Patent Appeal Board decisions

After a long period of time with no public decisions being published through its website, the Patent Appeal Board (PAB) at the Canadian Intellectual Property Office has published a flurry of decisions:

#1307 (PDF) – Patent Application No. 2407304 – The PAB reversed the examiner’s finding on ‘obviousness’ type double patenting and allowed claims in a divisional over the claims the parent. The PAB would allow claims to monoclonal antibodies based on a description of polypeptides but in this case the monoclonal antibody claims were too broad.

#1308 (PDF) – Patent Application No. 2294324 – The application related to a coupon dispenser and the PAB applied the Sanofi obviousness analysis to reject the application. The PAB also held that certain claims were indefinite for not meeting the promise of the preamble. Interestingly, examination was requested on this application in 1999, over 11 years ago.

#1309 (PDF) – Patent Application No. 2285672 – The application related to telomerase. The PAB considered the claims definite to a person skilled in the art (reversing the examiner) but overly broad and not enabled (upholding the examiner).

#1310 (PDF) – Patent Application No. 551406 – This is an old act patent application that went through 17 years of prosecution (9 office actions) and related to superconductive crystalline materials. The PAB considered with the application included a sound line of reasoning to support the utility of the claims and allowed most of the claims (reversing the examiner). The PAB also reversed the examiner on the inclusion of the ‘desired result’ in the body of the claim.

#1311 (PDF) – Patent Application No. 2292065 – The PAB rejected the application as being obvious in light of a different piece of prior art from the prior art relied upon by the Examiner.

#1312 (PDF) – Patent Application No. 2306317 – The PAB reversed the examiner allowing the application by holding that the claims were directed to artificial tissue equivalents rather than unpatentable organs and tissues.

Some of these decisions are dated November 2010 so took over 8 months to be published on the CIPO website from the date they were issued by the PAB.

Decision #1302, while not available through the CIPO website [Update 11-08-17: decision now availablePDF] has been published in the Canadian Patent Reporter as Re Immunex Corporation Patent Application 583,988, 89 CPR (4th) 34. Decision #1301 has also never been published online. These two decisions are likely not published on the CIPO website because they relate to old-act patent applications that are not made public. follow up

While we wait for the judgment from the Federal Court of Appeal in the proceeding on the patentability of business methods, I thought I would post a few remaining items from the case.

I had previously posted copies of the Appellant’s Factum and the Respondent’s Factum. Copies of the Intervener’s Factum and the Respondent’s Reply to the Intervener are now also available.

There are a few reports from the hearing including from Nora Sleeth at Osgoode Hall Law School and Chris Heer of Bennett Jones.


I was away last week on vacation and unfortunately my computer failed while I was away. It is up and running now and today’s email should include all the updates for the past week. Sorry for the interruption!