Paper C

Question 1

(2020) An applicant has filed a Canadian patent application on April 8, 2015, with a valid US priority date of October 22, 2014. State whether the following pieces of prior art would, or would not, be citable with regards to (i) anticipation, and (ii) obviousness. If citable, indicate the relevant subsections of the Patent Act.

a) A Canadian application filed by another applicant on May 13, 2015, with a Japanese priority date of August 20, 2014.

Answer 1

i) Citable (Patent Act 28.2(1)(d))
ii) Not citable.

Question 2

(2020) An applicant has filed a Canadian patent application on April 8, 2015, with a valid US priority date of October 22, 2014. State whether the following pieces of prior art would, or would not, be citable with regards to (i) anticipation, and (ii) obviousness. If citable, indicate the relevant subsections of the Patent Act.
b) A disclosure by the same inventors of the patent application at a conference on April 8, 2014.

Answer 2

i) not citable.
ii) not citable.

Question 3

(2020) True or False

If an application is removed from the Patent Prosecution Highway (PPH) during prosecution (i.e. after at least a first office action), an applicant can reapply to have the application re-enter the PPH.

Answer 3

False (see CIPO page entitled “Frequently Asked Questions about the Patent Prosecution Highway”).

Question 4

(2020) True or False

Once a patent application is found allowable by an examiner, the prescribed time period to pay the final fee is six (6) months from the date of the notice of allowance.

Answer 4

False (Patent Rules, 86(1)) (“No later than four months after the date of the notice.”)

Question 5

(2020) True or False

A decision of the re-examination board can be appealed to the Patent Appeal Board.

Answer 5

False
MOPOP 30.01.06 (e.g. Federal Court).

Question 6

(2020) True or False

Photographs submitted as part of a patent application may be in colour.

Answer 6

True

Patent Rules s 59(3))

Question 7

(2020) True or False

An abstract is not a requirement for obtaining a filing date.

Answer 7

True
Patent Rules, section 71:
The documents and information prescribed for the purposes of subsection 28(1) of the Act are:
a) An explicit or implicit indication that the granting of a Canadian patent is being sought;
b) Information allowing the identity of the applicant to be established;
c) Information allowing the Commissioner to contact thte applicant; and
d) A document, in any language, that on its face appears to be a description.

Question 8

(2020) True or False
A claim set comprising (i) claims to a new product, (ii) claims to a process for making that product, and (iii) a claim to a use of that product generally lacks unity and is therefore not permissible.

Answer 8

False (MOPOP 21.08.01)

Question 9

(2020) True or False
In the event an inventor refuses to apply for a patent, the other inventors may still apply for the patent.

Answer 9

True (MOPOP 6.02)

Question 10

(2020) A PPH request for a Canadian application can be made on the basis of a US national application claiming priority to a US provisional patent application if the Canadian application claims priority to the same provisional patent application and if the US national application is determined to be allowable by the USPTO.

Answer 10

True (Reference: FAQ about the Patent Prosecution Highway on CIPO website, under “United States (Global PPH program)”.

Question 11

(2020) What is the PCT deadline for filing a Chapter II demand?

Answer 11

3 months from the transmittal date of the ISR and WO, or 22 months from the priority date, whichever is later (PCT regulations, Rule 54bis)

Question 12

(2020) What is the main difference between Article 19 and Article 34 amendments filed under the PCT?

Answer 12

Under Article 19, only claims can be amended while under Article 34, claims, description and drawings can be amended. (PCT Articles 19 and 34).

Question 13

(2020) With respect to a document cited in an international search report (ISR), what does the code “E” represents?

Answer 13

Earlier application or patent but published on or after the international filing date (PCT/ISA/210 form).

Question 14

(2020) What is the requirement for a sound prediction?

Answer 14

1- Factual basis
2- Sound line of reasoning
3- Proper disclosure
(MOPOP 19.01.03)

Question 15

(2020) What is a “reach-through” claim?

Answer 15

A “reach-through” claim seeks to encompass subject-matter extending beyond the described invention in cases where the matter has not yet been identified by the inventor but may be discovered through future use of the invention (MOPOP 23.09)

Question 16

(2020) Name two mechanisms by which a notice of allowance can be withdrawn.

Answer 16

1) Withdrawal upon request by the applicant;
2) Withdrawal by the Commissioner.

Question 17

(2020) Indicate if the following are patentable:
a) Mushrooms;
b) Multipotent stem cells ;
c) Miscrocopic algae; and
d) Seeds.

Answer 17

a) no
b) yes
c) yes
d) no

Question 18

(2020) When considering unity of invention, what is the difference between a priori evaluation and a posteriori evaluation?

Answer 18

A priori: assessed without regard to the state of the art
A posteriori: requires the state of the art to be considered. (MOPOP 21.06)

Question 19

(2020) What is a synergistic combination?

Answer 19

A combination in which the combined use of two or more compounds or products generates result that is greater than the sum of its parts and provides an unexpected advantage (MOPOP 23.08).

Question 20

(2020) Under what circumstances would an amendment after allowance be acceptable?

Answer 20

only to correct for an obvious error (MOPOP 25.01.01)

Question 21

(2020) What is a summary of reasons?

Answer 21

A document written by an examiner in preparation for the Commissioner’s review of a rejected application in which the examiner briefly sets out why the application does not comply with the Patent Act and Patent Rules (MOPOP 26.06).

Question 22

(2020) How long does an applicant have to respond to a lack of unity defect identified in Form ISA/206 during the International stage?

Answer 22

One month from the date on the 206 form (PCT Regulations, Rule 40)

Question 23

(2020) An examiner’s requisition dated November 12, 2019 required a response within four months; the time limit for a response is therefore March 12, 2020. A response was not provided by March 12, 2020 and therefore the application was deemed abandoned. On what date does the reinstatement period end?

Answer 23

March 12, 2021 (MOPOP 9.03.02)

Question 24

(2020) Briefly define “restoration fo the right of priority”.

Answer 24

A mechanism whereby the time limit for filing an application accompanied by a request for priority is extended beyond the normal twelve-month period after the filing of a priority document. (MOPOP 7.06).

Question 25

(2019) A request for advanced examination can only be granted by the office if the application in question is open to public inspection and a request for examination has been made. In the case of a third party requesting advanced examination of an application before the expiry of the confidentiality period, under what circumstances would the request still be held for consideration?

Answer 25

A request to advance examination made by a third party will only be held for consideration if the application is scheduled to be opened to public inspection within three months of the request. (MOPOP 13.03.01).

Question 26

(2019) Following the transmittal of the ISR and WO-ISA, the applicant may submit claim amendments under Article 19 of the PCT. What is the time limit to submit an Article 19 amendment to the International Bureau?

Answer 26

the later of 2 months from the transmittal of the ISR or WO-ISA; or 16 months from the priority date. (PCT Rules 46.1).

Question 27

(2019) What is the name of the treaty under which WIPO administers the deposit of biological material?

Answer 27

Budapest Treaty (MOPOP 17.10.01)

Question 28

(2019) In a claim, a chemical compound can be defined in three different ways. One way is by structure. Name the two other ways a chemical compound may be defined in a claim.

Answer 28

1) In terms of the process by which it is made;
2) In terms of its physical or chemical properties;
3) Also accepted: by name. (MOPOP 11.08).

Question 29

(2019) True or False
In a claim directed to a kit, the kit must be explicitly defined in the claim as containing at least two components in order to comply with subsection 27(4) of the Patent Act.

Answer 29

False (MOPOP 23.03.03a)
In contrast, no defect would be identified in cases where either the description or claim unambiguously defines the kit as containing at least two components or where the examiner construes the kit as containing at least two components.

Question 30

(2019) True or False
A proviso may be introduced in a claim to establish novelty, or inventive step, over the prior art.

Answer 30

True (MOPOP 18.08)
“One method for excluding known subject-matter is by a proviso; a statement that provides that the claim does not include some specified matter. The term proviso is used herein to refer to any such exclusionary limitation, regardless of the precise language used to express it.”
(e.g. A compound having for use in treating disease Y, provided said compound is not compound X. ) – IF X comprises A.

Question 31

(2019) The time limit for filing a request for re-examination of a patent is four (4) years from its date of grant.

Answer 31

False (MOPOP 30.01)

The re-examination process is set out in sections 48.1 to 48.5 of the Patent Act. Any person, including the patentee, may request re-examination of any claim or claims of a patent issued after October 1, 1989, at any time during the life of the patent, based on prior art. This applies to patent applications filed before October 1, 1989 which issued thereafter.

Question 32

(2021) For the following Canadian patent application, state whether the prior art document would, or would not, be citable with regards to anticipation. If citable, indicate the relevant subsection of the Patent Act:

A patent application filed by applicant Y on September 17, 2014, having valid priority dates of September 13, 2013 and April 17, 2014, and published on March 13, 2015.

Prior art: A patent application filed in the United States by the same applicant Y on March 8, 2013, having a priority date of March 16, 2012 and published on September 16, 2013.

Answer 32

Not citable

Question 33

(2021) For the following Canadian patent application, state whether the prior art document would, or would not, be citable with regards to anticipation. If citable, indicate the relevant subsection of the Patent Act:

A patent application filed by applicant X, published on August 2, 2018, and having a filing date of January 8, 2018 and a valid priority date of January 24, 2017.

Prior art: A non-patent document published by the same applicant X on January 15, 2017.

Answer 33

Not citable

Question 34

(2021) For the following Canadian patent application, state whether the prior art document would, or would not, be citable with regards to anticipation. If citable, indicate the relevant subsection of the Patent Act:

A patent application filed on May 18, 2017 and having a valid priority date of May 25, 2016 and a publication date of November 30, 2017.

Prior art: A Canadian patent application filed by a different applicant on May 22, 2017 with a priority date of May 24, 2016, and published on November 24, 2017.

Answer 34

Citable for anticipation under paragraph 28.2(1)(d) of the Patent Act.

Question 35

(2021) To what extent can an application be amended after a notice of allowance has been sent by CIPO?

Answer 35

Amendments after allowance are not permitted as per subsection 100(1) of the Patent Rules, except to correct an obvious error under subsection 100(2) of the Patent Rules. (MOPOP 25.01.01)

Question 36

(2021) A document cited in an International Search Report (ISR) includes all the elements defined in the claims of the application under examination. The cited document has been published prior to the international filing date but later than the priority date claimed. What code(s) (A, E, L, O, P, T, X, Y) will the International Searching Authority (ISA) use to identify the citation as?

Answer 36

X, P

Question 36

(2021) A document cited in an International Search Report (ISR) includes all the elements defined in the claims of the application under examination. The cited document has been published prior to the international filing date but later than the priority date claimed. What code(s) (A, E, L, O, P, T, X, Y) will the International Searching Authority (ISA) use to identify the citation as?

Answer 36

X, P

Question 37

(2021) If an application examined under the Patent Prosecution Highway (PPH) is abandoned in accordance with subsection 73(1) of the Patent Act, will it receive accelerated examination under the PPH once the application is reinstated?

Answer 37

Yes. If a PPH application has been abandoned in accordance with subsection 73(1) of the Patent Act, the application will still be advanced for examination out of routine order, once it is reinstated.(Frequently Asked Questions about the Patent Prosecution Highway, https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr01295.html)

Question 38

(2021) What is the time limit to request examination for divisional applications?

Answer 38

The later of:
i. the four-year period following the filing date of the application; or
ii. the three-month period after the presentation date of the divisional application.
(MOPOP 11.01.01)

Question 38

(2021) What is the time limit to request examination for divisional applications?

Answer 38

The later of:
i. the four-year period following the filing date of the application; or
ii. the three-month period after the presentation date of the divisional application.
(MOPOP 11.01.01)

Question 39

(2021) Describe the Office practice in the event that a non-compliant abstract is all that prevents allowance of an application.

Answer 39

The examiner writes a new abstract.

Question 40

(2021) List the three (3) requirements to request extension of time to respond to an examiner’s requisition.

Answer 40

i. A request from the default correspondent must be submitted before the expiry of the time limit (i.e. the due date as it may fall on the first non-designated or non-prescribed date after the original time limit, if applicable);
ii. payment of the prescribed fee; and
iii. a justification, rationale, or description of circumstances that will satisfy the Commissioner that the extension should be granted.
MOPOP 2.03.03e

Question 41

(2021) List the three (3) requirements to request extension of time to respond to an examiner’s requisition.

Answer 41

i. A request from the default correspondent must be submitted before the expiry of the time limit (i.e. the due date as it may fall on the first non-designated or non-prescribed date after the original time limit, if applicable);
ii. payment of the prescribed fee; and
iii. a justification, rationale, or description of circumstances that will satisfy the Commissioner that the extension should be granted.
MOPOP 2.03.03e

Question 42

(2021) What is the time limit to correct an obvious error in the specification or drawings of a patent?

Answer 42

12 months from the issue date. (MOPOP 28.05)

Question 43

(2021) Describe a situation where new subject-matter may be added to the specification and drawings of a patent application.

Answer 43

Matter pertaining to prior art with respect to the application may be added to the specification and the drawings; however, the applicant must acknowledge in the specification that any such matter is prior art. (MOPOP 20.01.01)

Question 44

(2021) State whether or not the following claim is acceptable (Y/N). If not acceptable, briefly state the reason.

The method of claim 1 or the use of claim 10 wherein the adhesive composition further comprises a thickener.

Answer 44

N; each claim must be directed to a single category of claims.

Question 45

(2021) State whether or not the following claim is acceptable (Y/N). If not acceptable, briefly state the reason.

A process for preparing a hard surface cleaning composition from the composition defined in claim 1 and an additional anionic surfactant.

Answer 45

N; a process must include explicit steps.

Question 46

(2021) State whether or not the following claim is acceptable (Y/N). If not acceptable, briefly state the reason.

A transaction device comprising: transmitting, by a terminal device, to a transaction server, a remittance request signal for remitting cryptocurrency kept in an electronic wallet.

Answer 46

N; the device is defined in terms of method steps.

Question 47

(2021) State whether or not the following claim is acceptable (Y/N). If not acceptable, briefly state the reason.

A computer program downloadable from a communications network characterized in that the computer program comprises program code instructions to execute the method of claim 1.

Answer 47

N; a computer program is claimed, and there is no indication it is stored on a physical computer readable medium.

Question 48

(2021) State whether or not the following claim is acceptable (Y/N). If not acceptable, briefly state the reason.

Use of compound X for the prevention or treatment of tooth decay. (note: assume that compound X is properly defined)

Answer 48

Yes

Question 49

(2021) True or False:

A document is submitted electronically to the Patent Office on a day on which the Office is closed to the public. The document is deemed received on the day the Office is next open to the public.

Answer 49

False (for electronic submission, it is the day it is actually received; MOPOP 2.03.01c)

Question 50

(2021) True or False:

An abstract may contain a mathematical formula.

Answer 50

True (MOPOP 13.01)

Question 51

(2021) True or False:

A PPH request submitted to CIPO can be based on two corresponding U.S. patents.

Answer 51

True (Frequently Asked Questions about the Patent Prosecution Highway,
http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr01295.html)

Question 52

(2021) True or False:

Payment of the application fee is a requirement to secure a filing date for a regular patent application submitted to CIPO.

Answer 52

False (MOPOP 3.02)

Question 53

(2021) True or False:

A Final Action will be issued in a situation where an examiner considers that the claims lack unity of invention and the applicant declines to limit their claims to a single invention (after at least two reports).

Answer 53

False (MOPOP 21.07.06)

Question 54

(2021) True or False:

Under Rule 91 of the PCT (Rectification of Obvious Mistakes), a mistake in the abstract can be rectified by the applicant.

Answer 54

False.

Question 55

(2021) True or False:

A claim to a kit must include instructions defining the use.

Answer 55

False (MOPOP 23.03.03b)