Proposed changes to final action patent practice

Proposed changes to the Patent Rules were published in the Canada Gazette relating to the handling of patent applications after a “Final Action”. The proposed changes include permitting a review of the entire application and allowing the application without returning it to the examiner from the Patent Appeal Board.

The proposed changes were published as “Rules Amending the Patent Rules” in the September 29, 2012 edition of the Canada Gazette and relate to:

  • Review of entire applications by the Patent Appeal Board, not just the issues raised in the Examiner’s final action;
  • Removing “an opportunity to be heard” where the PAB decides in the applicant’s favour
  • Allowances may be made by the PAB, rather than returning the application to the Examiner
  • Amendments be required by the PAB to put the application into a form for allowance
  • The applicant may make amendments during the final action procedure

The patent office’s final action practice was criticized by the Federal Court in Belzberg v. Canada (Commissioner of Patent), 2009 FC 657. In Belzberg, after an Examiner’s final rejection was reversed by the Patent Appeal Board, the application was sent back for further examination and a further rejection. Justice Simpson wrote:

In my view, the MOPOP, the language of section 30, the scheme of the Act and the amendment to the provision regarding “Final Actions”, make it clear that a final action is to dispose of a patent application. In other words, following a PAB hearing the Commissioner is to make one of two decisions:

i) refuse the patent application under section 40 of the Act if the PAB has found alleged defects to be justified; or

ii) grant the patent application under section 27 of the Act.

The changes proposed in the Canada Gazette would likely allow more flexibility by the Patent Appeal Board than described in Belzberg when handing applications that have been rejected by an Examiner.

The proposed rule changes also address aspects of re-examination practice. CIPO has included a discussion of the proposed changes on its website, “Proposed Amendments to the Patent Rules regarding Final Action procedures and Re-examination proceedings“.

Comments may be submitted within 30 days of the publication in the Canada Gazette. CIPO published and consulted on a previous version of these changes.