Bartley v. Canada (Commissioner of Patents)

Bartley v. Canada (Commissioner of Patents)
Court (s) Database
Federal Court Decisions
Date
2011-07-12
Neutral citation
2011 FC 873
File numbers
T-2158-09
Decision Content
Federal Court
Cour fédérale
Date: 20110712
Docket: T-2158-09
Citation: 2011 FC 873
Toronto, Ontario, July 12, 2011
PRESENT: The Honourable Mr. Justice Hughes
BETWEEN:
ROBERT WILLIAM BARTLEY, ANN MARIE BARTLEY AND REX IAN McKINNON, TOGETHER AS TRUSTEES OF THE
R W B TRUST
Applicants
and
THE COMMISSIONER OF PATENTS AND THE ATTORNEY GENERAL OF CANADA
Respondents
REASONS FOR JUDGMENT AND JUDGMENT
[1] This is an application for judicial review of a decision of the Commissioner of Patents dated December 4, 2009 in which she refused to grant a patent to the Applicants in respect of their Application Number 2,159,968. For the reasons that follow, I find that the application is allowed with costs; the matter is returned to the Commissioner for redetermination bearing in mind these Reasons.
THE PARTIES
[2] It is not in dispute in these proceedings that the Applicants are the current successors in title to the applicant of Canadian Patent Application Number 2,159,968, the application at issue. Title to the application changed during prosecution but nothing turns on this so I will simply refer to the Applicants in these reasons.
[3] The Commissioner of Patents is the person charged with several duties under the Patent Act, RSC 1985, c. P-4, including the duty to issue and grant a patent in respect of an application filed with the Patent Office or to refuse to do so.
[4] The Attorney General of Canada has been named as Respondent to represent the Commissioner of Patents.
[5] Not named as parties, but relevant to this discussion, are the patent examiner and Patent Appeal Board. Section 6 of the Patent Act provides for the appointment of, among others, patent examiners who, as provided for in subsection 35(1) of the Act, are to examine applications for a patent. It is the Commissioner of Patents, however, who has the power under sections 4, 40 and 42 of the Patent Act to grant, or refuse to grant, a patent.
[6] The Patent Appeal Board is not an entity described in either the Patent Act or Patent Rules, SOR/96-423. It is an informal tribunal within the Patent Office whose function is to review certain patent applications and make recommendations to the Commissioner of Patents to allow or reject patent applications. The decision to do so remains that of the Commissioner. The Manual of Patent Office Practice, section 21.05 as put in evidence, states as follows:
21.05 Patent Appeal Board
The Patent Appeal Board (PAB) consists of one or more senior members of the Patent Office who have not participated in the examination of the application under review. The Board reviews the grounds for rejection in final actions and holds hearings under section 30(6) of the Patent Rules when requested by applicants and advises the Commissioner on these matters.
THE EVIDENCE
[7] The Applicants filed as their evidence two affidavits of Kristina Sebastian, a litigation clerk in the offices of the Applicants’ solicitors. Those affidavits serve to make of record the file history and related correspondence respecting the application at issue. There was no cross-examination upon either affidavit.
[8] The Respondents filed the affidavit of William B. (Barney) de Schneider, Assistant Commissioner of Patents, and for a period of time, Acting Commissioner of Patents. This affidavit made of record further material from the Patent Office files respecting the application at issue, and excerpts from the Manual of Patent Office Practice (MOPOP), current as of December 2009. This affidavit also addressed some general Patent Office practices and made reference to oral communications between a Patent Office examiner, the Applicants’ patent agent and the Patent Appeal Board. There was no cross-examination upon this affidavit.
[9] At the hearing, for the first time, Applicants’ Counsel raised an objection as to the admissibility of the de Schneider affidavit on the basis of relevance. I dismiss this application but will treat certain hearsay matters with caution.
THE PATENT APPLICATION
[10] The patent application at issue is Canadian Patent Application Number 2,159,968 entitled “Protective Member for a Vehicle”. The application was filed in the Canadian Patent Office on October 5, 1995, which means that it is governed by the provisions of the “new” Patent Act, applicable to all applications filed after October 1, 1989. Among the pertinent provisions of the “new” Patent Act is the provision (section 44) that the term of the patent is limited to twenty (20) years from the filing date. While certain rights accrue before a patent is issued and granted, those rights and all other rights granted by the issuance of a patent can only be enforced after the date that a patent is granted. Thus, the longer it takes for a patent to be granted, the shorter the period in which rights may be enforced. The affidavit of de Schneider, paragraph 16, states that, typically, a patent is granted approximately fifty (50) months from the time that an applicant requests examination. Section 35 of the Patent Act provides that an application will be examined only after a request is received from the applicant. Subsection 96(1) of the Patent Rules provides that such a request must be made within five (5) years from the date of filing of the application. Subsection 28(1) of the Patent Rules provides for an accelerated examination in circumstances where the Commissioner is persuaded that the applicant’s rights are likely to be prejudiced.
[11] This patent application describes the invention as being “…a device for protecting a vehicle from being damaged by minor external impacts”. It is “…a protective device mounted to span a section of the vehicle to be protected”. One illustration included is “…a protective member in the form of a replacement and strengthened vehicle bumper”.
HISTORY OF THE APPLICATION
[12] A chronology of some of the steps taken during the prosecution of the application, as revealed in the evidence, is required:
§ October 5, 1995 the application was filed in the Canadian Patent Office.
§ April 6, 1997 the application was laid open for public inspection.
§ December 3, 2002 the Applicants requested examination on an expedited basis.
§ December 19, 2002 the Commissioner ordered expedited examination.
§ March 3, 2003 a patent examiner issued the first examination requisition.
§ April 3, 2003 a patent agent acting for an undisclosed third party filed a protest ( a sort of “poison pen” letter which the Patent Office simply acknowledges but does not permit that person to actively enter into the prosecution of the application) citing a substantial amount of prior art.
§ July 2, 2003 the Applicants’ patent agent responded to the requisition of March 3, 2003.
§ October 17, 2003 a different patent examiner took over the file and issued a further requisition.
§ November 14, 2003 another third party (Boodo) filed a protest, a copy of which was sent to the Applicants’ patent agent on December 5, 2003.
§ April 14, 2004 the Applicants’ patent agent filed a response to the examiner’s requisition of October 17, 2003.
§ May 31, 2004 the patent examiner issued a further requisition.
§ July 6, 2004 the patent agent filing the first protest filed a further protest citing more prior art some of which was subsequently raised by the examiner in a later requisition.
§ November 24, 2004 the Applicants’ patent agent filed a response.
§ December 22, 2004 the patent examiner issued a further requisition.
§ February 18, 2005 the Applicants’ patent agent filed a response.
§ August 1, 2005 the patent examiner issued a further requisition which concludes with a statement that if the objections are not overcome the application may be rejected in a Final Action.
§ February 1, 2006 the Applicants’ patent agent filed a response.
§ March 22, 2006 the patent examiner issued a further requisition; no mention is made of a Final Action.
§ The application became abandoned for failure to file a timely response (six (6) months as provided for by subsection 73(1) (a) of the Patent Act) and also for failure to pay maintenance fees ( it could be reinstated six (6) months after the abandonment as provided by subsection 98(1) of the Patent Rules).
§ January 10, 2007 the Applicants’ patent agent filed a late response together with a request for reinstatement (which was granted) and asked that the patent examiner issue a Final Action.
§ July 30, 2007 the patent examiner issued a Final Action.
[13] I pause in this chronology to discuss what is meant by a Final Action and what occurred in the present case. A Final Action is provided for in subsections 30(3) to (6) of the Patent Rules and essentially means that where the patent examiner and the applicant have reached a stalemate, the matter is referred to the Commissioner, who shall review the matter and give the applicant an opportunity to be heard. In practice, the matter is referred to the Patent Appeal Board, which makes a recommendation to the Commissioner. Usually, that recommendation is followed. Sections 30(3) and 30(6) of the Patent Rules say:
30. (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.
. . .
30. (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.
[14] In the present case, a closer examination of the events occurring at this time is necessary.
[15] In the response of February 1, 2006 the Applicants’ patent agent inserted claims 1 to 6 into the application. They were directed to a shape of the protective member and a material from which it could be made. The patent examiner’s requisition of March 22, 2006 refused to allow the claims on the basis that there was insufficient disclosure in the specification from which those claims could be supported (“reasonably inferred”) and on the basis of prior art, a US patent filed by Coiner.
[16] The Applicants’ patent agent’s response of January 10, 2007 addressed both concerns raised by the patent examiner; that is, the “reasonably inferred” point, and the Coiner prior art. That response ended with a request that, if the patent examiner was unwilling to allow the case, a Final Action should be issued.
[17] A Final Action was issued by the patent examiner on July 30, 2007. It continued to reject the claims on the “reasonably inferred” basis and on the basis of the Coiner reference.
[18] On January 29, 2008 the Applicants’ patent agent filed a detailed response to the Final Action. It begins with the statement:
“In the final action, the Examiner has withdrawn all prior art and non-statutory subject matter objections…”
[19] Thereafter, the outstanding matters are addressed, and the response concluded by stating:
“As there are no other outstanding objections to the present case, Applicant respectfully submits, that for the reasons set out above, the application is in condition for allowance and action toward that goal is respectfully requested.”
[20] Some time after the Applicants’ patent agent’s response of January 29, 2008 was filed, a decision was apparently made by someone in the Patent Office to constitute a Patent Appeal Board to deal with the matter. Once that Board was constituted, it made a request of the patent examiner to provide some information as to the examiner’s view of the history and status of the prosecution. There is no record as to when such a request was made, or by whom, or what precisely was requested. The Applicants’ patent agent was not kept informed at the time as to this activity.
[21] There is in the Patent Office file a document entitled “Summary of Reasons”. It is unclear who wrote the document or what its purpose was. It bears, in handwriting, two sets of initials and a date, 04/07/08. This document was apparently not sent to the Applicants’ patent agent at the time. It may be that the document was sent at a later time to the Applicants’ patent agent, around November 28, 2008. The Patent Appeal Board’s reasons make reference to the sending of this memo to the Applicants’ patent agent at this time but there is nothing in the record before me to substantiate that this was done.
[22] From the Applicants’ point of view, maintenance fees were paid by its patent agent on October 6, 2008 so as to keep the application in good standing. The Applicants’ patent agent sent a letter on July 31, 2008 and again on November 21, 2008, enquiring as to the status of the matter.
[23] The Patent Office file contains a document entitled “Patent Appeal Board Memo” dated December 23, 2008 from the patent examiner to the Board in which the examiner provides answers to certain questions that are described as “hypothetical”. That Memo says:
Re: Final Action of July 30, 2007 and Summary of Reasons of April 7, 2008
The Patent Appeal Board (PAB) has asked the examiner what his position would be, hypothetically speaking, with regard to prosecution should the PAB decide with respect to the objections raised in the Final Action that:
A) the alleged new subject matter is indeed ‘new’ and contrary to Section 38.2 of the Patent Act, OR
B) the alleged new subject matter is not ‘new’ and the amendment dated February 1, 2006, containing claims 1-6 is in compliance with Section 38.2 of the Patent Act and to thereby enter the amendment for further prosecution by the examiner.
Considering hypothetical situation A), should the examiner be presented claims of the same or similar scope as those submitted February 18, 2005, i.e. before the alleged new subject matter objection, the office action that would follow would most likely be substantially the same as the action issued on August 1, 2005 in regards to prior art objections, i.e. paragraph 28.2(1)(b), section 28.3 of the Patent Act, as well as indefiniteness objections based on subsection 27(4) of the Patent Act.
Considering hypothetical situation B), the examiner will not comment directly with respect to alleged new matter claim set 1-6 submitted February 1, 2006. However, since the scope of said claim set is similar to those submitted February 18, 2005, one could expect similar objections as those found in the examiner report of August 1, 2005 and most probably additional prior art and jurisprudence objections that may apply.
In either case A) or B), Commissioner’s Decision #80 may apply.
[24] No copy of this Memo was provided at the time to the Applicants’ patent agent. On January 23, 2009, a member of the Patent Appeal Board sent a copy to the Applicants’ patent agent with a letter that stated:
Further to our telephone conversation regarding the status of the abovementioned case, enclosed is a memo forwarded to the Patent Appeal Board by the examiner in charge of the application, discussing the objections which have been held in abeyance pending resolution of the new matter issue outlined in the Final Action.
I trust that this information will clarify the situation. As I indicated during our conversation, we will be treating this case as a high priority given the objections which may be outstanding.
You will be contacted shortly regarding further steps to be taken in the process. Any further inquiries in relation to this case may be directed to the undersigned.
[25] The Patent Appeal Board provided its version of these events at the third page of its reasons:
…Upon a preliminary review of the case by the Board, it was not clear to us, based on the record, what the status was of the previous objections made by the Examiner. The Examiner informed the Board that the other objections had been held in abeyance pending resolution of the new matter issue.
[4] Based on the prosecution record, especially the Applicant’s response to the Final Action where it was stated:
In the Final Action, the Examiner has withdrawn all prior art and non-statutory subject matter objections and bases his remaining objections on lack of support in the disclosure for…
we did not believe that the Applicant understood that there were still other possible and outstanding objections based on novelty, obviousness, etc., which would need to be dealt with after this review by the Commissioner.
[5] The Applicant was therefore contacted by the Board and confirmed that they were not aware of the possibility of further objections. In order to attempt to clarify the situation, the Examiner was asked to provide a memo to the Board to outline his position. This memo, which was forwarded to the Applicant on January 23, 2009, indicated that indeed the Examiner believed that upon completion of the review by the Commissioner, there would still be other objections to be applied, including the possibility of additional prior art. In view of this, the Board felt it necessary to act on this case as soon as possible.
[26] Mr. de Schneider, Assistant and sometimes Acting Commissioner of Patents, described these events at paragraphs 7 and 8 of his Affidavit.
7. I have been advised by Stephen MacNeil, a member of the Patent Appeal Board, (the “Board”) that reviewed the Examiner’s Final Action, that because it was not clear how the Examiner was dealing with the previous objections, he contacted the Examiner on or around December 4, 2008 to clarify the Examiner’s position. The Examiner confirmed that he was holding the other objections in abeyance until the new matter issue was resolved. I am further advised by Mr. MacNeil that he contacted the Applicant’s agent, on or around December 17, 2008 to ensure that the Applicant was aware of the Examiner’s position.
8. I am advised by Mr. MacNeil, that after the Examiner sent written confirmation of his position to the Board on or around January 12, 2009, (which was subsequently forwarded to the Applicant on January 23, 2009) the Board conducted a preliminary analysis of the case and decided that it would recommend to the commissioner that the Examiner’s finding regarding new subject matter should be reversed and that the Application should be returned to the Examiner to address any outstanding issues. I am advised by Mr. MacNeil that he phoned the Applicants’ patent agent on or around February 6, 2009 to advise the Applicant of the Board’s recommendation. I am further advised by Mr. MacNeil that while the Applicants’ patent agent was not pleased that the Board was going to recommend that the Application be returned to the Examiner, he did not request the opportunity to make submissions on this point.
[27] There is nothing in the record to indicate that Mr. MacNeil was unavailable to give evidence directly rather than the hearsay as provided by Mr. de Schneider. Mr. de Schneider was not cross-examined. The Applicants provided no evidence as to what, from their point of view, took place at this time. At the hearing before me Applicants’ Counsel stated that the Applicants did not dispute what is set out in these paragraphs as far as they go.
[28] The Board, in its reasons, recommended that the rejection made by the examiner was not justified and that the rejection be reversed. The Board did not hold a hearing. It summarized its findings at paragraph 6 of its reasons:
(b) Findings
[6] After a preliminary review of the Examiner’s objections under ss. 38.2(2), and the Applicant’s responses thereto, it was clear that the rejection of the application was not justified. The Applicant was informed on February 6, 2009 that neither further submissions nor a hearing was necessary. The following discussion outlines our reasons for recommending that the Examiner’s rejection be reversed.
[29] At paragraph 49 of its reasons, the Board recommended that the rejection be reversed and that the application be returned to the examiner “to address any outstanding defects which have been held in abeyance…”:
[49] In summary, the Board recommends that:
the Examiner’s rejection of claims 1-6 of the specification as containing new matter be reversed, and that the application be returned to the Examiner to address any outstanding defects which have been held in abeyance pending resolution of the new matter issue.
[30] At paragraph 50 of the reasons, the Commissioner of Patents concurred and returned the matter to the examiner “for consideration of any outstanding defects which have been held in abeyance…”:
[50] I concur with the findings and recommendation of the Patent Appeal Board that the Examiner’s rejection of the claims be reversed, and return the application to the Examiner for consideration of any outstanding defects which have been held in abeyance pending resolution of the new matter issue. As this application was granted Special Order status in 2002, any subsequent action by the Examiner, including actions in response to amendments by the Applicant, should be taken within the usual 30 working day period.
[31] What I conclude from this evidence, some of which is hearsay and much of which would have benefited from evidence from the Applicants or their patent agents, is as follows:
§ the Applicants’ patent agent responded to the patent examiner’s Final Action on January 29, 2008; it appears that the agent was of the belief that the examiner had raised all the objections that were to be raised;
§ after that time, a Patent Appeal Board was constituted; that Board had undisclosed discussions with the examiner, who provided at least one, and possibly two memoranda as to the examiner’s view as to the status of the application;
§ the memoranda were ultimately disclosed by the Board to the Applicants’ patent agent following one or two telephone conversations between a Board member and the Applicants’ patent agent; the substance of those telephone conversations is unclear;
§ the Board, at some time during this process, formed the opinion that even if it reversed the examiner, there were other matters outstanding that the examiner wished to deal with;
§ the Board decided, on its own initiative, not to hold a hearing or otherwise give the Applicants’ or their patent agent an opportunity to be heard;
§ the recommendation of the Board, as accepted by the Commissioner, was to reverse the examiner’s rejection but, nonetheless, return the matter to the examiner to deal with other “outstanding defects”.
[32] The Commissioner’s decision was sent to the Applicants’ patent agent on June 18, 2009.
[33] On July 23, 2009, the patent examiner issued a new requisition raising two matters. The first of these was simply a reassertion of several pieces of prior art that had been subsumed and disposed of by the Final Action and the decision of the Commissioner/Patent Appeal Board. The second was to raise a piece of prior art (Popov) that had never before been raised.
[34] The Applicants’ patent agent responded on September 15, 2009 by writing directly to the Commissioner of Patents a letter entitled “Petition for Relief” (for which there is no provision in the Patent Act or Rules) raising the decision of this Court in Belzberg v. Commissioner of Patents, 2009 FC 657, stating inter alia:
Petition for Relief
Applicant respectfully submits that the Commissioner, and hence the Examiner, is without jurisdiction to issue the purported requisition dated July 23, 2009, and hence such purported requisition is a nullity.
Applicant respectfully submits that, having received a favourable decision on Final Action, this application is already allowed as a matter of law and hereby requests that a Notice of Allowance issue immediately, and that immediately thereafter the final fee of $300.00 be deducted from our Deposit Account No. 600000401, with the instant application issue to patent forthwith.
[35] The Commissioner responded by letter dated December 4, 2009 denying its request. She wrote:
This letter is in response to your petition dated September 15, 2009, wherein you request that I immediately issue a Notice of Allowance with respect to patent application 2,159,968 entitled “Protective Member for a Vehicle”. You contend that the recent decision of the Federal Court in Belzberg v. Commissioner of Patents ([2009] FC 657) (hereinafter referred to as “Belzberg”) stands for the proposition that the instant application must be considered to have already been allowed as a matter of law.
I consider that the facts of the present case are distinguishable from those considered by the Court in Belzberg. Notably, it was made clear to the applicant that certain grounds for objection had been held in abeyance until the question of compliance with section 38.2 of the Patent Act could be resolved.
This is reflected further in Decision 1293, where the examiner was given clear direction to consider these outstanding defects. This distinguishes the present case from Commissioner’s Decision 1274, wherein explicit direction as to the specific nature of the further examination was absent.
After careful consideration, I have determined that your request cannot be granted.
As your correspondence dated September 15, 2009 did not address any of the objections raised in the examiner’s report dated July 23, 2009, please note that the requisition to which you must respond by January 25, 2010 (January 23 being a Saturday) remains outstanding. The advanced examination status of the application remains in effect.
[36] It is the decision of the Commissioner as set out in this letter of December 4, 2009 that is the subject of this judicial review.
ISSUES AND RELIEF SOUGHT
[37] Each of the parties has submitted issues for determination, which issues, in turn, require consideration of related matters. Some of those matters have been raised in the memoranda of argument of the parties, but at the hearing were dropped or not strenuously relied upon.
[38] The issues, as stated in the Applicants’ memorandum, are:
i. Do the Patent Act and the Patent Rules permit an Examiner to withhold certain grounds of rejection from a Final Action?
ii. Can the Commissioner refer a patent application for further substantive examination based on previously known objections after reversing all grounds of rejection present in a final action, or is the Commissioner then required to grant the patent?
iii. Did the Examiner’s withholding of objections from the Final Action deny the Applicants a fair hearing in the determination of their rights in respect of the Patent Application in accordance with the principles of fundamental justice, and if so, what remedy should be granted?
[39] The Respondent submits the following issues:
1. Whether this application for judicial review should be dismissed because it was brought outside the requisite time limit established by section 18.1(2) of the Federal Courts Act?
2. Whether, if this application is not dismissed for the above reason,
a. the Commissioner has the authority in the specific circumstances of this case to send the Application back to the Examiner for further examination?
b. the process used by the Patent Office in this case was procedurally fair?
c. the remedies requested by the Applicants can be granted by this Court in the specific circumstances of this case?
[40] The Applicants sought a number of remedies in their Notice of Application and memorandum, some of which, such as extending the term of patent monopoly or back-dating the grant of the patent, have been abandoned. The relief sought by the Applicants as ultimately expressed at the hearing was to allow this application and to return the matter to the Commissioner with a direction to issue a patent forthwith.
[41] The Respondent submits that this application be dismissed as being brought out of time, or, additionally or in the alternative, on its merits. The Respondent submits that if this application were to be allowed, the matter should simply be returned to the Commissioner for further prosecution in the Patent Office.
[42] Each party seeks costs. They are agreed that if I were to award costs, they should be fixed in the sum of $4,000.00.
THE PATENT ACT, THE PATENT RULES AND MOPOP
[43] Before addressing the particular issues in this case, a review of the Patent Act, RSC 1985,
c. P-4; the Patent Rules, SOR/96-423, as amended; SOR/2007-90, s. 7 and the Manual of Patent Office Practice (MOPOP), the relevant portions of which were last reviewed in March 1998, will be made.
[44] The Patent Act is the principal piece of legislation respecting patents and applications for patents in Canada. The Patent Rules are regulations made in accordance with that Act as provided in section 12(1) of the Act. Curiously, subsection 12(2) of the Act provides that the Rules have the same force and effect as if they were in the Act, it provides:
12. (2) Any rule or regulation made by the Governor in Council has the same force and effect as if it had been enacted herein.
12. (2) Toute règle ou tout règlement pris par le gouverneur en conseil a la même force et le même effet que s’il avait été édicté aux présentes.
[45] The Manual of Patent Office Practice (MOPOP) is a set of guidelines prepared by the Patent Office and made available to patent agents and the general public. It provides guidance as to the practice followed by the Patent Office and which is expected to be followed by patent agents and others. It is not law, it is at best “soft law” as some Courts and legal scholars have described such guidelines. Where MOPOP conflicts with the Patent Act or Rules, it must give way.
[46] The Patent Act provides, in subsection 27(1), a mandatory direction to the Commissioner of Patents; the Commissioner shall grant a patent, provided a proper application has been filed and all other requirements of the Act (which subsection 12(2) deems to include the Rules) have been met:
Commissioner may grant patents
27. (1) The Commissioner shall grant a patent for an invention to the inventor or the inventor’s legal representative if an application for the patent in Canada is filed in accordance with this Act and all other requirements for the issuance of a patent under this Act are met.
Délivrance de brevet
27. (1) Le commissaire accorde un brevet d’invention à l’inventeur ou à son représentant légal si la demande de brevet est déposée conformément à la présente loi et si les autres conditions de celle-ci sont remplies.
[47] Section 35 of the Patent Act provides for the examination of a patent application either at the request of the applicant or upon request of the Commissioner:
Request for examination
35. (1) The Commissioner shall, on the request of any person made in such manner as may be prescribed and on payment of a prescribed fee, cause an application for a patent to be examined by competent examiners to be employed in the Patent Office for that purpose.
Required examination
(2) The Commissioner may by notice require an applicant for a patent to make a request for examination pursuant to subsection (1) or to pay the prescribed fee within the time specified in the notice, but the specified time may not exceed the time provided by the regulations for making the request and paying the fee.
Requête d’examen
35. (1) Sur requête à lui faite en la forme réglementaire et sur paiement de la taxe réglementaire, le commissaire fait examiner la demande de brevet par tel examinateur compétent recruté par le Bureau des brevets.
Examen requis
(2) Le commissaire peut, par avis, exiger que le demandeur d’un brevet fasse la requête d’examen visée au paragraphe (1) ou paie la taxe réglementaire dans le délai mentionné dans l’avis, qui ne peut être plus long que celui déterminé pour le paiement de la taxe.
[48] The Patent Rules and MOPOP deal extensively with the examination process and will be discussed in more detail following this review of the Patent Act.
[49] Section 38.2 of the Patent Act provides for amendments to a patent application before a patent is issued, but only if the amendments can be “reasonably inferred” from what is already there:
Amendments to specifications and drawings
38.2 (1) Subject to subsections (2) and (3) and the regulations, the specification and any drawings furnished as part of an application for a patent in Canada may be amended before the patent is issued.
Restriction on amendments to specifications
(2) The specification may not be amended to describe matter not reasonably to be inferred from the specification or drawings as originally filed, except in so far as it is admitted in the specification that the matter is prior art with respect to the application.
Restriction on amendments to drawings
(3) Drawings may not be amended to add matter not reasonably to be inferred from the specification or drawings as originally filed, except in so far as it is admitted in the specification that the matter is prior art with respect to the application.
Modification du mémoire descriptif et des dessins
38.2 (1) Sous réserve des paragraphes (2) et (3) et des règlements, le mémoire descriptif et les dessins faisant partie de la demande de brevet peuvent être modifiés avant la délivrance du brevet.
Limite
(2) Le mémoire descriptif ne peut être modifié pour décrire des éléments qui ne peuvent raisonnablement s’inférer de celui-ci ou des dessins faisant partie de la demande, sauf dans la mesure où il est mentionné dans le mémoire qu’il s’agit d’une invention ou découverte antérieure.
Idem
(3) Les dessins ne peuvent être modifiés pour y ajouter des éléments qui ne peuvent raisonnablement s’inférer de ceux-ci ou du mémoire descriptif faisant partie de la demande, sauf dans la mesure où il est mentionné dans le mémoire qu’il s’agit d’une invention ou découverte antérieure.
[50] Section 8 of the Patent Act provides that the Commissioner may authorize corrections of clerical errors at any time.
[51] Section 40 of the Patent Act provides that the Commissioner may refuse a patent application, in which case a notice must be sent to the applicant. Section 41 provides for an appeal to the Federal Court from such refusal. It is to be noted that such an appeal lies only from a refusal, and not from other actions taken or not taken by the Commissioner.
Refusal by Commissioner
40. Whenever the Commissioner is satisfied that an applicant is not by law entitled to be granted a patent, he shall refuse the application and, by registered letter addressed to the applicant or his registered agent, notify the applicant of the refusal and of the ground or reason therefor.
Appeal to Federal Court
41. Every person who has failed to obtain a patent by reason of a refusal of the Commissioner to grant it may, at any time within six months after notice as provided for in section 40 has been mailed, appeal from the decision of the Commissioner to the Federal Court and that Court has exclusive jurisdiction to hear and determine the appeal.
Le commissaire peut refuser le brevet
40. Chaque fois que le commissaire s’est assuré que le demandeur n’est pas fondé en droit à obtenir la concession d’un brevet, il rejette la demande et, par courrier recommandé adressé au demandeur ou à son agent enregistré, notifie à ce demandeur le rejet de la demande, ainsi que les motifs ou raisons du rejet.
Appel à la Cour fédérale
41. Dans les six mois suivant la mise à la poste de l’avis, celui qui n’a pas réussi à obtenir un brevet en raison du refus ou de l’opposition du commissaire peut interjeter appel de la décision du commissaire à la Cour fédérale qui, à l’exclusion de toute autre juridiction, peut s’en saisir et en décider.
[52] There are no express provisions in the Patent Act as to what happens when a patent application is allowed. Subsections 30(1) and 30(5) of the Patent Rules, as further explained in sections 13.10 to 13.12 of MOPOP (copy attached as Schedule A) provide that a Notice of Allowance is sent to the applicant. The applicant, but not the examiner or Commissioner, can make amendments, most of which trigger further examination. If there are no amendments, a patent will issue. As explained by Dubé J. of this Court in Monsanto Co. v Canada (Commissioner of Patents), (1999), 1 CPR (4th) 500, a Notice of Allowance is not a “decision” of the Commissioner. The issuance of the patent is the decision. He wrote at paragraph 27:
27 In my view, a Notice of Allowance is not a "decision" contemplated by section 18.1 of the Act. It is merely an administrative step taken by the Commissioner leading to the possible issuance of a patent under subsection 30(1) of the Patent Rules. Under subsection 30(7) of the Patent Rules, the Commissioner may after he has sent the notice in accordance with subsection (1), but before a patent is issued, decide that the application does not comply with the Act or the Rules and return the application to the Examiner for further examination. Thus, the decision of the Commissioner under attack in the proposed judicial review is not the final step. The final step is the issuance by the Commissioner of the Letters Patent.
[53] Dubé J. further explained that if an applicant fails to get a patent, an appeal may be taken. If a third party wishes to attack a patent application, a protest may be filed during the application phase, or an impeachment action may be taken once the patent is granted. He wrote at paragraphs 28 and 30:
28 A person who has failed to obtain a patent from the Commissioner may appeal from the Commissioner's decision to the Federal Court under section 41 of the Patent Act. Should a patent be issued by the Commissioner, a third party who wishes to attack it may do so by launching an action in this Court under section 60 of the Patent Act. That is the scheme of the Patent Act and the Patent Rules. There is no jurisprudence to the effect that a Notice of Allowance has ever been challenged by way of judicial review.
. . .
30 What can a person do within the scheme of the Patent Act and the Patent Rules with reference to another party's patent application? That person may file a protest under section 10 of the Patent Rules, or make a filing of prior art under section 34.1 of the Patent Act, or, after the patent has issued, launch an action before the Federal Court under section 60 of the Patent Act to have the patent declared invalid or void. At the trial stage, all the grounds of invalidity can be brought before the Court including anticipation, prior art, obviousness and ambiguity. The scheme of the Patent Act and the Patent Rules constitutes a complete code in the sense that a party may not launch a Judicial Review Application against an intermediate administrative act as it would create a judicially sanctioned parallel procedure to the scheme set out by Parliament.
EXAMINATION OF THE PATENT APPLICATION
[54] The procedure respecting the examination of a patent application is provided for in the Patent Rules, particularly sections 30 through 33, a copy of which is set out in Schedule B and supplemented by MOPOP, parts of which, including Chapter 21, are set out in Schedule C. Because of their length, I will not repeat these provisions in these Reasons.
[55] Subsection 30(1) of the Rules provides for circumstances where the examiner finds that the application is in good shape and is passed on for allowance. Subsection 30(2) provides that where the examiner finds that the application does not comply with the Act or Rules, a requisition (often called an office action) is to be sent to the applicant requiring amendment or arguments as to compliance. Subsection 30(3) provides for the circumstances where the examiner finds that the amendments or arguments fail to overcome the objections the examiner may reject the application. This rejection triggers subsection 30(4) of the Rule