"Final action" practice in Canadian patent prosecution
will change when amendments to the Patent Rules come into force on
December 28, 2013.
A final action occurs when the examiner and applicant reach an
impasse. Final actions are relatively rare in Canadian practice and
typically occur after multiple office actions. After a final
action, the applicant is given a final opportunity to overcome the
examiner's rejection, failing which the rejection is reviewed
by the Commissioner of Patents. This leads to a hearing before the
Patent Appeal Board (PAB), which is a non-statutory administrative
body that advises the Commissioner. A PAB hearing typically sets
the application back at least a year, sometimes far longer. One
outcome under the present rules is that an application is returned
to the examiner for further prosecution, who can then raise new
grounds of rejection that were not before the Commissioner.
The final action procedure has now been streamlined and provides
a new mechanism to avoid a hearing before the PAB. After a final
action, the applicant is, as before, given an opportunity to
respond to the examiner. However, instead of automatically
proceeding to a formal PAB hearing if the examiner maintains the
rejection, the Commissioner (normally in the person of the PAB)
will conduct a preliminary review. The Commissioner reviews the
rejected application in its entirety, not including the final
amendment and without the involvement of the applicant. The
applicant has the opportunity to be heard before any rejection of
the application. The Commissioner also has new options available to
bypass or streamline a hearing; the Commission can: a) inform the
applicant that the application is rejected for different
grounds than those indicated in the final action and invite a
response; b) allow the application or c) inform the applicant that
specific amendments are necessary in order for the application to
be allowed. Under option (c), the applicant will have three months
to amend the application; if the applicant complies, the
application will be allowed.
The patent application process should be streamlined and
simplified by the new rules. As well, the amendments provide
greater clarity to final action procedures.
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.
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