PB Quality Standards for National Examination

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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:

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:

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:

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

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:

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:

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:

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.

4.2 Defect Identifications are maintained when appropriate.

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:

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:

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 are made when appropriate.

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

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

5.4 Interview Records are accurate and complete.

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

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

Professional communications require:

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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