Amendment to the Patent Rules were registered last week directed primarily to final action practice. These amendments follow from the consultations that took place 2012 and relate to amendments and practice after a final action and the Patent Appeal Board.
A copy of the regulations (PDF) will be published in the Canada Gazette later this month and will come into force at the end of December. These amendments closely correspond to the proposed regulations published in November 2012 and subject to MOPOP Chapter 12.
The more significant changes relate to Sections 30, 31 and 32 of the Patent Rules. The changes provide additional structure to the final action process, allows the applicant to propose further amendments and provides more options for the Patent Appeal Board.
I have prepared the following marked up version of some of the affected sections but please consult the actual regulations and amendments:
30. (1) Where an examiner, after examining an application, has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner shall notify the applicant that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice.
(2) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an application does not comply with the Act or these Rules, the examiner shall inform the applicant of the application’s defects and shall requisition the applicant to amend the application in order to comply or to provide arguments as to why the application does comply, within the six-month period after the requisition is made or, except in respect of Part V, within any shorter period established by the Commissioner in accordance with paragraph 73(1)(a) of the Act.
(3) Where an applicant has replied in good faith to a requisition referred to in subsection (2) within the time provided but the examiner has reasonable grounds to believe that the application still does not comply with the Act or these Rules in respect of one or more of the defects referred to in the requisition and that the applicant will not amend the application to comply with the Act and these Rules, the examiner may reject the application.
(4) Where an examiner rejects an application, the notice shall bear the notation “Final Action” or “Décision finale”, shall indicate the outstanding defects and shall requisition the applicant to amend the application in order to comply with the Act and these Rules or to provide arguments as to why the application does comply, within the six-month period after the requisition is made or, except in respect of Part V, within any shorter period established by the Commissioner in accordance with paragraph 73(1)(a) of the Act.
(5) Where in accordance with subsection 30(4) the applicant amends the application or provides arguments and the examiner has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner shall notify the applicant that the rejection is withdrawn and that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice.
(6) Where the rejection is not withdrawn pursuant to subsection (5), the rejection shall be reviewed by the Commissioner and the applicant shall be given an opportunity to be heard.
(7) If after a notice is sent in accordance with subsection (1) or (5) but before a patent is issued the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules, the Commissioner shall
(a) notify the applicant of that fact;
(b) notify the applicant that the notice is withdrawn;
(c) return the application to the examiner for further examination; and
(d) if the final fee has been paid, refund it.(5) If before the expiry of the period under subsection (4), the applicant amends the application or provides arguments and the examiner has reasonable grounds to believe that the application complies with the Act and these Rules,
(a) the examiner shall notify the applicant that the rejection is withdrawn; and
(b) the Commissioner shall notify the applicant that the application has been found allowable and requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice of allowance.(6) If the applicant amends the application or provides arguments within the time referred to in subsection ( 4) but, after the expiration of that time, the examiner does not have reasonable grounds to believe that the application complies with the Act and these Rules,
(a) the Commissioner shall notify the applicant that the rejection has not been withdrawn;
(b) any amendments made within the time referred to in subsection ( 4) shall be considered not to have been made; and
(c) the rejected application shall be reviewed by the Commissioner.(6.1) If, during the review of a rejected application, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules in respect of defects other than those indicated in the Final Action notice, the Commissioner shall inform the applicant of those defects and invite the applicant to submit arguments as to why the application does comply within the time specified by the Commissioner.
(6.2) If, after review of a rejected application, the Commissioner determines that the rejection is not justified on the basis of the defects indicated in the Final Action notice and has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner shall notify the applicant that the rejection is withdrawn and that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice of allowance.
(6.3) If, after review of a rejected application, the Commissioner determines that the application does not comply with the Act or these Rules, but that specific amendments are necessary, the Commissioner shall notify the applicant that the specific amendments have to be made within three months after the date of the notice. If the applicant complies with that notice, the Commissioner shall notify the applicant that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6( a) or (b) of Schedule II within the six-month period after the date of the notice of allowance.
(6.4) Before an application is refused pursuant to section 40 of the Act, the applicant shall be given an opportunity to be heard.
(7) If, after a notice of allowance is sent under subsection (1), (5), (6.2) or (6.3) but before a patent is issued, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules, the Commissioner shall
(a) notify the applicant of that fact;
(b) notify the applicant that the notice of allowance is withdrawn;
(c) return the application to the examiner for further examination; and
(d) if the final fee has been paid, refund it.(8) Subsection (7) does not apply in respect of an application that has been deemed to be abandoned under section 73 of the Act unless the application has been reinstated in respect of each failure to take an action referred to in subsection 73(1) of the Act or section 97 or 151 of these Rules.
(9) After a notice is sent to the applicant in accordance with subsection (7),
(a) the notice that was sent in accordance with subsection (1) or (5) is deemed never to have been sent; and
(b) sections 32 and 33 do not apply unless a further notice is sent to the applicant in accordance with subsection (1) or (5).
(a) the notice of allowance that was sent under subsection (1), (5), (6.2) or (6.3) is deemed never to have been sent; and
(b) sections 3 2 and 3 3 do not apply unless a further notice of allowance is sent to the applicant under subsection (1), (5), (6.2) or (6.3).(10) If an application has been abandoned under paragraph 73(1)(f) of the Act and reinstated,
(a) for the purposes of this section and section 32, any previous notice that was sent in accordance with subsection (1) or (5) is deemed never to have been sent; and
(b) if the final fee has already been paid and has not been refunded, any further notice sent in accordance with subsection (1) or (5) shall not requisition payment of the final fee.
(a) for the purposes of this section and section 32, any previous notice of allowance that was sent under subsection (1), (5), (6.2) or (6.3) is deemed never to have been sent; and
(b) if the final fee has already been paid and has not been refunded, any further notice of allowance sent under subsection (1), (5), (6.2) or (6.3) shall not requisition payment of the final fee.(11) Subsection 26(1) does not apply in respect of the times set out in subsections (1), (5), (6.2) and (6.3) and (5).
Amended paragraphs 31 and 32 are as follows:
31. An application that has been rejected by an examiner in accordance with subsection 30(3) shall not be amended after the expiry of the time under subsection 30(4) for responding to the examiner’s requisition except
(a) if a notice of allowance is sent under subsection 30(5), (6.2) or (6.3);
(b) if the Commissioner has notified the applicant that the amendment is necessary for
compliance with the Act and these Rules;
(c) if the application is abandoned under paragraph 73(1)(/) of the Act and reinstated; or
(d) by order of the Federal Court, the Federal Court of Appeal or the Supreme Court of
Canada.32. Except as otherwise provided by these Rules, after a notice of allowance is sent under
subsection 30(1), (5), (6.2) or (6.3)(a) an application shall not be amended, other than to correct a clerical error that is obvious
on the face of the application, unless the fee set out in item 5 of Schedule II is paid; and
(b) an application shall not be amended in a way that would. necessitate a further search by the
examiner in respect of the application or that would make the application not comply with the
Act or these Rules
[Update Dec 18, 2013: The regulations have now been published in the Canada Gazette.]