Federal Court Provides Clarity on Final Action Process for Patent Applications20/06/2009
The Federal Court of Canada has issued a decision providing much-needed clarity on the process for final actions on patent applications by the Commissioner of Patents. In Belzberg v. Commissioner of Patents et al., the court held that the Commissioner must either grant or refuse a patent application following a Patent Appeal Board hearing, and cannot return the application to the Examiner for further prosecution.
The decision is significant because the term of a patent expires on a day measured 20 years from when the application was filed, meaning that a significant delay in prosecution can eat away a large portion of the patent term. In Belzberg’s case, the application was examined from 1996 through 2002, when the Examiner issued a Final action rejecting the application. A Patent Appeal Board hearing was held in 2005 and in 2007 the Patent Appeal Board and the Commissioner of Patent sided with Belzberg and overturned the Examiner’s rejection. Nevertheless, the Commissioner returned the application to the Examiner for “further prosecution”. To date, fifteen-years of Belzberg’s potential twenty-year patent term have been exhausted. The Federal Court decision makes it clear that the Commissioner must grant the patent in these circumstances.
Former professionals Fraser Rowand, Paul Lomic, and Jeff Tracey of Ridout & Maybee LLP were counsel to Belzberg.