Chairing re-examination boards

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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.

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