Vol. 147, No. 26 — December 18, 2013

Registration

SOR/2013-212 November 29, 2013

PATENT ACT

Rules Amending the Patent Rules

P.C. 2013-1288 November 28, 2013

His Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to section 12 (see footnote a) of the Patent Act (see footnote b), hereby makes the annexed Rules Amending the Patent Rules.

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:

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,

(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,

(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application complies with the Act and these Rules, the Commissioner shall notify the applicant that the rejection is withdrawn and that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II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

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

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

(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

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)

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:

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 reexamination 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.

REGULATORY IMPACT ANALYSIS STATEMENT

(This statement is not part of the Rules.)

Background

This regulatory initiative puts in place amendments to the Patent Rules (the 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.

Issue

The amendments to the Patent Rules 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, minor changes have been made to clarify the Re-examination process.

Objectives

The amendments 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.

Description

The regulatory amendments are focused on the following two areas: Final Action procedures and submissions for Reexamination 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 the 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

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, the Patent Rules and pertinent jurisprudence.

The 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 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

Previous subsection 30(6) included the provision that “the applicant shall be given an opportunity to be heard.” This has been removed from subsection 30(6) and introduced in the 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 provision now 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

With 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 abolishes the Office’s practice of automatically sending an application back to the examiner for allowance.

1.4 Requirement for amendments by the Commissioner

The addition of subsection 30(6.3) clarifies the procedure in circumstances when, following the review of the application, the Commissioner determines that specific amendments would make the application compliant with the Patent Act and the Rules.

The Commissioner will require that these specific amendments be made in order to render the application compliant with the Patent Act and the 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 sections 1.6.1 and 1.6.2.

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

Subsection 30(6) has been amended to 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 will review the same application that was rejected by the examiner, without any additional material that could introduce new defects. In response to a concern raised during the Canada Gazette, Part I, comment period, an amendment has been made to subsection 30(6) for purposes of clarification. Specifically, the concern was raised that the language might be confusing in its reference to “any amendments made after the requisition shall be considered not to have been made” and that it may be too all-encompassing. In order to clarify this subsection, the amendment now reads “any amendments made within the time referred to in subsection (4) shall be considered not to have been made.”

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 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 has been 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

Formerly, following review and allowance, if there was a reason that came to light which caused the Commissioner to believe that an application was not compliant with the Patent Act or the Rules, such application was 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, the amended subsection 30(7) will 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 Rules, even where allowance resulted from a Commissioner’s decision. It is expected that this 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

Formerly, in situations where a re-examination board identified some of the claims or parts of claims of a patent as being invalid, it was 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 will 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.

Consultation

The proposed Rules were published in the Canada Gazette, Part I, on September 29, 2012, followed by a comment period of 30 days. Prepublication comments were received from one organization and two individuals. Comments received were generally supportive, and there was recognition that the overall objective of the amendments is to improve legal certainty and would make the process more efficient.

Many of the concerns that were raised will be addressed through procedural practices, a draft of which was made public on CIPO’s Web site in October 2012. As an example, a comment was made that subsection 30(6.1) only mentions inviting the applicant to “submit arguments” and not to make amendments. However, discussion remains available and there is nothing in the Rules which would prevent an applicant from proposing amendments at this stage. This will be further clarified in the revised Manual of Patent Office Practice (MOPOP).

One submission proposed that, where, prior to consideration of the appeal, the Patent Appeal Board reviews the file and identifies a new ground of rejection, the final action could be withdrawn and the application returned to the examiner to re-open prosecution to address the new ground as instructed by the Board. However, rather than further prolonging the prosecution of an application before the office, and consistent with the amended regulations, where a potential defect is identified during the review process, the Board panel may raise the matter directly with the applicant and may request that the examiner provide an analysis in relation to the defect. When an analysis is requested of an examiner, the examiner’s findings are presented in a Supplemental Analysis which will address the issue identified by the Board panel and which is forwarded to the applicant.

Finally, as part of their submission, the Intellectual Property Institute of Canada also stressed the importance of ensuring the examiner conducts a thorough examination of the application early in the prosecution and makes the appropriate objections is the first examiner’s report. CIPO concurs on the importance of a thorough examination. At each stage of examination, an examiner will endeavour to identify all the defects in the application.

“One-for-One” Rule

While the “One-for-One” Rule applies to this regulatory amendment proposal, it has been determined to be an “OUT” under the rule as there will be a decrease in burden for those that go through Final Action proceedings.

The annualized average administrative cost of this change was calculated to be a decrease of $9,800. This equals savings of $653 per business involved in a Final Action case. This calculation was based on the following assumptions:

First, the number of Final Action cases referred in 2010–2011 (15 cases) was used as a benchmark for the analysis.

We also assume that all applicants that undergo a review through Final Action would request a hearing and that under the new Rules all applicants will not require a hearing (due to the ability to end the Final Action proceedings early). The time spent on preparing for the hearing (15 hours) is an estimate based on equivalent work done in the Patent Appeal Board.

Since almost all patents are filed through a lawyer, we used the average salary of a Canadian lawyer, as provided in Treasury Board’s Regulatory Cost Calculator, to determine the savings to the applicant.

These costs are estimates only that are intended to illustrate the potential reduction in administrative burden that may result from these regulatory amendments.

Amendment 2.1, which removes the requirement to file in duplicate for electronic correspondence during Re-examination proceedings, is technically an “OUT” under the rule. However, the negligible amount of time it takes to send an email twice and the low number of applicants for Re-examination (six in 2010–2011) means that this change cannot be quantified.

Small business lens

The small business lens does not apply to this package as there will be no increase in costs for small business. The Rules are focused on increasing efficiency and simplifying certain formal requirements.

Rationale

The 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 applicants will benefit from a more user-friendly, clear and flexible patent system.

Implementation, enforcement and service standards

The Patent Rules are enforced by the application of existing provisions in the Patent Act. Therefore, enforcement and compliance provisions remain unchanged as a result of these 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 registration.

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