Amended Patent Rules concerning Final Action procedures and re-examination proceedings were published in Part II of the Canada Gazette on December 18, 2013. The amendments came into force on December 28, 2013. CIPO has also reviewed Chapter 21 of the Manual of Patent Office Practice (MOPOP).

Amendments to the Patent Rules

CIPO has amended several aspects of the Final Action practice. The following is a summary of the possible outcomes:

  1. The applicant may amend the application or provide arguments and if convincing, the Examiner withdraws the rejection and the Commissioner allows the application (Subsection 30(5) Patent Rules).
  2. The applicant may amend the application or provide arguments to overcome the rejection, however the Examiner does not have reasonable grounds to believe that the application complies with the Act and Rules, the amendment (if any) is not entered and the application is referred to the Patent Appeal Board (PAB) for review on behalf of the Commissioner of Patent (Subsection 30(6) Patent Rules).

After review, the Commissioner may determine that:

  1. the rejection is not justified and has reasonable grounds to believe that the application complies with the Act and Rules, the Commissioner allows the application (Subsection 30(6.2) Patent Rules).
  2. the application does not comply with the Act or Rules in respect of defects other than those indicated in the Final Action, and invites the applicant to submit arguments (Subsection 30(6.1) Patent Rules).
  3. amendments are necessary to place the application in condition for allowance, and requires the applicant to comply within three months after the date of the notice (Subsection 30(6.3) Patent Rules).

The amended Rules provide that the applicant will be given an opportunity to be heard before the application is refused (Subsection 30(6.4) Patent Rules).

Comments

Chapter 21 of MOPOP at section 21.03 instructs the Examiners to ensure that "all defects have been identified in a "pre-final" action" however the amended Rules offer the PAB flexibility to review the application and raise defects other than those indicated in the Final Action (Subsection 30(6.1) Patent Rules).

The amended Rules may result in more compact prosecution and earlier issuance of Final Actions. Also, amendments to an application after a Final Action will not be entered when the application is referred to the PAB. This will effectively give one less opportunity to amend an application in response to a rejection. Given the inexistence of continuing applications or continued examination in Canada, associated to existing peculiarities in Canada with regard to obviousness double patenting practice, it appears advantageous to maintain the "informal" Examiner interviews in order to make progress early in the prosecution.

Canada still offers the possibility of delaying prosecution until five (5) years from the filing date which provides an opportunity to take account of prosecution in foreign jurisdictions before initiating examination in Canada. There are also a number of Patent Prosecution Highway agreements with partner Patent Offices which may help in expediting prosecution when desired.

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