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10 February 2014
On December 28 2013 amendments to the Canadian Patent Rules changed final action practice in Canada. Among other things, the amended rules affect the handling of an amendment made in response to a final action, the scheduling of an appeal hearing, the raising of new issues on appeal and the availability of further prosecution by the examiner.
In Canada, final actions are relatively uncommon, and are much less common than in the United States. Under the Canadian Patent Rules, prosecution of a patent application can continue with numerous non-final office actions until an examiner either allows the application or has reasonable grounds to believe that the applicant will not overcome one or more of the examiner's objections to the application. In such a situation, the examiner may reject the application in a final action.
Under the former Patent Rules, if the applicant received a final action, the applicant had the opportunity to amend the application and to submit arguments in response to the final action. The examiner would then accept the amendments and arguments and allow the application, or the commissioner of patents would review the application. When the commissioner reviewed a rejected application, an invitation to a hearing was automatic. In practice, hearings after a final action are held before the Patent Appeal Board, which recommends a decision to the commissioner.
Under the amended Patent Rules, any amendments that are submitted in response to a final action are considered not to have been made if the response to the final action does not persuade the examiner to allow the application. Often, patent applicants in Canada have numerous opportunities, in response to non-final actions, to settle on a position before a final action, so amendments after the final action are unnecessary. Nevertheless, because an amendment after a final action may be disregarded, it is prudent to put a patent application in its best condition for allowance in each response, since a final action may be issued without notice.
There are still options for amending an application, even if the response made to a final action is not entered. During a review of a rejected application, the commissioner can decide that specific amendments are required, and the commissioner will allow the application once such amendments are submitted. In practice, if the applicant proposes amendments at some time following a final action (eg, in the response to the final action, formally at a hearing or informally at some other stage), then the commissioner may decide that such amendments are required, effectively allowing the applicant's proposed amendments.
Under the amended Patent Rules, an invitation to a hearing is not automatic if the examiner does not allow the application following the applicant's response to the final action. In particular, if an examiner does not allow an application, the commissioner could allow the application, without the expense and delay of a hearing, if the commissioner (typically on the recommendation of the Patent Appeal Board) decides that the examiner's rejection is unfounded. This has the benefit of being more cost and time efficient for the applicant. The applicant is still entitled to a hearing before the commissioner can refuse an application.
The amended Patent Rules now allow the commissioner to raise other grounds of rejection in addition to those that were raised in the final action. This is in contrast to the former Patent Rules, which were interpreted to limit the Patent Appeal Board and the commissioner to a review of the grounds of rejection that were raised in the final action. The Patent Appeal Board and the commissioner may now review the application in its entirety. This change highlights the need to ensure that the examiner considers relevant issues, since the ability to respond to new issues in the review process is significantly curtailed in comparison to the options for responding to new issues during normal examination.
Under the former Patent Rules, if the decision of the commissioner following a final action was to return the application to the examiner for further prosecution, that further prosecution was limited to issues that were raised in the final action. Now the commissioner cannot return the application to the examiner. The amended Patent Rules require the commissioner to either allow the application (potentially subject to specific amendments as indicated above) or refuse the application. The commissioner's refusal may be appealed in the Federal Court.
The only exception is if the commissioner allows an application after a final action and subsequently withdraws the notice of allowance, which is possible under the Patent Rules. However, the Regulatory Impact Analysis Statement that accompanied the amended Patent Rules indicates that withdrawal of allowance after a final action will only be in specific circumstances and on rare occasions.
The changes discussed above emphasise the need to work with the examiner to try to avoid a final action and the need to ensure that any response filed is comprehensive, including claims that are in condition for appeal, should a subsequent action be made final.
For further information on this topic please contact Jonas H Gifford at Smart & Biggar/Fetherstonhaugh by telephone (+1 604 682 7780), fax (+1 604 682 0274) or email (firstname.lastname@example.org).The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.
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