About the Patent Appeal Board

The Patent Appeal Board is an advisory body made up of senior Patent Office officials. In carrying out his duties, the Commissioner of Patents makes decisions that are quasi-judicial in nature. Since 1970 the Board has been mandated by the Commissioner to conduct independent reviews, provide recommendations and advise him when making such quasi-judicial decisions which principally concern the review of rejected applications, the review of rejected applications for the reissue of a patent, and determinations of first inventorship in patent conflict situations.

The Board is also responsible for advising in respect of patent policy matters and assisting the Commissioner in performing a number of other duties such as the administration of patent re-examination procedures, settling the terms and conditions for use of patented inventions by governments, granting authorizations under Canada's Access to Medicines Regime (CAMR) and the administration of the procedures related to an alleged abuse of patent rights.

Table of contents

Reviewing examiners' rejections of applications

One of the principal functions of members of the Patent Appeal Board is to provide an appeal process when a patent or industrial design examiner rejects an application during the prosecution before the Office. The function of the Board is to carry out an independent review, advise the Commissioner of its findings, and make recommendations to him for disposal of the application.

Reviewing examiners' rejections of patent applications

The Patent Appeal Board reviews patent applications rejected by patent examiners in situations where the applicant's response to the Final Action does not, in the examiner's opinion, place the application in condition for allowance. The review occurs only after the time limit for responding to the Final Action has expired. In order to make an independent determination, members of the Board must not have participated in the prosecution of the application, or have previously advised in respect thereto.

In cases of rejected applications, the Board will conduct an oral hearing (if requested by the applicant), during which the applicant is given the opportunity of presenting oral and written submissions in favour of its position. After the hearing, the Board considers the applicant's submissions and the file record and makes a recommendation, including reasons therefore, for consideration by the Commissioner of Patents. If the applicant requests no hearing, then the Board proceeds to make a recommendation based solely on the file record before it.

Reviewing examiners' rejections of industrial design applications

The Patent Appeal Board performs a review in the case of a request for review by an applicant following a "Notice of Possible Refusal" issued by the Industrial Design Office. Authority to refuse an industrial design application rests in the Minister, who has delegated this authority to the Commissioner, who in turn relies on the Board to review the prosecution, conduct a hearing and make a recommendation for the Commissioner, to either accept or refuse to register an industrial design (See: Notice to the Patent Profession C.P.O.R., July 2, 1974, 15 C.P.R. (2d) 197).

Chairing re-examination boards

Administering the process under the Patent Act when it is requested that a patent be re-examined on the basis of prior art

Under the Patent Act the claims of any patent granted after October 1, 1989, may be subject to re-examination upon request of any person on the basis of prior art consisting of patents, applications for patents open to public inspection, and printed publications, with payment of the prescribed fee. The request must raise a substantial new question of patentability.

The Commissioner is responsible for establishing a re-examination board, of no less than three persons, usually comprising one member of the Patent Appeal Board to act as chairperson and two senior examiners who were not involved in the prosecution of the application. Once appointed by the Commissioner, the re-examination board has the authority to make any and all determinations with respect to re-examination. If the re-examination board determines that the request does not raise a substantial new question of patentability, the requester is notified and no appeal or review is permitted.

The requester does not take part in the re-examination process unless the requester is also the patentee.

Subsequent to the above determination, a re-examination board has the power to cancel claims, confirm claims, or add new claims, submitted by the patentee, to a patent as result of the re-examination process.. The decision of the re-examination board, as set out in a certificate of re-examination, is subject to appeal by the patentee to the Federal Court.

Reviewing rejections of re-issue applications

The Patent Appeal Board reviews rejections of applications for reissue under section 47 of the Patent Act, a method of issuing a new patent containing an amended description and specification for the same invention found in an issued, yet defective, original patent. The Board makes a recommendation to the Commissioner as to whether or not the application for reissue and the amended specification comply with the reissue requirements. Likewise, if such an application is rejected for non-compliance with the Patent Act and Rules for other reasons, the Board must also review such objections. The opportunity for an oral hearing exists for these cases as well.

Administering procedures under Canada’s Access to Medicines Regime

Canada's Access to Medicines Regime (CAMR), the legislative and regulatory framework comprising amendments to the Patent Act and the Food and Drugs Act, as well as the Use of Patented Products for International Humanitarian Purposes Regulations, authorizes the export of patented medicines in order to facilitate the provision of pharmaceutical products to developing nations facing public health crises such as HIV/AIDS, malaria and tuberculosis.

The relevant authorities in the Patent Act are sections 21.01 to 21.2, which set forth the conditions under which an authorization is given in order to allow a manufacturer to use a patented invention in order to make and export a drug or device.

The Patent Appeal Board is responsible for administering the authorization and attendant procedures under the Act on behalf of the Commissioner. In this capacity, the Board is responsible for the following duties:

  1. Posting applications for authorization under CAMR on CIPO's website within seven days of receipt;
  2. Reviewing applications for authorizations to applicants and recommending approval by the Commissioner of Patents if the applications meet all the relevant requirements;
  3. Posting and maintaining a link to the authorization holders' websites; and
  4. Reviewing applications for renewals of authorizations and recommending approval by the Commissioner of Patents if the application meet all the relevant requirements.

For details or obtaining authorization in Canada, visit Use of Patents for International Humanitarian Purposes to Address Public Health Problems (Canada's Access to Medicines Regime)

Administering procedures in cases of alleged abuse of patents

When it is alleged that a patentee has abused its patent rights as set out in section 65 of the Patent Act, an interested person may apply to the Commissioner of Patents and ask for relief. In such cases, the patentee is given the opportunity to oppose the application for relief by filing a counter statement. A hearing may be requested by any of the parties or the Commissioner may require a hearing. The Commissioner may also refer the proceedings to the Federal Court with the consent of the interested parties, or if prolonged examination is required that cannot be completed before him. In the latter case, Ministerial approval is required.

The Patent Appeal Board has the responsibility for administering the procedures leading to a hearing and rendering a decision whereby the Commissioner may grant a compulsory licence in an appropriate case. In exceptional circumstances, the Commissioner can order that a patent be revoked.

Advising government departments regarding the Public Servants Inventions Act

In regard to questions concerning the application of the Public Servants Invention Act, the Patent Appeal Board plays an advisory role, offering information and guidance to other government departments in cases concerning inventions made by public servants.

Under section 3 of the PSIA, inventions made by public servants in connection with their duties, or made with the facilities, equipment, or financial aid of the government, belong to the government.

Under section 4.(1) of the PSIA, every public servant who makes an invention must:

  1. inform the appropriate Minister of the invention;
  2. not file for a patent outside of Canada without Ministerial consent; and
  3. disclose in any patent application that he/she is a public servant.

Under subsection 4(2) of the PSIA, the Commissioner of Patents has a duty to inform the appropriate Minister if he believes that a public servant has filed an application for patent.

Settling terms and conditions for use of patented inventions by government

The Government of Canada or the government of a province may apply to the Commissioner seeking authority to use a patented invention. This may only occur after the government has made an effort to obtain a license from the patentee on reasonable terms and conditions, where these efforts have not been successful with a reasonable period. However, under section 19.1(2) of the Patent Act, such negotiation is not necessary in cases of national emergency or extreme urgency or where the intended use is a public non-commercial use.

The Patent Appeal Board, on behalf of the Commissioner, administers the procedures involved in setting the terms and amount payable to the patentee. The Commissioner has exclusive authority to set the amount of compensation to be paid to the patentee. The Commissioner may also, on application by the patentee, terminate the authorization if satisfied that the conditions warranting its grant no longer exist, and are unlikely to recur.

Sections 19, 19.1 and 19.2 are the relevant authorities in the Patent Act. Any such decision of the Commissioner is subject to appeal to the Federal Court under section 19.2 of the Patent Act.

In situations involving the use of a patented invention by a government contractor in the performance of a defense contract, section 22 of the Defense Production Act applies. Again, the Board will advise the Commissioner in his role of setting the compensation for use of a patented invention when the patentee and the government cannot reach an agreement.