Archived — Track changes for MOPOP revised April 2018

The entire chapter has been updated with previous sections 1.01-1.06 replaced by new sections 1.01-1.09; and with previous section 1.07 being moved to new section 2.03

The text of previous 1.07 has been inserted between previous section 2.02 and previous section 2.03

Previous section 2.03 is renumbered as 2.04

3.02 Inquiries on pending applications (section 11 of the Patent Act)
April 2018

As per section 11 of the Patent Act, and notwithstanding the exception in section 10, on the request of any person who states in writing the name of the inventor, if available, the title of the invention and the number and date of a patent said to have been granted in a named country other than Canada, CIPO shall inform that person whether an application for a patent of the invention is or is not pending in Canada.

Requests under section 11 must be made in writing and accompanied by the fee prescribed in Schedule II item 23 of the Patent Rules.

3.02 Inquiries on pending applications (section 11 of the Patent Act) June 2015 April 2018

Notwithstanding the exception in section 10, on the request of any person who states in writing the name of the inventor, if available, the title of the invention and the number and date of a patent said to have been granted in a named country other than Canada, CIPO shall inform that person whether an application for a patent of the invention is or is not pending in Canada.

13.04 Examination June 2015

13.04 Examination April 2018

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]. In some cases, the examiner may initiate a telephone interview, in lieu of issuing a report, in accordance with section 1.08.02 of this manual, where such an interview may advance the prosecution expeditiously.

17.05.01
Defining by structure – March 2016

17.05.02
Defining by functional limitation – March 2016

17.05.03
Nucleic acid and amino acid terminology – March 2016

17.05.04
Hybridizing nucleic acids – March 2016

17.05.05
Sequence alignment methods – March 2016

17.05.06
Considerations respecting obviousness – March 2016

17.05.07
Sequence listings – April 2018

Each nucleotide or amino acid sequence disclosed in an application, other than a sequence identified as forming a part of the prior art, is assigned a separate sequence identifier in the sequence listing. The sequence identifier is a unique integer that appears beside numeric identifiers <210> and <400> in the sequence listing for each sequence. The sequence identifiers begin with 1 and increase in sequential order.

In cases where no nucleotide or amino acid sequence is present for a given sequence identifier, the code 000 should appear beneath numeric identifier <400>, beginning on the next line following the sequence identifier.

Except in situations where the entire sequence listing is removed from the application, the original sequence identifier assigned to a given sequence should be maintained even after amendment of the application. Thus, in cases where a nucleotide or amino acid sequence is removed from the sequence listing by amendment, the nucleotide or amino acid sequence originally presented beneath numeric identifier <400> should be replaced with code 000. In such cases, only data for numeric identifiers <210> and <400> are required. It is noted that the removal of the subject-matter from the description must not cause the application to become non-compliant with subsection 27(3) (see 17.05.07) or subsection 38.2(2) of the Patent Act (see Chapter 19 of this manual for further guidance on amendments to patent applications).

Numeric identifier <160>, which precedes the presentation of the actual nucleotide and/or amino acid sequences of the application, represents the total number of sequence identifiers in the sequence listing including those having code 000 at <400>.
Please consult the PCT sequence listing standard available via the WIPO website for more information about numeric identifiers and the presentation of sequences.

Example:

The originally-filed sequence listing featured three DNA sequences. The sequence listing below has been correctly amended to remove the DNA sequence originally identified as SEQ ID NO:2 in the application.

SEQUENCE LISTING

<110>  Applicant ABC
<120>  Title of the invention
<160>  3  

<210>  1
<211>  24
<212>  DNA
<213>  Castor canadensis
<400>  1
gcattaccat atgccctagg tttt

<210>  2
<400>  2
000

<210>  3
<211>  19
<212>  DNA
<213>  Castor canadensis
<400>  3
attcccgggg attcccggg

17.05.07d
Identification of a sequence listing

In accordance with subsection 86(3) of the Patent Rules, the claims may refer to sequences represented by sequence listings by the sequence identifier and preceded by "SEQ ID NO:". The sequence identifier can simply be an Arabic numeral, such that the first sequence identified in the description could be identified as SEQ ID NO:1, the second as SEQ ID NO:2, etc.

17.05.07d
Identification of a sequence listing

In accordance with subsection 86(3) of the Patent Rules, the claims may refer to sequences represented in the sequence listing by the sequence identifier and preceded by "SEQ ID NO:". The sequence identifier has the same meaning as in PCT sequence listing standard according to subsection 86(3.1) of the Patent Rules.

*moved from previous 17.05.07c

17.05.07f
Correction of a sequence listing

If a sequence listing is found to contain errors, any correction of the listing must comply with the requirements of subsection 38.2(2) of the Patent Act. That is, no new matter may be added to the specification or drawings as originally filed and any correction made to a sequence listing must be reasonably inferable from the specification or drawings as filed. Where the corrected sequence could only be determined by, for example, re-sequencing a sample, the correction is not reasonably to be inferred.

23.02.01 The request

23.02.01 The request
December 2015

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

23.02.02 First stage of re-examination: determination as to a substantial new question of patentability
 December 2015

23.02.03 Second stage of re-examination

23.02.03 Second stage of re-examination
December 2015

23.02.04 Completion of re-examination

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

23.02.04 Completion of re-examination
April 2018

The determinations of a re-examination board are functionally equivalent to a decision of the Commissioner of Patents under section 40 of the Patent Act. They are in essence a re-determination of the validity of the claims of the patent,24 although within the particular circumstances set out in sections 48.1 to 48.5 of the Patent Act.

23.02.05 Effect of the re-examination certificate

23.02.05 Effect of the re-examination certificate
December 2015

23.02.06 Appeals from re-examination

23.02.06 Appeals from re-examination
December 2015

23.03.02 Patent must be "defective or inoperative"
December 2015

23.03.02 Patent must be "defective or inoperative"
April 2018

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

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

23.03.07 Examination of an application for reissue
April 2017

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

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

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

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

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

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

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

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

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

23.03.07 Examination of an application for reissue
April 2018

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

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

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

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

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

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

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

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

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

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

23.03.08 Multiple applications for reissue
December 2015

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

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

23.03.08 Multiple applications for reissue
April 2018

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

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

none

23.03.08a Examination of multiple, co-existing applications for reissue
April 2018

23.03.10 Effect of a reissued patent
December 2015

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

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

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

23.03.10 Effect of a reissued patent
April 2018

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

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

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