1. PATENT OFFICE PROSECUTION

2. Patent Office Prosecution
Process
Filing
Critical Rules
Formalities
Examiner’s Report
Novelty / Inventiveness
Prior Art
Appeal
Allowance
Helpful Hints

3. Patent Office Prosecution
Filing
Completion
Filing date awarded if minimum requirements met cf. Rule 93
Applicant’s name and address
Something in English or French that appears to describe invention
Filing fee
15 months to compete the application cf. Rule 94
Abstract
Drawings
Claims
Page, margin sizes
Canadian “provisional” but cf. 35 USC §102(b) (prior disclosure
more than 1 year before US application)

4. Patent Office Prosecution
Filing (cont’d)
Entitlement (CA)
May file application other than in name of inventor(s)
Formerly had to show chain of title by filing assignment(s)
Entitlement declaration
Unsigned statement explaining how applicant entitled to application
Assignment (filing optional but always recommended Patent Act s. 51)
Employment
Bankruptcy / Death / Other
As of October 1/10:
Applicant must identify name and address of inventors
Applicant must submit statement that applicant is legal
representative of inventor
“legal representative” includes “assigns”
For PCT National Phase, may replace statement with entitlement
declaration

5. Patent Office Prosecution
Filing (cont’d)
Entity Status (CA)
Can pay reduced fees (50%) if file signed small entity declaration
Current test (modified 19xx)
Determined on filing date / National Phase entry
Employs less than 50 employees or university
Exception: transferred / licensed or non-contingent obligation to transfer /
license to non-university entity that employs more than 50 employees

6. Patent Office Prosecution
Critical Rules
Must reply within time limit
Docket, docket, docket
Abandonment
Reinstatement ($200) within 12 m
Extension?
Cannot add new matter to application
Formalities
Filing certificate / Acknowledgement of National Entry
Get patent application number
Publication at 18 m from priority

7. Patent Office Prosecution
Examination
Not automatic ($800)
Request within 5 years of Canadian filing date
Can be requested at time of filing
May request examination out of routine order if failure to advance
application likely to prejudice applicant’s rights ($500)
Minimal requirement to establish basis
If not previously published, must request publication
Courtesy letter to file prior art and avoid requisition
Patent Prosecution Highway
Pilot project bilaterally with number of foreign offices
Allowance in first filed jurisdiction
Need to conform claims to those allowed in first filed jurisdiction

8. Patent Office Prosecution
Examiner’s Report
Generally receive requisition(s) from Examiner
Respond to Examiner’s requisition(s)
Amend – change claim
Traverse – argue against rejection
Need to respond “in good faith” to each requisition
Failure to respond “in good faith” may lead to abandonment
Multiple requisitions may result in multiple abandonments
Issues
Novelty
Inventiveness
Formalities
Prior Art
Response Format

9. Patent Office Prosecution
Examiner’s Report (cont’d)
Novelty
CHECK DATE OF REFERENCE
Review cited reference (disclosure only)
Compare against claim
If flaw in Examiner’s logic – traverse
Reference not citable
Essential element not disclosed
If Examiner correct – amend
GET INSTRUCTIONS FROM CLIENT
Incorporate subject matter from dependent claim
Look for Examiner’s allowed claims
See if new feature from main embodiment not claimed
May simply involve change of terminology, structure or antecedent
If all else fails, choose different inventive feature or cancel claim
Dependent claims – at least by reason of allowability of parent

10. Patent Office Prosecution
Examiner’s Report (cont’d)
Inventiveness
CHECK DATE OF REFERENCES
Review cited references (disclosure only)
Compare against claim
If flaw in Examiner’s logic – traverse
Reference not citable
Essential element not disclosed
No motivation to combine – usually by positive indication of teaching away
If Examiner correct – amend
GET INSTRUCTIONS FROM CLIENT
Incorporate (some) subject matter from dependent claim
Look for Examiner’s allowed claims
See if new feature from main embodiment not claimed
May simply involve change of terminology, structure or antecedent
If all else fails, choose different inventive feature or cancel claim
Dependent claims – at least by reason of allowability of parent

11. Patent Office Prosecution
Examiner’s Report (cont’d)
Formalities
Plurality of inventions – consider withdrawing without prejudice
Incorporation by reference – remove
Incorrect reference to publication eg. patent application - correct
Lack of antecedent – correct
Lack of support - provide
If originally filed claim, can amend disclosure to insert
Look to material incorporated by reference
Patentable subject matter – traverse or amend
Desired result – traverse or amend

12. Patent Office Prosecution
Examiner’s Report (cont’d)
Prior Art
Limited duty of good faith
Cannot mislead or omit in response to requisition
Not (presently) required to volunteer information
Ensure you respond “in good faith”
Even if no such references, say so
Don’t forget to reference cited art in IDS if corresponding US case

13. Patent Office Prosecution
Examiner’s Report (cont’d)
Response Format
Letter to Commissioner referencing Examiner’s Report
List of amendments to disclosure / claims / drawings / title / abstract
Amendments done on replacement page basis
Remarks
Summarize amendments and claims pending
Summarize each rejection then respond to it
Proceed on claim by claim basis
Generally do not reference art and claims in same paragraph
Explain flaw in Examiner’s logic
Refer to statute and case law as appropriate
Summarize amendments
Specify if taken from another claim or corresponding allowed case
Show where supported in application
Request allowance and explicitly request reinstatement
Amended pages

14. Patent Office Prosecution
Appeal
Eventually, if no progress being made, Examiner may reject
application
Outstanding defects listed in “final action”
Must still respond to final action
If acceptable to Examiner, application allowed
If not acceptable, rejection reviewed by Commissioner
Applicant given opportunity to be heard
Typically oral hearing before 3 person panel
Panel contains senior examiners and provides recommendation to
Commissioner
Commissioner’s decision appealable to Federal Court

15. Patent Office Prosecution
Allowance
Must pay final fee
Old Act: $700 + $4/page > 100 pages
New Act: $300 + $6/ page > 100 pages
No amendment may be made that would necessitate search
Amendment after allowance may be made ($400)
Clerical errors obvious on face of application may be made
without charge
Consider filing divisional before patent issues
Claims withdrawn in view of restriction requirement
No double patenting issue
Additional claims
Potential for double patenting
Takes on filing date of parent
All accumulated documents and fees due