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:
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
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)
After review, the Commissioner may determine that:
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
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)
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
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).
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)
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.
Norton Rose Fulbright Canada LLP
Norton Rose Fulbright is a global legal practice. We provide
the world's pre-eminent corporations and financial institutions
with a full business law service. We have more than 3800 lawyers
based in over 50 cities across Europe, the United States, Canada,
Latin America, Asia, Australia, Africa, the Middle East and Central
Recognized for our industry focus, we are strong across all
the key industry sectors: financial institutions; energy;
infrastructure, mining and commodities; transport; technology and
innovation; and life sciences and healthcare.
Wherever we are, we operate in accordance with our global
business principles of quality, unity and integrity. We aim to
provide the highest possible standard of legal service in each of
our offices and to maintain that level of quality at every point of
Norton Rose Fulbright LLP, Norton Rose Fulbright Australia,
Norton Rose Fulbright Canada LLP, Norton Rose Fulbright South
Africa (incorporated as Deneys Reitz Inc) and Fulbright &
Jaworski LLP, each of which is a separate legal entity, are members
('the Norton Rose Fulbright members') of Norton Rose
Fulbright Verein, a Swiss Verein. Norton Rose Fulbright Verein
helps coordinate the activities of the Norton Rose Fulbright
members but does not itself provide legal services to
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).