The Applicants brought judicial review of a decision of the Commissioner of Patents (Commissioner) and the Court allowed that judicial review. During the prosecution of the patent application, after numerous Office Actions, the Examiner issued a Final Action. The Applicant’s Agent responded to this Final Action. Then, a Patent Appeal Board (Board) was constituted and had undisclosed discussions with the Examiner. Furthermore, the Examiner provided at least one memorandum to the Board with the Examiner’s view as to the status of the application. The Board did not hold a hearing, but recommended that the Examiner’s rejection be reversed and that the matter be returned to the Examiner to deal with the other “outstanding defects”. The Commissioner accepted these recommendations. These discussions and recommendations were made without input from the Applicant’s Agent.
The Court reviewed the evidence put forward by the Commissioner and found that it did not support the argument that there were outstanding matters after the Final Action. Furthermore, the Court found that the Board’s inquiries and recommendations as to the outstanding matters were unsatisfactory and lacking in due process. The Court also held that the Board acted contrary to Patent Rule 30(6) by failing to explicitly present the Applicant’s Agents with the Board’s view that there were outstanding matters and without clearly offering the Applicants an opportunity to be heard.
The Court then held that as in Belzberg, a Final Action is meant to be final and there is an obligation upon the Examiner to put everything on the table at that point. There is no provision to keep certain matters outstanding when a Final Action is issued. Furthermore, even if there were such a provision, this case fails to show that there were such outstanding matters. Since the application was returned to the Examiner having been reversed by the Commissioner, there are no grounds left for a further substantive requisition and allowance must follow as a consequence. The Court held that the most appropriate action would be to allow the application and let the rest of the world challenge the validity of the patent if they wish.