Revised Patent Rules concerning Final Action procedures and re-examination proceedings were published in Part II of the Canada Gazette on December 18, 2013, the day on which they came into force.
CIPO will publish a revised Chapter 21 of the Manual of Patent Office Practice (MOPOP), which the Office will follow as the guidelines for practice.
The new 'After Final' rules attempt to give structure to a procedure that has been only informally defined for many years.
Helpfully for applicants, revised Chapter 21 of the MOPOP includes the instruction to Examiners that a Final Action is not to be issued unless at least one non-final action has previously been sent to the applicant in respect of each ground of rejection that is sustained in the Final Action. This instruction may tend to encourage all rejections to be brought forward early in prosecution so that issues may be fully developed in the file history prior to a Final Action. However, although discouragement of piece-meal prosecution would address a long-standing criticism, the MOPOP instruction does not appear to have been incorporated in the regulations themselves, and so lacks the force of law. Further, notwithstanding the MOPOP commentary, the Patent Appeal Board (PAB) is now given the power to raise new rejections after ‘Final’ for which there is no requirement in the revised rules that the Applicant be provided a ‘non-final’ opportunity of response.
Once a 'Final' action is received, there are several possible outcomes:
- The applicant may amend the Application or submit argument to overcome the rejection, and, if successful, the Examiner may withdraw the rejections and allow the case. (Rule 30(5))
- The applicant may amend the Application or submit argument to overcome the outstanding rejection, and, if unsuccessful, any amendment is not entered and the case is referred to the Commissioner (meaning the PAB) for review. (Rule 30(6))
- The Commissioner may decide that the case is not in a condition for allowance for reasons of rejection other than those cited by the Examiner, and may request further argument from the Applicant on those new grounds of rejection. (Rule 30(6.1))
- The Commissioner may withdraw the rejection and allow the case. (Rule 30(6.2))
- The Commissioner may require specific amendments that would place the case in condition for allowance, and provide the Applicant with three months in which to make those amendments. (Rule 30(6.3))
In all cases, the applicant will retain the right to a hearing before the PAB before the application is refused. (Rule 30(6.4))
The new 'After Final' rules may have the effect of resulting the issue by CIPO of Final Actions earlier in prosecution, and more frequently. Given the lack of a continuation or Request for Continued Examination (RCE) practice in Canada, the rule changes may foreshorten Canadian prosecution, and may therefore heighten the need to place the case in condition for allowance on the first response. As an applicant cannot voluntarily re-open substantive prosecution, After Final, the proposed Rules may be less forgiving than the previous informal approach in which Final Actions were very rare in Canadian practice.
When the new Rules are seen in view of the existing peculiarities in Canada of obviousness double patenting practice, the lack of a terminal disclaimer practice, and the problems of filing new claims in voluntary divisionals, early or expedited prosecution in Canada may continue to present challenges to applicants.
In that light, where there is parallel prosecution in other jurisdictions, where other claims, claim amendments, or divisional cases may have been prosecuted, or other substantive art-based rejections may have been made, it is all the more important that Canadian prosecution occur in a manner that permits those developments elsewhere to be incorporated in the Canadian prosecution before reaching a point-of-no-return.