Pouvoirs du Commissaire et conséquences suivant un “Final Action” au Canada

L’arrêt Belzberg v. Canada (Commissioner of Patent) (2009 FC 657) concerne l’interprétation du langage utilisé dans la Loi sur les brevets relativement à une action finale (“Final Action”) et le pouvoir du Commissaire lors d’un appel de la décision de l’Examinateur par le Demandeur.

[2] At issue in this application is whether the Commissioner may restart an examination of a patent application after disposing of all the defects alleged in an examiner’s rejection labeled “Final Action” under section 30 of the Patent Rules, SOR/96-423 (the Rules)

The final action report must be comprehensive and deal with every grounds [sic] for which the application is considered to be defective. The appeal process is restricted to the particular issues discussed in the final action and there is no further opportunity for the examiner to make objections which may have been missed in the final action. Similarly there is no opportunity for the applicant to amend the application other then to make any revisions required by a Commissioner’s decision on the patentability of the case.

[13] Finally, section 21.08 reads as follows:

[…]

(b) where the Commissioner is satisfied after review that the rejection is not justified and the applicant has been so informed[…]

[…]

In the case of (b) above, where the Commissioner is satisfied that the rejection was not justified, the applicant is so notified and the application is returned to the examiner and normal prosecution resumes. The application is normally allowed at this stage but may be amended voluntarily by the applicant (subsection 31(b) of the Patent Rules). [My emphasis.]

[28] On September 28, 2007, the Applicant’s agent wrote to the Commissioner requesting that the Commissioner immediately address the propriety of the latest examiner’s report.

[30] On November 15, 2007, the Applicant filed a minor clerical amendment under subsection 31(b) of the Rules (the Voluntary Amendment). At that time, the Applicant repeated the request for the withdrawal of the ninth examiner’s report and commented that the Commissioner lacked jurisdiction to issue it because it raised issues of obviousness which had been earlier considered and were not among those raised in the Final Action Report. I have excerpted the relevant portions as follows:

The Present Application

The obviousness rejections contained in the office action of July 26, 2007, clearly violate the Patent Rules and CIPO’s own policy reflected in Chapter 21. These rejections were available to the Examination Division prior to the Final Action. Indeed they were raised by other examiners in the prosecution history and were presumably overcome by the Applicant since they did not form part of “the outstanding defects” in the Final Action. In other words, the Examination Division has already conceded that these grounds of rejection do not constitute outstanding defects.

All of the alleged outstanding defects were contained in the Final Action, as is required by law. The Commissioner has ruled that none of those alleged defects is valid. Accordingly, the present application complies with the Act and Rules. Any ground of rejection that the Examination Division chose not to include in the Final Action cannot now be raised in an improper attempt to re-prosecute this application.

The Commissioner and Examination Division do not have discretion to dispense with compliance with the Act and Rules. The only reasonable interpretation of the Act and Rules compels allowance of this application on the basis of the Decision of the Commissioner of Patents rendered January 25, 2007.

The Applicant respectfully requests that the Commissioner comply with her obligations under subsection 27(1) and issue a notice of allowance forthwith.

[33] The Respondent has argued that section 18.5 of the Federal Courts Act bars the present application on the grounds that judicial review is only available in the absence of a statutory right of appeal. Section 41 of the Act provides a statutory right of appeal when the Commissioner refuses to grant a patent under section 40. However, since there was no refusal in the present case, there is no right of appeal to act as a bar to this application.

ISSUES

[35] Against this background, the following questions require consideration:

1. Did the Commissioner err in not granting a patent after the Decision?

2. What is the appropriate remedy in the present case?

[40] These subsections read as follows:

30. […] (3) Where an applicant has replied in good faith to a requisition referred to in subsection (2) within the time provided but the examiner has reasonable grounds to believe that the application still does not comply with the Act or these Rules in respect of one or more of the defects referred to in the requisition and that the applicant will not amend the application to comply with the Act and these Rules, the examiner may reject the application. (4) Where an examiner rejects an application, the notice shall bear the notation “Final Action” or “Décision finale”, shall indicate the outstanding defects and shall requisition the applicant to amend the application in order to comply with the Act and these Rules or to provide arguments as to why the application does comply, within the six-month period after the requisition is made or, except in respect of Part V, within any shorter period established by the Commissioner in accordance with paragraph 73(1)(a) of the Act. […] (6) Where the rejection is not withdrawn pursuant to subsection (5), the rejection shall be reviewed by the Commissioner and the applicant shall be given an opportunity to be heard. [My emphasis.]

30. […] (3) Lorsque le demandeur a répondu de bonne foi à la demande de l’examinateur visée au paragraphe (2) dans le délai prévu, celui-ci peut refuser la demande s’il a des motifs raisonnables de croire qu’elle n’est toujours pas conforme à la Loi et aux présentes règles en raison des irrégularités signalées et que le demandeur ne la modifiera pas pour la rendre conforme à la Loi et aux présentes règles. (4) En cas de refus, l’avis donné porte la mention « Décision finale» ou « Final Action», signale les irrégularités non corrigées et exige que le demandeur modifie la demande pour la rendre conforme à la Loi et aux présentes règles ou fasse parvenir des arguments justifiant le contraire, dans les six mois qui suivent ou, sauf pour l’application de la partie V, dans le délai plus court déterminé par le commissaire en application de l’alinéa 73(1)a) de la Loi. […] (6) Lorsque le refus n’est pas annulé selon le paragraphe (5), le commissaire en fait la révision et le demandeur se voit donner la possibilité de se faire entendre.

[41] […] The Canadian patent application process can be quite lengthy and uncertain, as evidenced by the present case. It seems sensible to me in that context to give the word “final” its ordinary meaning. At the point when a requisition is issued that potentially triggers a hearing, it is reasonable to conclude that all outstanding issues would be before the PAB.

[23] Both the PAB’s Recommendation and the Decision appear bizarre. The PAB made no recommendations for further prosecution. This means there was no basis for returning the Patent Application to an Examiner for further prosecution. The Commissioner used the same meaningless language when he returned the Patent Application for further prosecution consistent with the PAB’s Recommendation when, in fact, no such recommendation existed.Following the Decision, two subsequent Examiner’s reports and related requisitions were issued, under section 30(2) and 30(3) of the Rules. They were numbers 9 and 10 (the Post Decision Reports and Requisitions). The basis of these requisitions was a problem which had arisen during earlier examinations but which had not been raised in the Final Action Report and not considered by the PAB. As described below, the Applicant challenged the propriety of these Post Decision Reports and Requisitions and asserted that the Commissioner lacked the jurisdiction to restart prosecutions following the Decision.

27. (1) The Commissioner shall grant a patent for an invention to the inventor or the inventor’s legal representative if an application for the patent in Canada is filed in accordance with this Act and all other requirements for the issuance of a patent under this Act are met.

27. (1) Le commissaire accorde un brevet d’invention à l’inventeur ou à son représentant légal si la demande de brevet est déposée conformément à la présente loi et si les autres conditions de celle-ci sont remplies.

[4] The Commissioner may also refuse to grant a patent. Section 40 of the Act provides that the Commissioner shall refuse an application where he or she is satisfied that an applicant is not by law entitled to be granted a patent [my emphasis]. If a patent is refused, an applicant has a statutory right of appeal to the Federal Court under section 41 of the Act.

C. TREATMENT OF THE PATENT APPLICATION AFTER THE DECISION

[43] I view the word “outstanding” in the amended provision as indicating that the defects identified in a final action are comprehensive rather than a mere selection. This interpretation is not only harmonious with the object and intention of the scheme, but also gives meaning to the amendment.

[44] In my view, the MOPOP, the language of section 30, the scheme of the Act and the amendment to the provision regarding “Final Actions”, make it clear that a final action is to dispose of a patent application. In other words, following a PAB hearing the Commissioner is to make one of two decisions:

i) refuse the patent application under section 40 of the Act if the PAB has found alleged defects to be justified; or

ii) grant the patent application under section 27 of the Act.

[46] The Respondent submits that the only reasonable conclusion that can be made by logical inference from the wording of the Commissioner’s Decision is that the Commissioner needed more prosecution of the Patent Application in order to satisfy himself that it met the requirements of the regime. However, since there is no evidence that the PAB or any examiner recommended new areas for investigation, I find this submission unreasonable.

COSTS

[47] The Respondent submitted that the Commissioner, as represented by the Attorney General of Canada, is immune from an order to pay costs pursuant to section 25 of the Patent Act.

[48] I reject this submission. Although section 25 of the Act provides that costs shall not be awarded against the Commissioner, this provision is limited to proceedings under the Patent Act. This application for judicial review was brought under the Federal Courts Act and thus Rule 400 of the Federal Courts Rules, SOR/98-106, applies, affording the Court full discretion to decide costs.