Reviewing examiners' rejections of applications

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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 Final Report by an industrial design examiner. 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).

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