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PB Quality Standards for National Examination

From: Canadian Intellectual Property Office

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"Office Practice" is the administration of the requirements of the Patent Act and Patent Rules using the guidance of MOPOP, Exam Bulletins and Practice Notices and with consideration also given to particularly relevant Commissioner's Decisions and Jurisprudence.

Subject matter

1.1 Subject matter issues are appropriately addressed.

Subject matter issues include:

  • lack of statutory subject matter or utility (section 2 and subsection 27(8) of the Patent Act);
  • inadequate description of the invention (subsection 27(3) of the Patent Act, section 56 of the Patent Rules);
  • introduction of new subject matter (section 38.2 of the Patent Act);
  • lack of unity (section 36 of the Patent Act, and section 88 of the Patent Rules); and
  • lack of support for claims (section 60 of the Patent Rules).

1.2 Search and/or examination is reserved when appropriate.

Search and/or examination may be reserved (completely or partially) when deficiencies in the specification make it impractical to issue a comprehensive report. Situations where reservation may be justified include:

  • the specification is so insufficient or unclear that a meaningful search and/or examination cannot be carried out;
  • the claim(s) are directed solely to non statutory subject matter;
  • claimed subject matter is not properly supported by the specification as filed;
  • a sequence listing is missing such that a search of the claimed subject-matter cannot be carried out;
  • a lack of unity exists in the claims; and
  • new subject matter is introduced (the new subject matter is not examined).

When examination is reserved, the extent of the reservation and the reason are clearly stated in the examiner's report. In instances of lack of unity the applicant is informed that they must elect one group of claims which are linked by a single general inventive concept, and that further examination will be limited to the elected inventive concept only.

Prior art

2.1 A correct search strategy is adopted.

A correct search strategy, where a meaningful search can be carried out:

  • identifies the inventive concept(s) underlying the claims;
  • includes a first-to-file search of Canadian patent documents;
    • A search of these documents (including non laid open documents) is carried out to identify first-to-file (novelty) and overlap (double patenting) issues. A first-to-file search aims to identify relevant documents filed or published in the five years prior to the filing date of the application.
  • makes effective use of available search results;
    • For PCT national phase cases, the Examiner considers the PCT search results and IPRP/IPER, when available.
  • includes a supplemental/top up or comprehensive search, as required;
    • Comprehensive searches are carried out when there is no PCT ISR and there are no corresponding/family member foreign search results available for the claimed subject matter or the available results are inadequate.
    • If adequate foreign search results are available, the examiner need only conduct a first-to-file search;
    • a supplemental/top up search is used if in light of the examiner's knowledge of the art, it is expected that prior art will be found which is citable against claims or elements not already anticipated or rendered obvious by the available search results.

When performing a first-to-file, supplemental/top up or comprehensive search, the examiner:

  • relies on a search of a breadth to identify documents relevant to the novelty and inventive step of the inventive concept(s);
  • uses appropriate search fields and methods, with priority given to those fields where the probability is highest of finding relevant documents; and
  • pays regard to the amount of searching that is reasonable and practicable.

A correct search strategy is appropriately documented in the search record according to office practice.

Note: It is not necessary to search claimed embodiments that are not properly supported by the specification as filed.

2.2 Novelty, obviousness and double patenting are appropriately addressed.

Novelty and obviousness

If the examiner has reasonable grounds to believe that the invention is anticipated or obvious:

  • the most relevant prior art is listed in the references section of the examiner's report;
  • a summary of the relevant teachings of the prior art is provided;
  • each lack of novelty defect is identified under section 28.2 of the Patent Act; and
  • each obviousness defect is identified under section 28.3 of the Patent Act.

If, after performing a search, the examiner has reasonable grounds to believe that the invention is novel and unobvious in view of the state of the art, a statement is made in the examiner's report that a search of the prior art has failed to reveal any pertinent references.

When identifying an anticipation or obviousness defect, each claim must be assessed in light of the prior art. Emphasis should be placed on the independent claims. For dependent claims, the level of detail may vary depending on the number of claims and the stage of prosecution and the nature of limitations introduced in the dependent claims.

Double patenting

If the examiner has reasonable grounds to believe that the same invention is claimed in the pending application and one or more issued Canadian patents to the same applicant:

  • the report identifies the claim(s) as containing a conterminous or obviousness double patenting defect; and
  • if necessary, a defect is also identified under section 44 of the Patent Act.

Where overlap exists between the claimed subject matter in two or more copending Canadian applications, this potential for double patenting is brought to the attention of the applicant in the examiner's report. This warning is maintained as long as the overlap exists until one of the co-pending applications is allowable, at which time the allowable application is approved for allowance, and once granted, the co-pending application is identified as containing a double patenting defect.

Note: If the issued patent or co-pending application can be cited as prior art under section 28.2 or 28.3 of the Patent Act, the defect for overlap or double patenting need not be identified.

Application Formalities

3.1 Application formalities are appropriately addressed.

Application formality defects include:

  • lack of clarity of the claims (for example: subsection 27(4) of the Patent Act, subsection 62(1), sections 63, 61 and 51 of the Patent Rules);
  • drawings not furnished or not clear (for example: subsection 27(5.1) of the Patent Act, paragraph 56(1)(e), and section 59 of the Patent Rules);
  • description formalities such as unidentified trademarks, incorrect page numbering, incorporations by reference and inadequate publication details (sections 52 and 50 of the Patent Rules);
  • title not short and precise (paragraph 56(1)(a) of the Patent Rules); and
  • abstract not a concise summary of the invention (section 55 of the Patent Rules);
  • sequence listing not in the correct format (section 58 of the Patent Rules)

Note: Clarity matters do not extend to minor defects of grammar or spelling which do not lead to ambiguity (i.e. which would not give rise to a defect under subsection 27(4) of the Patent Act). An examiner should not delay an application from allowance merely to clean up trivial defects of language.

Prosecution

4.1 Prosecution is expedient.

  • When the examiner has reasonable grounds to believe that an application complies with Office Practice, either as originally filed or after all defects have been satisfactorily addressed by the applicant, the examiner approves the application for allowance.
  • When examining an application being prosecuted by a private inventor, the examiner prosecutes the application in a manner adapted to assist the private inventor in understanding the process of amending the application in order to comply with Office Practice.
  • Expediency of prosecution requires:
    • consideration of the most recent version of the application whenever conducting examination;
    • observance of the national examination process mappings;
    • consideration of foreign prosecution;
    • comprehensive examination, except where examination is reserved;
    • exercising good judgment in identifying defects and maintaining identifications; and
    • proper record keeping.

4.2 Defect Identifications are maintained when appropriate.

  • When an amendment has removed a defect, the defect will no longer be identified in a subsequent action;
  • When, by convincing argument, it is clear that identifying the defect is no longer warranted, the defect will no longer be identified in a subsequent action;
  • When a client response fails to overcome an identified defect by amendment or convincing argument, the defect will continue to be identified in a subsequent action;
  • When the examiner and the applicant have reached an impasse on the compliance of an application with respect to one or more previously identified defects a Final Action rejecting the application will be written.

4.3 New defects are identified after the first report, when appropriate.

The identification of new defects in an application may arise after a first report for reasons such as:

  • as a result of an amendment or submission made by the applicant;
  • as a result of new prior art of which the examiner has become aware;
  • as a result of reserved examination; and
  • as a result of a defect that was inadvertently not identified in a previous report.

Communication

5.1 All defects are identified in a sufficiently informative manner.

Sufficient detail is always provided when identifying a defect so that the applicant can understand the defect and determine an appropriate response. This includes the following:

  • referencing the correct authority basis for the defect identified (Patent Act, Patent Rules or jurisprudence);
  • appropriately explaining the defect, particularly where there is obviousness, or lack of clarity;
  • indicating relevant passages of the application and prior art references, when appropriate;
  • identifying the defective claims of the application;
  • identifying groups and rationale when identifying a lack of unity defect; and
  • at the second or subsequent report stage, addressing the applicant's amendments and arguments when defects continue to be present.

Note: The explanation of an identified defect may include a suggestion of a remedy, but must not dictate any specific remedy.

5.2 Appropriate requisitions are made.

Requisitions or notices are made when appropriate.

  • • Requisitions or notices include those made under sections 76, 85, 86, 196(1) and 94 of the Patent Rules or under subsection 27(5.2) of the Patent Act.

5.3 Format of examiner's report is clear and content is accurate.

Written communications include the following matters of form, where appropriate:

  • all information is accurate including agent contact information, application number, owner, title, classification, applicant reference number, examiner name and examiner telephone number;
  • the basis of the report is clearly identified, such as:
    • any reservations to the search and/or examination;
    • the unity group elected by the applicant;
    • the applicant's latest amendment;
    • the number of claims;
  • requisitions (sections 85, 86 and 94 of the Patent Rules) are clearly identified by a bullet in the headers of the report;
  • citations are correctly identified with sufficient detail to retrieve the document;
  • content is presented in a logical order;
  • search record present and complete; and
  • a report for a private inventor may be more detailed and is written in plain language.

5.4 Interview Records are accurate and complete.

Interview records includes the following matters of form, where appropriate:

  • all information is accurate including the names of the participants of the interview, date of the interview, application number and summary of discussion and/or agreement;
  • the agreed upon due date is included when a voluntary amendment is to be submitted to overcome identified defects.

5.5 All communications are professional and geared toward providing service excellence.

Professional communications require:

  • straightforward language;
  • a polite approach; and
  • a suitable response to all requests and inquiries.

Timeliness

6.1 Examination is performed in a timely manner.

Timeliness requires the observance of the time limits specified in the Priorities of Examination.

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