MOPOP - Chapter 13 - Endnotes
Examination of Applications
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Endnotes
1 Applications are assigned to an examiner working in the field to which the claimed invention belongs, and are examined sequentially, within the applications assigned to a given examiner, according to the request for examination date.
2 Apotex Inc. v. Wellcome Foundation Ltd. [2002] SCC 77 [(2002), 21 C.P.R. (4th), 499 (S.C.C.)] at paragraph 37.
3 "Technology noun", The Oxford Dictionary of English (revised edition), Oxford University Press 2005.
4 This guidance is only required of applications filed on or after October 1, 1996.
5 Whirlpool Corp. v. Camco Inc. [(2000), 9 C.P.R. (4th), 129 (S.C.C.)] at paragraph 49; citing Lister v. Norton Brothers and Co. [(1886), 3 R.P.C. 199, (Ch.D.)] at page 203. The actual quote from Lister is that a patent "must be read by a mind willing to understand, not by a mind desirous of misunderstanding".
6 Whirlpool (supra at 5) at paragraph 49
7 The term "set of elements" must be understood to include a set of one. The use of the term "together" is relevant only for a set of two or more elements.
8 Biolyse Pharma Corporation v. Bristol-Myers Squibb Company [2005] SCC 26 at paragraph 1
9 The approach set out in 13.05.03 is conceptually similar to the Aerotel/Macrossan (Aerotel Ltd. v. Telco Holdings Ltd. & in the Matter of: Patent Application GB 0314464.0 of Macrossan [2006] EWCA Civ 1371) "contribution approach" made use of in the UK, and the use of the term "contribution" will inevitably draw comparisons. The present approach, however, is distinct and cannot be directly related to the UK practice. The analysis, and the conclusions reached, in some ways also resemble the approach in the Hitachi decision [(2004) T258/03] followed by the EPO. It is important for the reader not to import into the present explanation any presumption that the practice being described is intended to mirror either Aerotel or Hitachi. Important distinctions exist, and the present approach is based solely on an assessment of Canadian jurisprudence.
10 Shire Biochem Inc. v. Apotex Inc. [2008] FC 538 at paragraph 25; Eli Lilly Canada Inc. v. Novopharm Ltd. [2007] FC 596 at paragraph 142; Pfizer Canada Inc. v. Novopharm Ltd. [2005] FC 1299 at paragraph 78; Whirlpool Corp. v. Camco Inc. [(1997), 76 C.P.R. (3rd), 150 (F.C.T.D.)] at page 186
11 Whether the applicant is correct to consider the matter to be known to the person skilled in the art is addressed when considering sufficiency of disclosure.
12 To be "useful" in the sense required by the Patent Act, the various requirements set out in Chapter 12 of this manual must all be met.
13 The differences between the present approach and the Aerotel/Macrossan and Hitachi approaches (see supra at 9) can be summarised as follows: in Aerotel one determines what has been contributed and asks whether it is statutory (i.e. whether it is an "invention" within the meaning of the UK equivalent to section 2 of the Patent Act); in Hitachi one asks whether the technical matter of the claim is unobvious, and presumes the non-technical matter to be obvious (i.e. one asks whether the statutory matter of the claim is unobvious under the EPC equivalent to section 28.3 of the Patent Act); in the present approach, one asks whether the claim includes statutory subject-matter that has been contributed. These approaches are all, fundamentally, concerned with determining whether the matter of the claim that is novel, unobvious and useful is also statutory. Although the perspective from which the analysis is performed differs, the end result should be consistent.
14 Canadian Gypsum Co. Ltd. v. Gypsum, Lime & Alabastine, Canada, Ltd. [1931] Ex.C.R. 180; Shell Oil v. Commissioner of Patents [(1982), 67 C.P.R. (2nd), 1 (S.C.C.)] at pages 10-11
15 Any defects of form or content must, of course, be addressed before the claim will be allowed.
16 Examiners need not examine non-statutory matter for novelty and obviousness. Consequently, where it has been determined that a claim does not include contributed statutory subject-matter, but does include a discrete non-statutory feature, the discrete non-statutory feature is viewed as the "invention" being asserted and is objected to under section 2 of the Patent Act. Such an objection is made even if it is clear from the application itself, the prior art, or statements made by the applicant that the discrete non-statutory feature in a claim has not been contributed.
17 Schlumberger Canada Ltd. v. Commissioner of Patents [(1981), 56 C.P.R. (2nd), 204 (F.C.A.)] at page 206
18 Schlumberger (supra at 17)
19 Lawson v. Commissioner of Patents [(1970), 62 C.P.R. (1st), 101 (Ex.Ct.)]
20 "claim date" meaning the earlier of the filing date or valid priority date.
21 Searches performed by Canadian examiners as part of CIPO's obligations as an International Searching Authority are governed by the requirements of the PCT, and are not covered by this section of the manual.
22 Subsection 30(1) applies where a final action was not issued, and 30(5) where the application is found allowable subsequent to a response to a final action.
23 This refers to a final fee paid by the authorized correspondent on an application that has been allowed.
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