Manual of Patent Appeal Board Procedures for Rejected Patent Applications

Version: December 2023

Table of contents

Review of Rejected Patent Applications

The present document is intended to be a guidance document on the procedure followed by the Patent Appeal Board (PAB). It articulates current Canadian Intellectual Property Office (CIPO) practice and interpretation of relevant legislation and should not be quoted as, or considered to be, a legal authority. In the event of any inconsistency between this Manual and the applicable legislation, the legislation must be followed. It is the responsibility of the applicant/patentee to decide how to proceed with respect to a particular application or other matter.

1.0 Background

On behalf of the Commissioner of Patents, the PAB conducts reviews for rejected patent applications in situations where an examiner considers that the requirements for the granting of patent rights have not been met. The PAB conducts a preliminary review of rejected applications, offers applicants the opportunities to make written submissions and to attend oral hearings, and ultimately provides written recommendations to the Commissioner on the disposition of rejected applications.

The primary intention of the review process is to resolve impasses in examination and ensure compliance with the Patent Act and Patent Rules. The review process achieves finality while maintaining a consistent, transparent and efficient administrative practice, and adhering to the principles of natural justice and procedural fairness.

1.1 Rejected Patent Applications

Under subsection 86(7) of the Patent RulesFootnote 1, a review of a rejected application is required whenever the examiner has reasonable grounds to believe that the application does not comply with the Patent Act and Patent Rules following an applicant's response to a Final ActionFootnote 2.

The review process is generally outlined in Chapter 26 of the Manual of Patent Office Practice (MOPOP) and performed according to paragraph 86(7)(c) of the Patent Rules. As explained in section 26.07.01 of MOPOP, the Commissioner is typically assisted in performing the review by a Panel of up to three members of the PAB.

2.0 General practice for the review of rejected patent applications

2.1 The Acknowledgement Letter

As indicated in section 26.07.02 of MOPOP, an applicant can expect to be contacted by the PAB several times during the course of the review. In this regard, the initial letter from the PAB referred to in MOPOP typically takes the form of an Acknowledgement Letter, which will be sent to the applicant by Registered Mail, email or similar delivery services.

The Acknowledgment Letter is an administrative document that serves to acknowledge that the rejected application has been transferred to the PAB. It also serves a number of important procedural purposes, including:

  • to provide notice that the rejection has not been withdrawn (as per paragraph 86(7)(a) of the Patent Rules);
  • to forward to the applicant the examiner's Summary of Reasons (see MOPOP at 26.06) for maintaining the rejection after the applicant's response to the Final Action;
  • to provide notice that, in accordance with paragraph 86(7)(b) of the Patent Rules, any amendments submitted in the response to the Final Action are considered never to have been made; and,
  • to request an indication of the applicant's continued interest in having the application reviewed by the PAB.

The Acknowledgment Letter also advises that if a Preliminary Review letter is sent (see 2.4, below), the applicant will be given the opportunity to provide written submissions and to attend an oral hearing.

2.2 Applicant's Response to the Acknowledgement Letter

Although the Acknowledgement Letter does not address substantive aspects of the rejected application, it is important that the applicant respond to the Acknowledgement Letter. The applicant is requested to indicate that they either have a continuing interest in having the application reviewed or no longer have any continuing interest in the application, in which case the application should be withdrawn. As explained below, if the applicant does not wish for a Commissioner's Decision to be issued, they must withdraw the application.

In particular, the applicant's response to the Acknowledgment Letter assists the PAB with efficiently managing its workload.

Additionally, although the Acknowledgement Letter will include a date by which the applicant is to respond, a letter from the PAB is not a "requisition made by an examiner" and therefore a failure to reply does not result in deemed abandonment under paragraph 73(1)(a) of the Patent Act. The applicant may request an extension without payment of a fee. As explained in the Acknowledgment Letter, unless an applicant withdraws the application, paragraph 86(7)(c) requires a review of a rejected application. Consequently, failure to respond to the Acknowledgement Letter (or any other correspondence from the PAB) does not suspend or terminate the review process. When all relevant maintenance fees have been paid, only withdrawal of the application by the applicant will terminate the review process prior to the issuance of a Commissioner's DecisionFootnote 3. Further, it is insufficient for an applicant to merely state verbally or in writing that they not do wish for a review to be performed. Instead, in order for an application to be withdrawn and the review terminated, the applicant must formally withdraw the application, according to the Office's practices, as set out in the Acknowledgement Letter (see also section 8.03 of MOPOP).

2.3 Constitution of the Panel and Preliminary Review of the Rejected Application

As indicated at section 26.07.01 of MOPOP, a review of a rejected application is typically performed by a panel of up to three members of the PAB. After sending the Acknowledgement Letter, a panel ("the Panel") of the PAB will be constituted, at which time a preliminary review of the rejected application will be performed.

In particular, the Panel will conduct a substantive review of the record, including the rejected application, the prosecution history (with a particular emphasis on the Final Action, the response to the Final Action and the Summary of Reasons) and other relevant Patent Office practice documents. At this stage, as indicated in 26.07.03a of MOPOP, the Panel may request or provide clarification of issues to the applicant with the intent of ensuring that the applicant and the Panel have the same understanding of the issues and material to the review.

2.3.1 Identification of New Defects

Although the focus is primarily on resolving the impasse of the Final Action, defects in the application beyond those raised in the Final Action or the Summary of Reasons may also be identified by the Panel under subsection 86(9) of the Patent Rules.

In this regard, as stated in the Regulatory Impact Analysis Statement (RIAS) accompanying the amendments that led to subsections 30(6) to 30(6.4) of former Patent RulesFootnote 4, "any defect in the application can be considered at the review stage…. In every case, as per amended subsection 30(6.1)Footnote 5, if new defects are identified during the review, the applicant will be invited to address the new defects and any submissions will be taken into consideration by the Commissioner in the ultimate decision."

The Panel may raise new defects during the review process, regardless of its views regarding the defects identified in the Final Action. For example, even if the Panel takes the view that the defects identified in the Final Action are not justified, it may nevertheless conclude that the application is not allowable due to other defects not discussed in the Final Action or Summary of Reasons. In cases where a new defect in relation to a rejected application is identified, the applicant will be given notice of the issue and invited to submit arguments as to why the application complies with the Patent Act and the Patent Rules, or propose amendments that would bring the application into compliance. Such notice and invitation will be provided by way of a Preliminary Review letter, as explained at 2.4 below.

2.3.2 Confirmation of Application on File

The Panel's preliminary review of a rejected application will confirm the relevant parts of the application that are the subject of the review. Specifically, paragraph 86(7)(c) of the Patent Rules requires a review of "the rejected application", which includes the claims that were the subject of the Final Action (sometimes referred to as the "Claims on File" or the "Final Action Claims"). In cases where the applicant submitted amendments to the application in response to the Final Action and the examiner still has reasonable grounds to believe that the application does not comply with the Patent Act or Patent Rules, paragraph 86(7)(b) of the Patent Rules specifies that these amendments "are considered never to have been made." This ensures that the same application that was rejected by the examiner is reviewed, without any additional material that could introduce new defects. However, to the extent that an applicant may have attempted to amend the application in response to the Final Action, the Panel may consider these claims as proposed amendments and may assess whether these amendments are necessary for compliance with the Patent Act and Patent Rules pursuant to subsection 86(11) of the Patent Rules. In this regard, see 3.0 below, for further explanation of the PAB's practice with regard to proposed amendments.

Following the Panel's preliminary review of a rejected application, it is possible that the Panel will be of the view that the rejected application (i.e. the application as it existed at the time of the Final Action) ought to be allowed. In such a case, the Panel could prepare a recommendation to the Commissioner immediately following the preliminary review stage of the process; see 2.3.3, below. Otherwise, the next step in the process will be for the Panel to prepare a Preliminary Review letter for the applicant, which, among other things, summarizes the results of the preliminary review (see 2.4).

2.3.3 Panel Recommendation to Allow Following a Preliminary Review

As explained in section 26.07.05 of MOPOP, it is possible that the Panel, after a preliminary review of a case, may have reasonable grounds to believe that the application complies with the Act and the Rules. Where the Panel determines that there is no need to receive further submissions from the applicant or to hold a hearing, they may recommend that the Commissioner by notice inform the applicant that the rejection is withdrawn and that the application has been found to be allowable. If such a recommendation is accepted by the Commissioner, a Commissioner's Decision will be prepared (see 2.8, below) indicating the Commissioner's reasons for allowing the application and the applicant will be notified in accordance with subsection 86(10) of the Patent Rules.

Further, in instances where subsection 86(10) is applicable, no consideration will be given to any amendments that the applicant submitted in response to the Final Action (which under paragraph 86(7)(b) of the Patent Rules are considered never to have been made).

2.4 Preliminary Review Letter

Unless a Commissioner's Decision notifies the applicant that the application is allowed after the preliminary review, the next correspondence an applicant normally receives from the Panel is a Preliminary Review letter.

The Preliminary Review letter serves several functions, both procedural and substantive.

Substantively, the Preliminary Review letter serves to provide the applicant with notice of the Panel's preliminary views on the defects identified in the Final Action and any other matters that require clarification between the Panel and the applicant. If the preliminary review results in the identification of additional defects, the applicant will be provided notice of these, in accordance with subsection 86(9) of the Patent Rules, in the Preliminary Review letter. Finally, the Preliminary Review letter may also invite certain amendments to the application on file that could be considered necessary to bring the application into compliance with the Patent Act and Patent Rules under subsection 86(11) and paragraph 101(b)Footnote 6 of the Patent Rules (see 3.0, below).

Procedurally, the Preliminary Review letter will provide the applicant the opportunities to make written submissions and to be heard in response to the Panel's preliminary views, prior to a final recommendation being made to the Commissioner. To this end, the Preliminary Review letter will also set out deadlines for the next steps in the process. The PAB generally provides the following deadlines:

  • a month from the date of the Preliminary Review letter to provide written submissions and optionally propose specific amendments that, in the applicant's view, overcome the identified defect(s); and
  • 45 days from the date of the Preliminary Review letter for a hearing.

Changes to the deadlines set out in the Preliminary Review letter may be possible in certain circumstances; see section 2.4.1, below. Further, as noted in 26.07.04 of MOPOP, if an applicant is unable to participate in a timely hearing, the review process may proceed nonetheless.

The Preliminary Review letter will identify the Members who constitute the Panel for the particular file.

2.4.1 Modification of Deadlines for Steps Following a Preliminary Review Letter

As explained above, the Preliminary Review letter provides deadlines for the next steps in the process. The overall goal with this practice is to provide a fair and consistent amount of time to the applicant to respond, while supporting the PAB's objectives to maintain predictable scheduling of its work to permit timely disposition of rejected applications.

Accordingly, requests from the applicant to either extend or shorten a time period will not be automatically granted. Further, applicants are advised that the PAB's decision whether to grant a request to adjust a deadline will, of necessity, have to take into account circumstances, such as operational requirements, that may not be known to the applicant, including the availability of Panel Members and the scheduling of other PAB priorities.

In particular, the following circumstances may be taken into account when considering changes to deadlines:

  1. Nature of the Issues Identified in the Preliminary Review Letter:
    • An extension of time may be granted if the Preliminary Review letter identifies a new defect pursuant to subsection 86(9) of the Patent Rules that is substantially different from a previously identified defect. For example, if the new defect is one that cites new art, or raises new issues not already explored in the record, that may reasonably require more time to develop a response.
    • An extension of time may not be granted if the Preliminary Review letter only recites defects that are substantially the same as those which were addressed during prosecution (e.g. applying the same art or the same office practice).
  2. Logistical Circumstances Justifying a Change:
    • Examples may include unforeseen personal circumstances of an applicant that prevent the applicant from either participating in the review process or providing timely instructions to its agent within the deadlines set out in the Preliminary Review.
    • Likewise, small adjustments of deadlines may be possible to accommodate scheduling of agents or availability of Panel Members.

Even if the above factors would support a modification of a deadline, one may not be granted if it would compromise the ability of the Panel to consider written submissions, prepare for the hearing, and carry out other priority work of the PAB.

Any requests to change a deadline should be directed to the Panel lead who signed the Preliminary Review letter.

2.5 Applicant's Response to a Preliminary Review Letter and Written Submissions

As indicated in 26.07.04 of MOPOP, subsection 86(13) of the Patent Rules specifies that the applicant must be given an opportunity to be heard before any refusal. Therefore, the Preliminary Review letter invites the applicant to provide written submissions and attend an oral hearing to respond to the Panel's preliminary views on the rejected application prior to a final decision being made.

The applicant's written submissions should present its complete and substantive response to the Preliminary Review letter, including reasons why it considers that the application is not defective or why certain amendments would overcome the identified defects. If the applicant requested to have an oral hearing, the associated written submissions ought to comprehensively address any arguments that will be made at the oral hearing. The final recommendation will be based on the record, including any additional arguments made in the written submissions and at the oral hearing. Therefore, the applicant should ensure that at this stage it raises all the arguments it wishes to make in response to the views set out in the Preliminary Review letter.

If the applicant chooses to submit proposed claims or other proposed amendments to the application (see section 3.0, below), the applicant must make specific arguments in its written submissions explaining how the proposed amendments would overcome the issues raised in the Preliminary Review letter and, more generally, how the proposed claims or other proposed amendment(s) to the application comply with the Patent Act and Patent Rules without introducing new defects.

The applicant must also confirm the dates set out in the Preliminary Review letter, or alternatively, correspond with the Panel lead (the signatory on the Preliminary Review letter) to arrange more suitable dates (see 4.0, below regarding changes to deadlines).

As noted in 2.2, above, unless an applicant withdraws the application, paragraph 86(7)(c) requires a review of a rejected application. In this regard, if, upon reviewing the Preliminary Review letter, an applicant does not withdraw the application and no longer wishes to participate in the review process, the applicant should advise the Panel, in which case a final Recommendation will be prepared based on the understanding that the applicant is not contesting the position set out in the Preliminary Review letter.

If an applicant no longer wishes to participate in the review process and does not want a decision to issue, the applicant must withdraw the application following the process set out in in the Acknowledgement Letter; see 2.2, above.

If the applicant merely states that they do not wish for a review to be done and does not take active steps to withdraw the application, the review process will continue.

2.6 Hearing

As explained in section 26.07.04 of MOPOP, the purpose of the hearing is to provide the applicant with a further opportunity to develop and explain the reasons set out in the written submissions for contending that the application complies with the Patent Act and Patent Rules or that the proposed amendments before the Panel (being the latest set of amendments proposed by the applicant; see 3.0, below) overcome the identified defects without introducing new defects.

Further, as explained in section 26.07.04 of MOPOP:

  • The hearing may occur in person, via teleconference or via videoconference. Attendees include the Panel, the applicant and/or their representatives, and possibly observers from the examination staff.
  • Typically a hearing begins with an oral presentation by the applicant. The Panel may pose questions to the applicant. The applicant is given an opportunity to make any final comments before the conclusion of the hearing.
  • Points of fact agreed to during the hearing, or concessions made by the applicant, will be taken into account in the recommendation to the Commissioner. The applicant should be prepared to address any questions posed at the hearing. It will only be in rare circumstances that the Panel may invite the applicant to make additional written submissions/proposed amendments following a hearing.
  • No decision regarding disposal of the application may be made at the hearing. Instead, since disposal of the matter requires a Commissioner's Decision, the Panel must make a recommendation to the Commissioner, taking account of the applicant's arguments at the hearing, which precedes a Commissioner's Decision.
  • The hearing is normally recorded to serve as an aide-mémoire for the Panel in preparing a final recommendation. Transcripts are not prepared.

2.7 Preparation of a Recommendation to the Commissioner

Where, in exceptional circumstances, an unexpected issue or clarification of position arises during the hearing, the Panel may invite the applicant to provide post-hearing written submissionsFootnote 7. It is also possible, due to changes in the law or practice in the interim, that a Supplemental Preliminary Review letter may be sent before or after the hearing, with the opportunity to make further oral and written submissions and propose amendments.

Otherwise, in most cases, the next step will be for the Panel to deliberate in view of the record, including the applicant's oral and written submissions and the latest proposed amendments before the Panel, and thereafter prepare a recommendation for the Commissioner.

As set out in section 26.07.06 of MOPOP, the recommendation is provided as written reasons that generally include an explanation of the invention being considered, background information on the prosecution, an identification of the issue(s) to be decided, relevant statutory authority, relevant Patent Office practice, pertinent jurisprudence, a summary and analysis of the issue(s) including factual determinations, and a final recommendation of the Panel. The Commissioner considers the recommendation and renders a final decision.

2.8 The Commissioner's Decision

As set out in section 26.08 of MOPOP, the Commissioner's Decision provides reasons for arriving at the decision and explains any findings with reference to the Patent Act, Patent Rules, Patent Office Practice and pertinent jurisprudence. The Commissioner considers the recommendation of the Panel in reaching a decision.

Once a Commissioner's Decision is issued, it is sent to the applicant by Registered Mail or similar delivery services. Three outcomes are possible:

  • in accordance with subsection 86(10) of the Patent Rules, if the Commissioner has "reasonable grounds to believe that the application complies with the Act and … Rules," the Commissioner will "by notice inform the applicant that the rejection is withdrawn and that the application has been found allowable" and a Notice of Allowance will be issued;
  • in accordance with subsection 86(11) of the Patent Rules, if the Commissioner "has reasonable grounds to believe that the application does not comply with the Act or … Rules, and certain amendments are necessary" to render the application compliant with the Patent Act and Patent Rules, the applicant will be so notified that those amendments must be made within three months, failing which the Commissioner will refuse the application; or,
  • in accordance with section 40 of the Patent Act, if the Commissioner "is satisfied that an applicant is not by law entitled to be granted a patent", the application will be refused.

2.9 Appeal from the Refusal of the Commissioner

As set out in section 26.09 of MOPOP, where the Commissioner refuses a patent application under section 40 of the Patent Act, section 41 of the Patent Act provides that the applicant may appeal the decision to the Federal Court within six months after notice of the refusal has been sent to the applicant.

3.0 Amendments to a rejected patent application under subsection 86(11) of the Patent Rules

3.1 Amendments to the Rejected Application

An applicant cannot, as a matter of right, amend their application after the time limit to respond to a Final Action has expired. As explained above, under paragraph 86(7)(b) of the Patent Rules, when examiner does not have reasonable grounds to believe that the application complies with the Patent Act and Patent Rules, and maintains the rejection of an application, any amendments made subsequent to the Final Action are considered never to have been made.

Once an application has been rejected by Final Action, it cannot be amended unless one of the limited circumstances set out in section 101 of the Patent Rules appliesFootnote 8.

The only one of these circumstances that may arise during the review process is set out in paragraph 101(b) of the Patent Rules, which provides that:

If an application for a patent is rejected by an examiner under subsection 86(3), the specification and the drawings contained in the application must not be amended by the applicant after the date prescribed by subsection 86(8), unless

(b) the amendments are those required in a notice sent under subsection 86(11);

Paragraph 101(b) operates in the context of subsection 86(11) of the Patent Rules which clarifies the procedure by which an applicant is given an opportunity to make amendments necessary for compliance with the Patent Act and Patent Rules:

If, after review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules and certain amendments are necessary in order to make the application allowable, the Commissioner must by notice inform the applicant that those amendments must be made not later than three months after the date of the notice.

A certain amendment under subsection 86(11) may, for example, arise from claims proposed by an applicant to be considered in the event that the claims on file are not found to comply with the Patent Act and Patent Rules. Alternatively, it is possible that, during the review of the rejected application, the Commissioner may identify certain amendments that would render the application compliant. These two situations are discussed immediately below.

3.2 Amendments Proposed by the Applicant / "Proposed Claims"

Proposed amendments to the application are neither part of the "rejected application" nor do they result in amendment to the application on file. They therefore, do not fall within the review required by paragraph 86(7)(c) of the Patent Rules. However, as a practical matter, the PAB is open to considering proposed amendments that the applicant submits will overcome identified defects without introducing new defects.

Under subsection 86(11) of the Patent Rules, the PAB may, in performing its review, consider one set of claims proposed by the applicant, in addition to the claims on file.

The term "proposed amendments" is used to refer to certain amendments resulting in a single set of amendments submitted by the applicant, which are not amendments to the application but which may be considered as "necessary" under subsection 86(11) for compliance with the Patent Act and Patent Rules. So understood, the general review process described in 2.0 above provides two specific instances where the Panel may consider proposed amendments.

The first such possibility is if amendments were submitted in response to a Final Action but the examiner did not withdraw the rejection. In such an instance, the Panel may consider the amendments submitted in response to the Final Action as a set of proposed amendments during the preliminary review (see 2.3, above)Footnote 9.

The second instance in which the Panel may consider proposed amendments arises if the Panel prepares a Preliminary Review letter (see 2.4, above), which will typically contain an invitation to the applicant to provide one set of proposed amendments that addresses only the issues that arise from the observations made in the Preliminary Review letter (including any new defects identified pursuant to subsection 86(9) of the Patent Rules). Such proposed amendments should fully address the outstanding issues and should not introduce any new issues or defects.

In choosing to submit a proposed claim set in response to a Preliminary Review letter, the applicant is to be aware that the Panel will only consider the most recent proposed claim set to determine whether these may be "necessary" by the Commissioner. Any previously submitted proposed claim set will not be given further consideration. Therefore, if a proposed claim set is submitted in response to a Preliminary Review letter, the Panel will treat this as, in effect, replacing an earlier proposed claim set that was submitted in response to the Final ActionFootnote 10.

Generally, only one proposed claim will be considered for each defective claim on file. The number of claims should not increase in a proposed claim set.

Finally, the opportunity to provide proposed amendments does not provide the applicant with another round of prosecution. Generally, a proposed claim will only be considered a certain amendment that is "necessary" under paragraph 101(b) of the Patent Rules if the following conditions are met:

  • there is a clear correspondence between the proposed claim and a defective claim on file;
  • the proposed claim does not broaden the scope of the corresponding claim on file;
  • the proposed claim does not necessitate another prior art search; and,
  • the proposed claim complies with the Patent Act and Patent Rules and does not introduce new defects.

3.3 Amendments Identified by the Commissioner

Following the review of a rejected application, the Commissioner may determine that certain amendments can be made to render the application compliant with the Patent Act and Patent Rules. Since it is not the role of the Commissioner to advise applicants how to comply with the Patent Act and Patent Rules or to draft claims, only in those cases where it can be concluded that amendments will clearly render the application allowable would the Commissioner require amendments beyond those proposed by the applicant. The types of amendments that may be identified by the Commissioner are generally limited to:

  • deletion of non-compliant claims and renumbering of remaining claims so as to result in a claim set consisting of only compliant claims; and,
  • correction of typographical and other similar obvious errors.

3.4 Notification of Necessary Amendments

If certain amendments are considered by the Commissioner to be necessary, as discussed above, the Commissioner's Decision will notify the applicant, in accordance with subsection 86(11) of the Patent Rules, that they must be made.

If the Panel forms the view after a preliminary review that there are amendments that could bring the application into compliance with the Patent Act and Patent Rules and therefore be considered necessary according to subsection 86(11) and paragraph 101(b) of the Patent Rules, the views of the Panel in this regard will be provided in the Preliminary Review letter (see 2.4, above).

Additionally, if the Panel forms such a view at a later stage, following the receipt of written submissions or oral hearing, a notice may be provided in the Commissioner's Decision.

In either case, if under subsection 86(11), the applicant does not make certain amendments notified by a Commissioner's Decision within three months, the Commissioner will refuse the application in accordance with section 40 of the Patent Act.

Appendix I: Relevant Sections of the Patent Rules

86(7) If an applicant replies in good faith to a requisition made under subsection (5) on or before the date set out in subsection (8) but, after that date, the examiner still has reasonable grounds to believe that the application for a patent does not comply with the Act or these Rules,

  1. (a) the Commissioner must by notice inform the applicant that the rejection has not been withdrawn;
  2. (b) any amendments made to that application during the period beginning on the date of the final action notice and ending on the date set out in subsection (8) are considered never to have been made; and
  3. (c) the application must be reviewed by the Commissioner.

(9) If, during the review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules in respect of defects other than those indicated in the final action notice, the Commissioner must by notice inform the applicant of those defects and invite the applicant to submit arguments, not later than one month after the date of the notice, as to why the application does comply.

(10) If, after review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found to be allowable and require the payment of the final fee set out in item 14 of Schedule 2 not later than four months after the date of the notice.

(11) If, after review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules and certain amendments are necessary in order to make the application allowable, the Commissioner must by notice inform the applicant that those amendments must be made not later than three months after the date of the notice.

(12) If the applicant complies with the notice sent under subsection (11), the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found to be allowable and require the payment of the final fee set out in item 14 of Schedule 2 not later than four months after the date of the notice.

(13) Before refusing an application for a patent under section 40 of the Act, the Commissioner must give the applicant an opportunity to be heard.

101 If an application for a patent is rejected by an examiner under subsection 86(3), the specification and the drawings contained in the application must not be amended by the applicant after the date prescribed by subsection 86(8), unless

  1. (a) a notice is sent to the applicant informing them that the rejection is withdrawn;
  2. (b) the amendments are those required in a notice sent under subsection 86(11); or
  3. (c) the Supreme Court of Canada, the Federal Court of Appeal or the Federal Court orders the amendments to be made.
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