Should a Patent Applicant File Prior Art at the Canadian Intellectual Property Office?
February 14, 2017
In the United States, “[e]ach individual associated with the filing and prosecution of a patent application … [has] a duty to disclose to the Office all information known to that individual to be material to patentability” (see e.g., 37 CFR 1.56, 1.97, 1.98). Prior art is filed with the United States Patent and Trademark Office by an Information Disclosure Statement (IDS).
In contrast, there is no ongoing duty on applicants of Canadian patent applications to disclose prior art during prosecution, absent a specific requisition from an examiner to identify prior art. When such a requisition is received, an applicant must reply in good faith to the requisition to avoid abandoning a patent application.
Absent a requisition from an examiner, should an applicant voluntarily file prior art at the Canadian Patent Office? There are a number of reasons for taking a “wait-and-see” approach to voluntarily disclosing prior art in the Canadian Patent Office.
Over the years, the Canadian Patent Office practice relating to recommending that applicants furnish prior art has shifted. For example, prior to 2010, when an applicant received an “Acknowledgement of Request for Examination”, a note was included that stated:
It would be to an applicant’s advantage to furnish particulars of the prior art cited in respect of corresponding applications before the United States Patent Office and European Patent Office when such information becomes available. Furthermore, in order to assist in the examination of this application, a copy of all non-patent citations would be appreciated.
However, since approximately 2010, when an applicant receives an “Acknowledgement of Request for Examination”, a note is included that states:
The applicant should not provide information that is readily available to the examiner. It is generally not necessary to provide copies of any patent documents identified, but copies of non-patent documents or translations may be submitted, especially if there is reason to believe the Office will not be able to readily obtain a copy. [emphasis added]
Given that patent prosecution records for numerous countries are now accessible on the Internet, when examining a Canadian patent application, an examiner will typically consider available foreign search results to avoid unnecessary replication of work. For example, a “Search Report” is now appended to Examiner’s Reports that captures the search and examination work that is conducted, showing that the examiner has considered prior art cited in other jurisdictions. The Search Report outlines whether a search of prior art was conducted and, if so, the search strategy employed.
In fact, the Manual of Patent Office Practice at the Canadian Patent Office states that examiners should not requisition an identification of prior art cited in published search reports to which the examiner has ready access to, such as International Search Reports, and any European Patent Office or United States Patent and Trademark Office search reports.
Moreover, any prior art from non-European or non-U.S. prosecution will be filed in an IDS as part of the U.S. prosecution (if still active) and therefore will be available to the Canadian examiner.
Accordingly, before incurring additional costs related to filing prior art at the Canadian Patent Office, applicants may choose to wait until, at least, a first substantive Examiner’s Report has been issued to determine whether the examiner has reviewed foreign prosecution records of corresponding applications.
That being said, there might still be benefits to voluntarily disclose prior art in certain circumstances. For example, if prior art arises after the close of a corresponding U.S. prosecution, then it may be advisable to disclose it since it may not be otherwise brought to the Canadian examiner’s attention.
Disclosing prior art during examination of a Canadian patent application also places the prior art on record and ensures that the examiner has had an opportunity to consider the prior art when examining the patent application. Voluntarily disclosing prior art during examination of a Canadian patent application may minimize the use of post-grant re-examination proceedings. A re-examination proceeding of a granted patent is ex parte in nature, where (1) a requester files prior art and explains the pertinence of the prior art and (2) a re-examination board will determine whether a substantial new question affecting patentability of a claim of a patent has been raised and, if so, provide a decision on the new question affecting patentability. If the prior art was already considered by the examiner, the applicant may avoid institution of re-examination proceedings.
Overall, because much of foreign patent prosecution records are publicly accessible via the Internet, a Canadian patent examiner usually already has access to prior art and the prosecution history of corresponding applications. Unless an applicant for a Canadian patent application is submitting prior art that has not been made of record in a corresponding foreign application, or unless a prior art reference may not be easily accessible or may not be written in either the English or French language, an applicant of a Canadian patent application may be content with taking a “wait-and-see” approach before voluntarily filing prior art during patent prosecution.
Information in this article is for information only. It is not, and should not be taken as, legal advice. If you have any questions relating to the information in the above article or any intellectual property related matter, please contact our office and a Rowand LLP professional will be pleased to assist you.