"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.
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