Much can happen after a patent is issued. Laws change,
industrial processes improve, competitors emerge, and new products
and features are in demand. Consequently, a patent portfolio should
be periodically assessed to ensure it fully protects the
exclusivity of an invention and provides a competitive advantage to
the patentee as the market landscape evolves. The assessment should
be made against marketed products and production processes
— the patentee's as well as
competitors'— to ensure the portfolio remains
relevant and robust.
Following such an assessment, certain key patents in the
portfolio may be identified as problematic or inadequate and
amendments to them may be required.
A patentee's ability to amend an issued patent in Canada is
limited. Nevertheless, there are four avenues available:
Correcting clerical errors;
Availability and Limitations
Errors in a specification that arose from the process of
writing, transcribing or reproducing text may be corrected at any
time during the term of a patent. Significant amendments may be
made if a clerical error is established. However, correction is
discretionary, and may be refused by the Commissioner of Patents if
contrary to public interest. Thus, replacement of whole claims,
corrections of translation errors or priority claims, or amendments
to broaden the scope of a claim are unlikely to be allowed.
A disclaimer can be used to disclaim claims or parts thereof,
thereby enabling the patentee to reduce claim scope. Claimed
subject matter can be disclaimed if it was originally included by
mistake, accident or inadvertence and without any wilful intent to
defraud or mislead the public. Disclaimers may be made at any time
over the term of the patent and are typically used to exclude
specific features in a claim that are anticipated by prior art or
Disclaimers are not reviewed by the Patent Office and cannot be
refused. As a result, care should be exercised when preparing
disclaimers to ensure that claim scope is not inadvertently
broadened. Otherwise, the resulting claims may be held invalid
during a future impeachment proceeding.
A defective or inoperative patent may be corrected by reissue if
requested within four years of its date of issue. The defect must
be by reason of insufficient description or specification, or a
patentee claiming more or less than they had the right to claim.
The error resulting in the defective patent must have arisen from
inadvertence, accident or mistake and without any fraudulent or
deceptive intention. Errors of omission, miscommunication,
misunderstanding of foreign practice or misappreciation of
information may be addressed, provided the subject matter was
intended to be protected in the original patent.
Reissue facilitates amendments that redefine the
originally-claimed invention by, for example, broadening or
narrowing the scope of issued independent claims or adding new
narrower claims, and allows amendments to the patent description to
add subject matter that is common knowledge. However, amendments to
add new matter, to reintroduce claims cancelled during prosecution,
or to take advantage of a new law or jurisprudence are not
permitted. If a request for reissue is accepted, an amended patent
specification is subject to further examination.
Re-examination provides a means to amend patent claims whose
patentability is in doubt in view of prior art. Newly discovered
prior art or art that was misappreciated during examination may be
raised. Where a substantial new question of patentability is
raised, a re-examination board considers the patent claims in view
of supplied prior art. A patentee can propose non-broadening
amendments to the patent claims. Following re-examination, the
board may cancel non patentable claims, confirm claims, or
incorporate amended claims. The board's decision is subject to
appeal by the patentee. Interestingly, re-examination may also be
used by a third party to summarily challenge the patentability of
issued claims on the basis of prior art.
There are different procedures, requirements and limitations
associated with each of the above avenues and varying degrees of
amendment are possible. Careful consideration must be undertaken in
order to select the appropriate route and to navigate through it
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
Specific Questions relating to this article should be addressed directly to the author.
The recent decision in Overstock v. New York Taxation and Finance paved the way for an interesting conclusion on the taxing power of New York State - and by extension, the sales tax that may be applied to many online sales, including sales by Canadian online business into the US market.
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