Amelia Manera is a JD candidate at Osgoode Hall Law School.

In Bartly v. Canada (Commissioner of Patents), 2011 FC 873, a recent decision of the Federal Court, Justice Hughes clarifies that a Final Action by the patent examiner indeed means a final action. In other words, a Final Action is where all application objections are to be disposed of with no opportunity to hold objections in reserve for future consideration.

The decision was released July 12, 2011 and involved a judicial review of the decision of the Commissioner to uphold the rejection of the patent application by the examiner and the refusal to grant a patent, despite the execution of a Final Action in favour of the Applicants.

The patent application in question was for an invention called a “Protective Member for a Vehicle”, which was a protective coating that can be applied to the exterior of vehicles to prevent minor external damage (see Application Number 2,159,968). The application was filed on October 5, 1995, at the Canadian Intellectual Property Office (CIPO). After several requisitions from the patent examiner and responses from the Applicants, the parties effectively arrived at a stalemate. On January 10, 2007, the Applicants filed a request for the patent examiner to issue a Final Action.

A Final Action, as defined in the Manual of Patent Office Practice (MOPOP), is a report of all the outstanding defects of a patent application to which the applicant is afforded a chance to respond. Chapter 21 of the MOPOP outlines the Final Action Practice. Pursuant to s.30(4) of the Patent Rules and as set out in Chapter 21 of the MOPOP, a Final Action is a report made by the patent examiner that sets out all of the outstanding defects of the patent application in question. The patent examiner then requisitions from the applicant either amendments that would bring the application into compliance with the Patent Act or the Patent Rules, as appropriate, or arguments as to why the application does comply. The applicant has six months within which to reply. If the patent examiner determines that the applicant’s response is unsatisfactory and thus rejects the patent application, the application is forwarded to the Patent Appeal Board (PAB) for review. The PAB then gives a recommendation to the Commissioner of Patents on whether to reject or accept the application.

On July 30, 2007, the patent examiner issued a Final Action rejecting patent application. Following the procedure set out in MOPOP, the application was then reviewed by the PAB; the PAB did not hold a hearing. The Commissioner accepted the PAB’s recommendation that the patent examiner’s rejection of the application was unjustified; but instead of allowing the application, as stipulated in the MOPOP procedures for Final Actions, the Commissioner sent the application back to the examiner “to address any outstanding defects which have been held in abeyance pending resolution of the new matter issue”.  The patent examiner then sent another requisition to the Applicants restating old objections and raising a new piece of prior art. In response, the Applicants sent a request asking the Commissioner to ignore the requisition and allow the application. The request was denied on December 4, 2009, and the Applicants filed for judicial review.

As Justice Hughes opines at paragraph 80 of the judicial review decision, a Final Action is meant to be just that, final. Justice Hughes also clarifies that there is no provision for the reservation of outstanding defects to be determined at a later date. All defects are to be disposed of in a Final Action.

The decision of the Commissioner of Patents of December 4, 2009, was set aside and the application was sent back to the patent examiner for re-determination of the request to ignore the most recent requisition and allow the application. Justice Hughes also opined that the most appropriate action the examiner could take would be to allow the application and let others, if they so choose, challenge its validity.