to provide arguments as to why the application does comply".

Reports may also include additional requisitions under sections 29, 89 and 104.1 of the Patent Rules. More information on these types of requisitions is given in sections 13.07.01,13.07.02 and 13.07.03.

Each separate requisition made in a report must be responded to within the time period indicated in the report or the application will be abandoned in accordance with paragraph 73(1)(a) of the Patent Act. For each requisition on the basis of which the application was deemed to be abandoned, a specific request for reinstatement must be made, a separate reinstatement fee must be paid, and any required actions must be taken.

An examiner's report will usually include additional content that does not form part of a requisition, but which provides useful information regarding the report. This content may indicate the date of the most recent amendments and, in the case of a first report, their origin (international stage or national stage), an indication of the number of claims on file, a statement regarding the search performed, and an identification of any prior art documents discovered and a discussion of their pertinence. The report may also include general comments on the prosecution and discussions relating to points raised by the applicant in their correspondence. Where there appears to be a disagreement between the applicant and the examiner as to the construction of the claims, the report may include the examiner's identification of the person skilled in the art and the common general knowledge. The report may also set out the examiner's understanding of the problem that the inventor set out to solve, the solution that the inventor has contemplated, and the essential elements that lead to that solution.

Where an examiner has deferred the search and examination of the claims this will be indicated in the report along with the reasons leading to the deferral. An examiner may, for example, choose to defer the search and examination of the claims in situations where a unity of invention defect is identified; where an application intended to be a divisional does not appear to be entitled to divisional status; or in situations where the examiner has determined that the claims are directed to non-statutory subject-matter.

13.07.01
Rule 29 requisitions

Section 29 of the Patent Rules provides that where an examiner "has reasonable grounds to believe that an application for a patent describing the same invention has been filed, in or for any country, on behalf of the applicant or of any other person claiming under an inventor named in the application being examined", the examiner may requisition from the applicant any of the following information and a copy of any related document:

  1. (a) an identification of any prior art cited in respect of the applications;
  2. (b) the application numbers, filing dates and, if granted, the patent numbers;
  3. (c) particulars of conflict, opposition, re-examination or similar proceedings; and
  4. (d) translations into English or French of all or part of a relevant document not in one of those languages.

An applicant must respond to such a requisition by providing the information requested or by specifically stating that the information is not available to them, and why this is. This latter statement, required under subsection 29(3) of the Patent Rules, must be provided even where the reason certain information is unavailable is that it does not exist. The position of the Office is that a translation is generally available to the applicant if the document to be translated is available to them.

When a request for examination is made, an Office letter is sent to the applicant to confirm the request for examination and to ask the applicant to consider voluntarily submitting the information referred to in section 29 of the Patent Rules as it becomes available to them. Voluntary submission of this information reduces the likelihood that an examiner will need to make a formal requisition to obtain it. Applicants should generally not submit information which is readily available to the examiner (see below). The object of the voluntary submission of prior art is to expedite prosecution by bringing the attention of the examiner to documents that might otherwise not be immediately identified at the outset of examination. Where a document is identified to the Office, the applicant should generally not submit a copy of the document unless they have reason to believe that copies of that document will not be readily available to the examiner.

Examiners should not requisition an identification of prior art cited in published search reports to which the examiner has ready access. Such search reports include the International Search Report, and any European Patent Office or United States Patent and Trademark Office search reports available through the respective web sites of those offices. Similarly, examiners should not requisition any information that is available to them through the web sites of those offices, including particulars of examination, opposition, or similar proceedings.

Recognising that translating documents may place a significant financial burden on the applicant, requisitions for translations should be limited to cases where no viable alternative exists.

Where a foreign language document appears relevant to examination, an examiner should attempt to locate a version of that document (or minimally of its abstract) in an Official language with which they can work. In this regard, examiners should make use of reliable online translation engines, such as that provided by the JPO, at least at the early stages of examination.

Where an examiner is working from a machine translation or from a family member of a citable document, this should be clearly stated in the report. An applicant wishing to rebut arguments made on the basis of such a document, however, may be required to provide a translation of the document to support their arguments.

Where a translation is requisitioned, the applicant must provide, in accordance with paragraph 29(1)(d) of the Patent Rules, a translation of the document, or a part of the document, into English or French. Where only a part of the document is necessary for examination, an examiner should indicate, wherever possible, in respect of which part or parts of the document the requisition for a translation is being made.

Under Article 42 of the Patent Cooperation Treaty (PCT), no national office having received an international preliminary examination report "may require that the applicant furnish copies, or information on the contents, of any papers connected with the examination relating to the same international application in any other elected Office". Article 42 of the PCT applies in respect of any national phase application that has been the subject of International Preliminary Examination under Chapter II of the PCT.

The Office considers that a requisition for the identification of prior art under paragraph 29(1)(a) of the Patent Rules or for application numbers, filing dates, and/or patent numbers under paragraph 29(1)(b) of the Patent Rules complies with the requirements of Article 42 of the PCT as the information being requisitioned is connected with the search of the prior art, and is not considered to be a request for copies of papers, or information on the contents of papers, "connected with examination".

Similarly, the Office does not consider conflict, opposition, re-examination and similar proceedings to be "connected with examination" in the sense intended by Article 42 of the PCT, and consequently requisitions under section 29 of the Patent Rules relating to such proceedings are also considered to be consistent with Article 42 of the PCT.

13.07.02
Rule 89 requisitions

Rule 89 requisitions pertain to the provision of certified copies of priority documents. This subject is covered in detail in chapter 15.

13.07.03
Rule 104.1 requisitions

Rule 104.1 requisitions pertain to the inclusion in the description of the date of deposit of biological material. This subject is covered in detail in chapter 17.

13.07.04
Withdrawal of an examiner's report

An examiner's report may be withdrawn where it is determined that the content of the requisition is inapplicable or unnecessary.

Such may be the case, for example, where an examiner's report and an applicant's amendment cross in the mail, and the report is by consequence no longer accurate.

Where an examiner's report is to be withdrawn, the examiner will notify Examination Support, who will cancel the report, remove the due date and inform the applicant in writing that the report is withdrawn. The examiner may also inform the applicant by telephone that the report has been withdrawn.

13.08
Amendment of the application - June 2015

Section 38.2 of the Patent Act provides that the specification and drawings of an application may be amended before a patent is issued as long as the amendment does not add matter not reasonably to be inferred from the originally filed specification or drawings, except in so far as it is admitted in the specification that the matter is prior art.

Once an application is allowed, the ability to amend the application is limited. Amendments to an application are discussed in chapter 19 of this manual.

13.09
Final Action - June 2015

In the course of examination, an examiner and applicant may come to an impasse regarding certain perceived defects of the application. Where this is the case, the examiner may, in accordance with subsection 30(4) of the Patent Rules, reject the application in a Final Action when there are reasonable grounds to believe that the application does not comply with the Patent Act and Patent Rules.

Practice related to Final Actions is covered in chapter 21 of this manual.

13.10
Refusal to grant a patent - June 2016

Section 40 of the Patent Act stipulates that whenever the Commissioner is satisfied that an applicant is not by law entitled to be granted a patent, the application shall be refused. Generally such a refusal does not occur unless the examiner has rejected the application in a Final Action in accordance with subsection 30(4) of the Patent Rules, and the Patent Appeal Board and the Commissioner of Patents have reviewed the rejected application.

More information on the refusal to grant a patent is found in chapter 21 of this manual.

13.11
Allowance and notice of allowance - June 2016

When an examiner believes that an application conforms to the requirements of the Patent Act and Patent Rules, the application will be approved for allowance. As per subsections 30(1) and 30(5) of the Patent Rules, the Commissioner will then notify the applicant that the application has been found allowable.Footnote 22 This notification is in the form of a notice of allowance requisitioning payment of the applicable final fee set out in item 6 of Schedule II of the Patent Rules within six months.

Subsection 30(6.2) of the Patent Rules provides that if, after a review of an application rejected by an examiner under 30(4) of the Patent Rules (i.e. after a Final Action) the Commissioner determines that the rejection is not justified, the Commissioner shall notify the applicant that the application has been found allowable.

Subsection 30(6.3) of the Patent Rules provides that if, after a review of an application rejected by an examiner under 30(4) of the Patent Rules (i.e. after a Final Action) the Commissioner determines that the application does not comply with the Patent Act or Patent Rules but that specific amendments are necessary, the Commissioner shall notify the applicant that the specific amendments have to be made within three months. If the applicant complies with the notice, the Commissioner shall notify the applicant that the application has been found allowable.

The application is "allowed" on the date at which the notice of allowance is sent. Once an application is allowed, prosecution before the examiner has technically ceased. In certain situations, an amendment after allowance may be possible; see chapter 19 of this manual for more information on this topic.

Failure to pay the final fee will result in abandonment in accordance with paragraph 73(1)(f) of the Patent Act. An application that has been reinstated after being abandoned for failure to pay the final fee may be amended, and is subject to further searching and examination.

Where an application is abandoned for failure to pay the final fee, paragraph 30(10)(a) of the Patent Rules provides that upon reinstatement, the original notice of allowance is deemed never to have been sent. In accordance with paragraph 30(10)(b) of the Patent Rules, a further notice of allowance will not requisition payment of the final fee unless the final fee submitted to effect reinstatement has been refunded.

Under paragraph 4(10)(b) of the Patent Rules, a final fee may be refunded if the request for refund is received before the technical preparations for issuance are begun.Footnote 23

13.12
Withdrawal from allowance - June 2015

Subsection 30(7) of the Patent Rules provides that if, after a notice of allowance is sent but before a patent is issued, the Commissioner has reasonable grounds to believe that the application does not comply with the Patent Act or Patent Rules, the Commissioner shall notify the applicant of that fact, withdraw the notice of allowance, refund the final fee (if it has been paid), and return the application to the examiner for further examination.

An application may be withdrawn from allowance, for example, in view of applicable prior art identified in a protest or in a filing of prior art under section 34.1 of the Patent Act.

In such cases the notice of allowance is deemed never to have been sent, nor (if applicable) the final fee to have been paid, and the provisions of sections 32 and 33 of the Patent Rules do not apply.

13.13
Issuance of a patent - April 2017

Upon payment of the final fee referred to in section 13.11, the Office will process the application to grant, and will generally issue the patent on a Tuesday approximately six weeks after payment of the final fee. The patent will issue in the name(s) of the inventor(s), or to the legal representative(s) on the basis of appropriate documentation such as assignments received no later than the day on which the final fee is paid.

If a maintenance fee is due shortly after payment of the final fee, the Office postpones issuing the patent until the maintenance fee is paid. The reason for this is to avoid a situation where an application goes abandoned for failing to pay the maintenance fee, yet the patent is granted because the technical preparations for issue started before the application went abandoned.


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