Date: 20110712
Docket: T-2158-09
Citation: 2011
FC 873
Toronto, Ontario, July 12,
2011
PRESENT: The Honourable Mr. Justice Hughes
BETWEEN:
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ROBERT WILLIAM BARTLEY, ANN MARIE
BARTLEY AND REX IAN McKINNON, TOGETHER AS TRUSTEES OF THE
R W B TRUST
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Applicants
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and
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THE COMMISSIONER OF PATENTS AND THE
ATTORNEY GENERAL OF CANADA
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Respondents
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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:
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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.
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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.
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[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:
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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.
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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.
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[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:
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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.
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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:
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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.
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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.
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[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.
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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.
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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.
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[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 Rules, which provides that a “Final Action” or
“Décision Finale” notice shall be sent to the applicant giving the applicant
one last chance to comply or provide good arguments to overcome the objections.
Subsection 30(5) provides that where the applicant successfully deals with the
“Final Action” objections, the application can proceed to allowance.
Subsections 30(7) to 30(11) provide for circumstances where, after a notice of
allowance has been sent, the applicant may make further amendments or the
Commissioner, if he or she “has reasonable grounds to believe that the
application does not comply with the Act”, may withdraw the allowance and
require further examination.
[56]
Rules
31 through 33 provide for amendment of the application after withdrawal of a
rejection and in some other circumstances.
[57]
Subsection
30(6) of the Rules provides for the circumstance where a rejection has
not been withdrawn. In that case, the Commissioner shall review the
matter and the applicant shall be given an opportunity to be heard. I
repeat that subsection:
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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.
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30.
(6) Lorsque le refus n’est pas annulé selon le paragraphe (5), le
commissaire en fait la révision et le demandeur se voit donner la possibilité
de se faire entendre.
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[58]
MOPOP
addresses the Final Action procedure in more detail. Section 21.02, third
paragraph, provides that no action shall be made final unless the grounds of
objection have been previously raised by the examiner. If new objections are
made, the action is not final.
21.02 The Final Action
report
A final action is issued
under the provisions of subsection 30(4) of the Patent Rules and the action
must bear the notation "Final Action" or "Décision Finale".
The report must indicate the outstanding
defects and must requisition the applicant to amend the application in order to
comply with the Patent Act and the Rules or to provide arguments as to why the
application does comply, within the six-month period after the requisition is
made or within any shorter period established by the Commissioner in accordance
with paragraph 73(1)(a) of the Patent Rules.
A final action is not written unless the
examiner has made a previous requisition on the same grounds. If, in addition
to the earlier objections, new objections on fresh grounds are being made, the
action is not made final.
The report identifies which claims are
allowable and indicates clearly what is objectionable in the application. If
the rejection is based on prior art, the examiner will clearly indicate which
claims are considered to lack novelty or are rendered obvious by the references
cited in the action. The report deals with any differences between the claims
and the teaching of the prior art and indicate why the invention claimed fails
to show any advance of an inventive nature over the applied art and common
general knowledge in the art.
If the rejection is based on any other
contravention of the Patent Act or Rules, the report clearly identifies the
sections of the Patent Act and Rules which have been contravened and gives the
reasons therefor.
The final action report must be
comprehensive and deal with every grounds for which the application is
considered to be defective. The appeal process is restricted to the particular
issues discussed in the final action and there is no further opportunity for
the examiner to make objections which may have been missed in the final action.
Similarly there is no opportunity for the applicant to amend the application
other then to make any revisions required by a Commissioner’s decision on the
patentability of the case.
All
final actions are posted by registered mail.
[59]
Section 21.03 of
MOPOP states that the Final Action must be comprehensive and deal with every
ground upon which the application is considered to be defective:
21.03 Satisfactory Responses
Where in accordance with subsection 30(4)
of the Patent Rules the applicant amends the application or provides arguments
and the examiner has reasonable grounds to believe that the application
complies with the Patent Act and the Patent Rules, the Commissioner notifies
the applicant that the rejection is withdrawn and that the application has been
found allowable (subsection 30(5) of the Patent Rules).
[60]
If
the applicant fails to deal with the Final Action registration satisfactorily,
sections 21.04 and 21.05 of MOPOP provide that the matter is sent to the Patent
Appeal Board and the “applicant is given an opportunity to be heard” (section
21.04) or the Board holds hearings “when requested by the applicant” (section
21.05).
[61]
Section
21.06 of MOPOP deals with the review by the Patent Appeal Board:
21.06 Review by PAB
In any instance when the examiner decides
that a response to a final action does not overcome the grounds of the action,
in whole or in part, the application is forwarded to the PAB. The examiner
prepares a summary of the reasons why the response does
not overcome the rejection for the
Board's consideration. The PAB informs the applicant that the application has
been submitted for its consideration. The PAB advises the applicant that
applicant may request a hearing to develop a fuller statement of the reasons
for contending that the application is not open to objection on the
grounds stated by the examiner. At this
stage, the applicant is not entitled to submit further amendments to the
application (section 31 of the Patent Rules) and must restrict any arguments to
the issues raised in the final action and any amendment which was
submitted to the examiner in response to
that action. After reviewing the facts, the PAB presents its findings to the
Commissioner.
[62]
Section
21.07 provides for steps which the Commissioner may take after a review of the
Board’s findings:
THE CIRCUMSTANCES OF
THIS CASE -“NEW MATTER”
[63]
In
the circumstances of this case, the Patent Appeal Board did not hold a hearing,
the Commissioner accepted the Board’s recommendation that the rejection on the
grounds stated by the examiner in the Final Action was not justified, and she
returned the application to the examiner “to address any outstanding
defects which have been held in abeyance pending resolution of the new matter
issue”.
[64]
The
“new matter issue” is a shorthand way of referring to the objections
raised by the examiner in the Final Action; namely, that the claims as
presented in the application were broader in scope than what was set out in the
description. As an example, one claim provided for a strengthened bumper made
of aluminium, whereas the description referred only to a metal alloy.
[65]
Strictly
speaking, this is not a question of “new matter”, it is a question as to whether
what is claimed is broader than or adequately supported by what is set out in
the description. Section 38.2 of the Patent Act previously referred to
permits amendments to the “specification” only in respect of matter that can be
“reasonably inferred” from what is already there. A claim may be amended at any
time up to when a patent is allowed, provided it is supported by what is in the
description. While subsection 27(4) of the Patent Act provides that a
specification shall end with claims, the claims are separate from the
specification. I wrote about this distinction in Merck & Co. v
Pharmascience Inc., (2010), 85 CPR (4th) 179, 2010 FC 510 at
paragraphs 43 to 70. I repeat paragraphs 43, 44 and 70:
43 The
Canadian Patent Act, R.S.C.1985, c. P-4, in the "new" version applicable to applications
for a patent filed after October 1, 1989 and patents maturing from such
applications, requires that a patent contain both a specification which
describes the invention and claims which define the monopoly claimed by the
patentee. Sections 27(3) and (4) of that Act
provide:
27(3) The
specification of an invention must
(a)
correctly and fully describe the invention and its
operation or use as contemplated by the inventor;
(b) set out
clearly the various steps in a process, or the method of constructing, making,
compounding or using a machine, manufacture or composition of matter, in such
full, clear, concise and exact terms as to enable any person skilled in the art
or science to which it pertains, or with which it is most closely connected, to
make, construct, compound or use it;
(c) in the
case of a machine, explain the principle of the machine and the best mode in
which the inventor has contemplated the application of that principle; and
(d) in the
case of a process, explain the necessary sequence, if any, of the various
steps, so as to distinguish the invention from other inventions.
27(4) The specification must
end with a claim or claims defining distinctly and in explicit terms the
subject-matter of the invention for which an exclusive privilege or property is
claimed.
44
The function of the
specification is to describe the invention so that a person skilled in the art
can understand what the invention is and, when the patent expires, put it into
practice. The function of the claims is to define the monopoly that the
patentee is asserting. Dr. Fox, in his textbook The
Canadian Law and PracticeRelating to Letters Patent for Inventions 4th
ed., 1969, Carswell, Toronto, expressed the nature of the claims at pages 193-4
as follows:
II. THE CLAIMS
History:
Although not required at common law, claims gradually came to be
recognized as an effective means of defining and delimiting the ambit of the
grant, and are now an essential part of the statutory consideration for the
grant. As Lord Russell of Killowen pointed out in Electric and Musical
Industries Ltd. et al. v. Lissen Ltd. et al.: "...the patentee is under a
statutory obligation to state in the claims clearly and distinctly what is the
invention which he desires to protect." The function of the claims was
succinctly stated by him in the same case: "A patentee who describes an
invention in the body of a specification obtains no monopoly unless it is
claimed in the claims."
A claim is a portion of the
specification that fulfils a separate and distinct function. The
forbidden field must be found in the language of the
claim and not elsewhere. It and it alone defines the
monopoly; and the patentee is under a statutory obligation to state in the
claims clearly and distinctly what is the invention that he desires to protect.
The nature of the invention must be ascertained from the claims. They should be
so distinct as to enable the public to ascertain what is protected by the
patent without referring to the body of the specification, but they should not
go beyond the invention.
Claim is a Limitation: The claim
is not, therefore, an added description of the invention, but a limitation of
the description of the invention contained in the body of the specification.
. . .
70 Thus,
claims construction today in the Canadian Courts is an easier task than in
earlier days, because the function of the claims has been made clearer by
statute. That function is to define distinctly and in explicit terms what the
claimed monopoly is. To the extent that the claim is now to be
"construed", that is the function of the Court alone. Experts may
assist in two ways; first, they may inform the Court as to the knowledge that a
person skilled in the art would have had at the relevant time, so as to bring
that knowledge to bear reading both the description and the claims; second, an
expert may assist in explaining any technical terms not within the experience
expected of a Court. Thus, while construction is for a Court alone, the Court
may have to make certain factual findings as to the knowledge of a person
skilled in the art. The findings of the Court in this respect may best be
considered as findings of mixed fact and law.
[66]
In
this case, the point is more than an exercise in pedantics. An amendment to the
description (specification) to add new matter can trigger objections as to prior
art if the new matter is considered by the examiner to be disclosed in prior
art that was not raised by the examiner before. On the other hand, an amendment
only to a claim simply requires an examiner to determine whether what is
claimed is fairly based on what has already been disclosed in the description
as it stands. The examiner is not required to seek out new prior art.
RETURNING AN APPLICATION
FOR FURTHER PROSECTION
[67]
In
the present case, the Commissioner reversed the Final Action rejection, yet
returned the matter to the examiner “to address any outstanding defects
which have been held in abeyance pending resolution of the new matter issue”.
What the examiner did was, in a further requisition, restate old objections and
raise a new piece of prior art. Following that further requisition, the
Commissioner was asked by the Applicants’ patent agent to ignore the
requisition and to direct that the application be allowed. The Commissioner
refused to do so. This judicial review is the result.
[68]
The
present circumstances are similar to those considered by this Court in Belzberg
v Canada
(Commissioner of Patents), (2009), 75 CPR (4th) 283, 2009 FC
657. The Federal Court of Appeal refused a stay of the matter (78 CPR (4th)
81, 2009 FCA 275). An appeal on the merits, although filed by the Commissioner,
was, for unexplained reasons, never pursued.
[69]
In
Belzberg, a Final Action was issued; the matter was considered by the
Patent Appeal Board, who recommended that the rejection be reversed and the
matter returned to the examiner for further prosecution consistent with its
(the Board’s) recommendation. The Commissioner concurred and returned the
matter for further prosecution consistent with the Board’s recommendations. The
examiner issued a further requisition rejecting the application. An application
for judicial review was made in this Court. Justice Simpson allowed the
application and set aside the further requisition and directed that the
Commissioner grant the patent. Her Order (wrongly attributed to Justice Shore in some reports)
reads:
ORDER
UPON hearing the submissions of counsel for both
parties in Toronto on Thursday, November 20, 2008;
AND UPON considering the written
submissions of the Applicant dated June 2, 2009 and the Respondent dated
June 5, 2009;
THIS COURT ORDERS that, for the reasons given
above,
1.
This application for judicial review is allowed and the
Commissioner’s Decision dated January 25, 2007 is hereby set aside.
2.
The Post Decision Reports and Requisitions are hereby set aside
and the Patent Application is hereby reinstated as an active application. This
means that the Respondent’s submissions about outstanding fees and deemed abandonment
of the Patent Application are moot.
3.
The Commissioner is to forthwith make a decision granting the
Patent Application under section 27 of the Act as it was amended by the
Applicant in the Voluntary Amendment.
4.
Costs are to the Applicant, pursuant to Rule 400 of the Federal
Courts Rules. If not agreed, those costs should be assessed based on the
midpoint of Column III on the table in Tariff B of the Federal Courts Rules.
“Sandra J. Simpson”
[70]
In
her Reasons, Justice Simpson reviewed the arguments of the parties and wrote at
paragraphs 41 to 44:
41 The Respondent argued that the
phrase "outstanding defects" as it is used in subsection 30(3) of the
Rules cannot be read as "all outstanding
defects" as such an interpretation would go against the spirit of the Act.
However, I do not find that a requirement that final actions detail
"all" outstanding defects is unduly onerous or contrary to the spirit
and intent of the patent regime. The Canadian patent application process can be
quite lengthy and uncertain, as evidenced by the present case. It seems
sensible to me in that context to give the word "final" its ordinary
meaning. At the point when a requisition is issued that potentially triggers a
hearing, it is reasonable to conclude that all outstanding issues would be
before the PAB.
42 The
Applicant highlighted the fact that the phrase "outstanding defects"
was a recent addition to the Rules, absent from the provision relating to final
actions in force prior to October 1, 1996. Section 47(2) of the former Patent Rules, C.R.C. 1878, c. 1250, stated:
A notice to the applicant of any final action
shall bear the notation "Final Action" and shall prescribe the time
within which the applicant may amend the application as required by the
examiner or lodge a request that that the action by the examiner be reviewed by
the Commissioner.
43 I
view the word "outstanding" in the amended provision as indicating
that the defects identified in a final action are comprehensive rather than a
mere selection. This interpretation is not only harmonious with the object and
intention of the scheme, but also gives meaning to the amendment.
44 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.
[71]
She
found, as set out in paragraph 43, that a “Final Action” must be final. All
objections must be raised, not just a mere selection. Justice Simpson, at
paragraphs 19 to 25 of her Reasons found the Commissioner’s decision and the
Board’s recommendations to be “bizarre”, as there was no basis for returning
the application for further prosecution. She wrote:
19 On
January 25, 2007, the Commissioner issued a decision. Its cover page describes
the document as one which includes both the findings of the PAB and the Commissioner's
decision (the Decision).
20 Regarding
the PAB's finding, the document says:
In summary, the Board finds that the invention
is disclosed in sufficient detail and is claimed sufficiently clearly to allow
an ordinary worker who is skilled in the art to implement the invention. The
claimed invention is not obvious in view of the prior art and the application
is directed to subject matter which falls under the definition of invention.
This Board therefore recommends that the
examiner's rejection of the application be reversed and that the application be
returned to the examiner for further prosecution consistent with these
recommendations (the Recommendation).
21 Immediately
following the PAB's Recommendation is the Decision, which consists of one
paragraph. It reads:
I concur with the recommendation of the Board
that the Examiner's rejection of the application be reversed and return the
application to the Examiner for further prosecution consistent with the Board's
recommendation.
22 The
Decision adopts the final paragraph of the PAB's Recommendation without
reasons. Accordingly, the PAB's findings may be regarded as the reasons for the
Commissioner's decision.
23 Both
the PAB's Recommendation and the Decision appear bizarre. The PAB made no
recommendations for further prosecution. This means there was no basis for
returning the Patent Application to an Examiner for further prosecution. The
Commissioner used the same meaningless language when he returned the Patent
Application for further prosecution consistent with the PAB's Recommendation
when, in fact, no such recommendation existed.
24 The
MOPOP, described above, sheds some light on the language used by the PAB and
the Commissioner. It indicates that this disposition is a longstanding
formulation which actually means in the circumstances of this case that the Applicant
is given a final chance to amend the Patent Application before it is approved.
25 The
MOPOP makes it clear that the Final Action Report does lead to a disposition of
the Patent Application and not to further examination based on concerns which
were not raised in the Final Action Report.
[72]
What,
then, are the circumstances of this present case now before the Court that may
differentiate it from Belzberg, or make it more or les the same. In the
present case:
§
the
Final Action did not state that there were any “outstanding matters”;
§
the
Applicants in their response stated that there were no outstanding matters and
the Patent Appeal Board agreed, as set out in paragraph 4 of its
recommendations, that the Applicant did not understand that there were any
other possible and outstanding objections;
§
a
member of the Board contacted the examiner, without notifying the Applicants
and, as set out in paragraph 5 of the Board’s recommendations, concluded that
the examiner believed that there would still be other objections to be applied,
including prior art. This conclusion cannot be supported by either of the memoranda
in the record, neither the “Summary of reasons” nor the “Patent Appeal Board
Memo”. The first says nothing of this, the second purports only to answer “hypothetical”
questions;
§
the
same member of the Board telephoned the Applicants’ patent agent. The substance
of the conversation is unclear. It is not known whether the Applicants were
advised that a hearing could be held, and if so advised, that they declined the
opportunity;
§
no
hearing was held;
§
there
is nothing in the record indicating that, as of the date of the Board’s
recommendation or the Commissioner’s decision, any “outstanding matters” had
been identified in any way, let alone clearly identified;
§
when
the application was returned to the examiner, the examiner raised old prior art
objections that had been subsumed by the Final Action and Commissioner’s
decision, as well as a new piece of prior art never before raised;
§
the
Commissioner was asked to step in, set aside the examiner’s latest objections,
and issue a patent. She refused.
[73]
I
find that the Board’s inquiries and recommendations as to outstanding matters
to be completely unsatisfactory and lacking in due process. First, it is
evident from the record that there were no “outstanding matters”. Second, a
belief gathered by one Board member in a private conversation with the examiner
is a completely improper way to gather relevant evidence. Third, the failure explicitly
to present the Applicants’ patent agent with the Board’s view that there were
“outstanding matters” without clearly and expressly offering the Applicants an
opportunity to be heard was contrary to Patent Rule 30(6). I do not need
to go to the Applicants’ arguments as to the Bill of Rights in this
regard.
[74]
Therefore,
whether the matter is considered on the basis of lack of procedural fairness or
correctness having regard to the Subrule 30(6) or reasonableness having regard
to the factual history, the decision of the Commissioner, inasmuch as it states
that the examiner must consider “outstanding matters”, is wrong.
[75]
The
Applicants did not seek judicial review of the Commissioner’s decision. They
sought judicial review of a later decision in which the Commissioner refused to
direct that the examiner allow the application.
IS THIS
APPLICATION FOR JUDICIAL REVIEW TIMELY?
[76]
Respondent’s
Counsel argues that the application for judicial review really seeks to attack
the Commissioner’s decision to return the application for prosecution of “outstanding
matters” rather than the later decision to refuse to set aside the examiner’s
subsequent rejection and allow the application. There is no dispute that the present
application was filed within the time limits of the later decision, but several
months after the earlier.
[77]
I
find that, since the Commissioner did not “refuse” the application, no appeal
could be taken under section 41 or any other provision of the Patent Act.
A judicial review, not an appeal, is the proper way to proceed.
[78]
I
find that the present application for judicial review was filed in a timely
manner. In Belzberg, supra, the application for judicial review
was taken in respect of a similar decision taken by the Commissioner, after a
subsequent rejection by the examiner. No objection as to timeliness was
apparently taken in Belzberg.
[79]
In
considering the timeliness of this application, as well as what relief might be
appropriate, I return to the earlier decision of the Commissioner to reverse
the examiner on the Final Action issues and to return the application to deal
with “outstanding matters”. What the examiner did was recycle old issues and
raise a brand new one.
[80]
I
find, as Justice Simpson did in Belzberg, supra, that a Final
Action is meant to be just that, final. There is an obligation upon the
examiner to put everything on the table that requires the applicants, and, if
necessary, the Board and the Commissioner, to deal with. There is no provision
to reserve upon or keep certain matters “outstanding”.
[81]
Even
if there were provisions for keeping matters outstanding, the record in this
case fails to demonstrate clearly that there were “outstanding” matters or, if
so, what they were.
[82]
Since
the application was returned to the examiner, the only matter to be dealt with,
clerical corrections aside, was any review of changes to the description or claims
as may be submitted by the Applicants. If there are no such changes, then,
since all “outstanding’ matters have been subsumed in the Final Action as subsequently
reversed by the Commissioner, there cannot be grounds left for a further
substantive requisition. Allowance must follow as a consequence, leaving the
issued patent to be challenged, if appropriate, by third parties in the Courts.
RELIEF
[83]
There
remains the question as to what relief is appropriate since the application for
judicial review of the decision of the Commissioner of December 4, 2009 will be
allowed.
[84]
It
is appropriate to return the matter to the Commissioner for reconsideration of
the request of September 15, 2009, (the so-called “Petition for Relief”)
bearing in mind the following:
§
the
Board’s recommendation that there were “outstanding matters” was in error;
§
nothing
on the record indicates that there were “outstanding matters”;
§
in
view of Belzberg, the reservation of matters from a Final Action is a
questionable, if not improper, procedure;
§
the
examiner, in reviewing the application after the Commissioner’s decision, did
not address “outstanding matters”, the examiner only addressed old matters
already dealt with and raised a brand new one;
[85]
The
most appropriate action would be to allow the application and let the rest of
the world, if so advised, challenge the validity of the resulting patent.
[86]
The
Applicants have been successful and I award them costs fixed at $4,000.00.
JUDGMENT
FOR
THE REASONS PROVIDED:
THIS
COURT’S JUDGMENT is that:
1.
The
application is allowed;
2.
The
decision of the Commissioner of Patents dated December 4, 2009 respecting
Patent Application Number 2,159,968, is set aside;
3.
The
matter is returned to the Commissioner for re-determination, bearing in mind
the Reasons herein;
4.
The
Applicants are entitled to costs fixed in the sum of $4,000.00.
"Roger
T. Hughes"
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