The Canadian Patent Act and Patent Rules provide the entire statutory framework for patent law in Canada. The Act and Rules contain all of the requirements to be satisfied before the Commissioner of Patents is obliged to grant a patent. These requirements relate to two main aspects of patents: (a) the nature of the invention for which patent protection is sought; and (b) the patent application that describes and claims the invention.
The Act and Rules form a complete code for patent grant. Subsection 27(1) of the Patent Act requires the Commissioner of Patents to grant a patent if the criteria set by the Act and Rules have been satisfied. Nothing further is required for patent grant and nothing further may be considered by the Commissioner, whose powers are entirely derived from, and limited by, the statute.
To obtain a patent, the applicant must first prepare and file a patent application that includes a disclosure and claims. Once the applicant requests examination and pays the requisite fee, the Patent Office assigns an examiner to the case. The examiner usually reviews the application and the invention defined by the claims within two years after the examination request.
Patent prosecution is the back-and-forth dialogue between the Patent Office and the patent applicant concerning the statutory requirements for patent grant and the extent to which the claimed invention and the patent application satisfy these requirements. During substantive examination, the patent examiner assesses the claimed invention and patent application in light of the requirements set by the Patent Act and Patent Rules. If the examiner perceives deficiencies, he or she will issue an office action and cite the statutory provisions upon which the objections are based. The patent applicant may then respond to the examiner by arguing against the objections, amending the patent claims, or both.
Geared toward foreign counsel, this series will consider common Canadian Patent Office objections to patent applications and claimed inventions. Each post will outline the objection, review the relevant statutory provision, and provide some insight into how the objection may be addressed. The next post will examine an objection to an equivalents clause under subs. 27(3) of the Patent Act. Future postings will consider other typical objections, such as:
- the claims are broader in scope than the teachings of the description (Rule 84)
- the claimed invention includes dosing elements (s. 2 of the Act)
- the description fails to demonstrate, or provide a sound prediction of, utility of the claimed invention (s. 2 of the Act)
- the claimed invention is inherently anticipated (s. 28.2 of the Act)
- the claims do not reflect the “promise of the patent” (s. 2 of the Act)