Canada Gazette, Part I, Volume 146, Number 39: Rules Amending the Patent Rules

September 29, 2012

Statutory authority

Patent Act

Sponsoring department

Department of Industry

REGULATORY IMPACT ANALYSIS STATEMENT

(This statement is not part of the Rules.)

1. Background

This regulatory initiative proposes amendments to the Patent Rules under the authority of the Patent Act. The Patent Act and associated regulations relate to the protection of new inventions (art, process, machine, manufacture, composition of matter) or any new and useful improvement of an existing invention.

The Canadian Intellectual Property Office (CIPO) plays a key role in supporting Canada’s innovation performance through its efforts to grant or register quality and timely intellectual property rights in a modern competitive intellectual property system.

2. Issue

The proposed amendments to the Patent Rules are intended to modernize, simplify and clarify CIPO’s processes associated with the review of a patent application by the Commissioner of Patents that has been rejected in a Final Action by a patent examiner. In addition to these amendments, minor changes are proposed in order to clarify the re-examination process.

3. Objectives

The amendments will improve legal certainty and allow CIPO to better serve its clients and continue to administer Canada’s intellectual property system in an efficient manner, thereby reducing the administrative burden for both the applicants and the Office.

4. Description

The proposed regulatory amendments are focused on the following two areas: Final Action procedures and submissions for re-examination proceedings.

1. Final Action procedures

The current Final Action process is governed by subsections 30(3), (4), (5) and (6) of the Patent Rules.

Presently, once a patent examiner responsible for conducting the examination of an application concludes that the dialogue taking place with the applicant during prosecution has reached an impasse, a Final Action notice rejecting the application is issued. The applicant is given six months to amend their application in a way that would make it compliant with the Patent Act and Patent Rules or to provide arguments as to why the application does comply.

Where a response to a Final Action does not, in the examiner’s opinion, sufficiently address the defects outlined in the Final Action, the application is forwarded to the Patent Appeal Board (“PAB”). The PAB is a body comprised of senior officials of the Patent Office. It was created by the Commissioner of Patents to act in an advisory role with respect to the quasi-judicial acts performed by the Commissioner of Patents.

As part of the Final Action process, the PAB, on behalf of the Commissioner, undertakes a review of the rejected application including holding hearings under subsection 30(6) of the Patent Rules when requested by applicants. The PAB, as part of its advisory role, provides a recommendation to the Commissioner, which, if accepted, serves as the basis for the Commissioner’s decision.

If the Commissioner is satisfied that

  • (a) the claimed subject matter is not patentable, the Commissioner refuses the application under section 40 of the Patent Act and informs the applicant of the reasons for the Commissioner’s decision;
  • (b) the examiner’s rejection was not justified, the Commissioner returns the application to the examiner for further prosecution or allowance; or
  • (c) certain amendments are necessary for compliance with the Patent Act or the Patent Rules, the Commissioner informs the applicant of the required amendments and the reasons for the Commissioner’s decision and gives the applicant a defined period of time to effect the changes. Should the applicant not amend the application accordingly, it is refused under section 40 of the Patent Act.

The Commissioner’s decision outlines the reasoning behind why a particular decision was reached and justifies the Commissioner’s findings with respect to the Patent Act, Patent Rules and pertinent jurisprudence.

The proposed amendments provide for the changes and clarifications outlined below.

1.1 Review of applications by the Commissioner

The amendments to subsection 30(6) propose that if an examiner’s rejection is not withdrawn within six months, the rejected application, instead of the rejection, shall be reviewed by the Commissioner. This amendment is intended to clarify that any defect in the application can be considered at the review stage. This will allow for a more comprehensive review of the application and promote an efficient resolution to the prosecution process.

During this process the PAB, on the Commissioner’s behalf, may directly request submissions on an issue from the applicant, or may request that the examiner provide supplementary reasons in relation to the decision to reject the application, to which the applicant can then respond. This could occur, for example, in situations where new jurisprudence directly affects the potential decision or when a change in practice needs to be addressed.

In every case, as per proposed amended subsection 30(6.1), if new defects are identified during the review, the applicant will be invited to address the new defects and any submissions will be taken into consideration by the Commissioner in the ultimate decision.

1.2 The opportunity to be heard

Subsection 30(6), as it currently reads, includes the provision that “the applicant shall be given an opportunity to be heard.” This will be removed from subsection 30(6) and introduced in new subsection 30(6.4). Rather than providing for an opportunity to be heard each and every time a case is reviewed, for clarity and efficiency, the amendment allows for a decision to be made without contacting the applicant when the issues will clearly be resolved in their favour. This provides an opportunity for the Commissioner to overturn the rejection following a preliminary review without the need for submissions from the applicant.

1.3 Allowance of applications by the Commissioner

Presently, an application is only allowed when an examiner has reasonable grounds to believe that the application complies with the Patent Act and the Patent Rules. Therefore, after review by the Commissioner, the application is sent back to the examiner to be allowed if there are no other issues.

Pursuant to added subsections 30(6.2) and 30(6.3), the Commissioner will notify the applicant directly that the application has been found allowable. This change will abolish the Office’s practice of automatically sending an application back to the examiner for allowance.

1.4 Requirement for amendments by the Commissioner

In some cases, following the review of the application, the Commissioner will determine that specific amendments would make the application compliant with the Patent Act and Patent Rules. The addition of subsection 30(6.3) clarifies the procedure in such circumstances.

The Commissioner will require that these specific amendments be made in order to render the application compliant with the Patent Act and Patent Rules. Upon amendment, the application will be allowed by the Commissioner and the payment of the final fee can be performed within the prescribed time limit of six months from the date of the notice. The amendment must be made within the time period specified by the Commissioner. The Commissioner will refuse applications that do not make the necessary amendments, and only those amendments, within the prescribed time period.

1.5 Refusal of applications by the Commissioner

Where the applicant fails to amend the application specifically as requisitioned by the Commissioner in accordance with subsection 30(6.3), the Commissioner will refuse the application pursuant to section 40 of the Act.

The Commissioner will also refuse the application pursuant to section 40 of the Act if, after review of the application, the Commissioner determines that the rejection is justified based upon either the defects indicated in the Final Action notice or other defects in the application.

1.6 Amendments subsequent to a Final Action

A rejected application may be amended after receiving a Final Action notice under certain circumstances as listed below in 1.6.1 and 1.6.2:

1.6.1 Amendments during the six-month period subsequent to a Final Action

The amendments to subsection 30(6) specify that when an examiner’s rejection is not withdrawn, the Commissioner shall notify the applicant that any amendments made in response to the Final Action shall be considered not to have been made. The portion concerning amendments ensures that the Commissioner reviews the same application that was rejected by the examiner, without any additional material that could introduce new defects.

1.6.2 Amendments after a Commissioner’s decision has been issued

Further amendments may be made after the time provided in subsection 30(4). The addition of paragraph 31(a) clarifies that an amendment after allowance is always available after a notice of allowance is sent, even after the application has gone through the Final Action process. However, any such amendment is subject to the conditions in section 32 for amendments after allowance.

Paragraph 31(b) is intended to be used in the context of subsection 30(6.3). In this case, the Commissioner has informed the applicant that an amendment of the application is necessary for compliance with the Patent Act and the Patent Rules. The applicant must make the amendments required by the Commissioner, and no further amendments will be accepted before allowance.

Further, paragraph 31(c) has been added to reflect that an application may be further amended after it is reinstated for failure to pay the final fee.

Paragraph 31(d) reflects that, consistent with the current Patent Rules, where the applicant has successfully appealed a Commissioner’s refusal of an application under section 40 of the Patent Act, the application may be amended in accordance with the judgment of the Federal Court and the Supreme Court of Canada. This paragraph is amended to include the Federal Court of Appeal in addition to the Federal Court and the Supreme Court of Canada.

1.7 Withdrawal of applications from allowance

Currently, following review and allowance, if there is a reason that comes to light which causes the Commissioner to believe that an application is not compliant with the Patent Act or the Patent Rules, such application is to be withdrawn from allowance in order to ensure full compliance with the Act and the Rules pursuant to subsection 30(7).

To provide clarity and consistency, subsection 30(7) is amended to allow the Commissioner to withdraw an application from allowance where reasonable grounds exist to believe that the application does not comply with the Patent Act or the Patent Rules, even where allowance resulted from a Commissioner’s decision. It is expected that such a provision, in that context, will be used only under specific circumstances and on rare occasions.

2. Submissions for re-examination proceedings

The amendments to the Patent Rules relative to re-examination proceedings as per section 48 of the Patent Act are more administrative in nature and are intended to clarify the re-examination process.

2.1 Applications filed in duplicate for re-examination proceedings

Section 45 of the Patent Rules is amended to eliminate the need for persons requesting re-examination and submitting their request in electronic form to make a second electronic submission. The second electronic submission serves no practical purpose and is therefore deleted from section 45.

2.2 Proposed new or amended claims to be added to the original claims in re-examination proceedings

Presently, in situations where a re-examination board identifies some of the claims or parts of claims of a patent as being invalid, it is standard practice to submit a whole new claim set. However, section 48.4 of the Patent Act provides that upon conclusion of a re-examination proceeding, the re-examination board shall issue a certificate which cancels any unpatentable claim, confirms any patentable claim and incorporates any amended or new claim determined to be patentable.

In order to differentiate between issued and proposed claims, it is the intention of the new section 45.1 that any proposed amendments to the claims during re-examination would comprise a consecutively numbered claim set beginning with the original issued claims, followed by any proposed new or amended claims.

The addition of section 45.1 will assist the re-examination board in identifying which claims were original to the application and which were amended for the proceedings. This will enhance the clarity of the re-examination certificate, as the effect of the re-examination on the patent will be more clearly presented.

5. Consultation

A consultation document was posted on CIPO’s Web site from August 25, 2009, to October 25, 2009, in order to solicit comments from stakeholders and members of the public. In concert with this, a number of organizations including the Intellectual Property Institute of Canada (IPIC) and the International Federation of Intellectual Property Attorneys (FICPI) were notified of the proposed regulatory amendments by letter. The comments received were generally supportive. The proposed amendments have been modified since the last consultations due to internal policy considerations. However, the changes are expected to be non-controversial and supported by stakeholders.

6. Small business lens

The proposed amendments to the existing regulations are focused on increasing efficiency and simplifying certain formal requirements. They would not increase administrative costs for small business.

7. Rationale

The proposed amendments do not require the allocation of additional resources towards administering Canada’s patent system. The amendments aid legal certainty, assist applicants in obtaining patent rights and provide greater flexibility during Final Action procedures and re-examination procedures through the clarification of some Patent Rules provisions. Both the Office and the applicants will benefit from a more user-friendly, clear and flexible patent system.

8. Implementation, enforcement and service standards

The Patent Rules are enforced by the application of existing provisions in the Patent Act. Enforcement and compliance provisions therefore remain unchanged as a result of the proposed regulatory amendments. Accordingly, there are no new compliance and enforcement provisions required to monitor and enforce these regulatory changes.

These Rules come into effect 30 days after signature by the Governor in Council.

9. Contact

For further information, please contact

Stephen MacNeil
Member
Patent Appeal Board
Industry Canada
50 Victoria Street
Gatineau, Quebec
K1A 0C9
Telephone: 819-997-7560
Fax: 819-997-1890

PROPOSED REGULATORY TEXT

Notice is hereby given that the Governor in Council, pursuant to section 12 (see footnote a) of the Patent Act (see footnote b), proposes to make the annexed Rules Amending the Patent Rules.

Interested persons may make representations with respect to the proposed Rules within 30 days after the date of publication of this notice. All such representations must cite the Canada Gazette, Part Ⅰ, and the date of publication of this notice, and be addressed to Raouf Ali Ahmed, Canadian Intellectual Property Office, 50 Victoria Street, Phase I, Gatineau, Quebec K1A 0C9.

Ottawa, September 20, 2012

JURICA ČAPKUN
Assistant Clerk of the Privy Council

RULES AMENDING THE PATENT RULES

AMENDMENTS

1. (1) The portion of subsection 3(4) of the Patent Rules (see footnote 1) before paragraph (a) is replaced by the following:

(4) In respect of a final fee under subsection 30(1), (5), (6.2) or (6.3), the appropriate basic fee is

(2) Paragraph 3(4)(a) of the English version of the Rules is replaced by the following:

  • (a) if before the expiry of the time prescribed by subsection 30(1), (5), (6.2) or (6.3) a small entity declaration is filed in respect of the application in accordance with section 3.01, the applicable small entity fee set out in item 6 of Schedule II; and

2. The portion of subsection 4(10) of the Rules before paragraph (a) is replaced by the following:

(10) A final fee referred to in subsection 30(1), (5), (6.2) or (6.3) shall be refunded if

3. (1) Subsections 30(5) to (7) of the Rules are replaced by the following:

(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 after the requisition 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.

(2) Paragraphs 30(9)(a) and (b) of the Rules are replaced by the following:

  • (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 32 and 33 do not apply unless a further notice of allowance is sent to the applicant under subsection (1), (5), (6.2) or (6.3).

(3) Paragraphs 30(10)(a) and (b) of the Rules are replaced by the following:

  • (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.

(4) Subsection 30(11) of the Rules is replaced by the following:

(11) Subsection 26(1) does not apply in respect of the times set out in subsections (1), (5), (6.2) and (6.3).

4. Sections 31 and 32 of the Rules are replaced by the following:

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)(f) 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.

5. (1) Subsection 33(1) of the Rules is replaced by the following:

33. (1) Except as otherwise provided by these Rules, an application shall not be amended after payment of the final fee referred to in subsection 30(1), (5), (6.2) or (6.3).

(2) Paragraph 33(2)(b) is replaced by the following:

  • (b) an application shall not be amended after a new notice of allowance is sent under subsection 30(1), (5), (6.2) or (6.3).

6. Section 41 of the Rules is replaced by the following:

41. A patent shall not be granted to a transferee of an application unless the request for registration of the transfer is filed on or before the date on which the final fee is paid in accordance with subsection 30(1), (5), (6.2) or (6.3) or, if the final fee is refunded, on or before the date on which the final fee is paid again.

7. Section 45 of the Rules is replaced by the following:

45. Except when made by the patentee or when filed in electronic form, a request under section 48.1 of the Act for a re-examination of any claim of a patent, and the prior art, shall be filed in duplicate.

45.1 New claims proposed by a patentee under subsection 48.3(2) of the Act shall be numbered consecutively beginning with the number immediately following the number of the last claim in the patent.

8. The portion of Item 5 of Schedule II to the Rules in column I is replaced by the following:

On filing an amendment under paragraph 32(a) of these Rules, after a notice of allowance is sent under subsection 30(1), (5), (6.2) or (6.3) of these Rules

9. The portion of Item 6 of Schedule II to the Rules in column I before paragraph (a) is replaced by the following:

Final fee under subsection 30(1), (5), (6.2) or (6.3) of these Rules:

TRANSITIONAL PROVISIONS

10. Paragraph 30(6)(b) of the Patent Rules, as enacted by subsection 3(1) of these Rules, does not apply in respect of an application that was, before the coming into force of this section, rejected by an examiner in accordance with subsection 30(3).

COMING INTO FORCE

11. These Rules come into force 30 days after the day on which they are registered.

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