“Final” means Final

Bartley v. Canada (Commissioner of Patents) 2011 FC 873 Hughes J 

The facts in Bartley are essentially the same as those in Belzberg v Canada (Commissioner of Patents), 2009 FC 657, with only one twist, and in Bartley Hughes J affirmed and applied Simpson J’s holding in Belzberg that a “Final Action” report must be final: all defects must be raised, not just a selection [71]. If the PAB and Commissioner find no merit in the defects raised in a Final Action report, the patentee is entitled to have the patent granted without further objections being raised. In addition, Bartley settles an important point regarding the time for seeking judicial review in the circumstances.

In Belzberg a Final Action report had been issued, a PAB hearing was convened and concluded that none of the defects identified in the report were substantiated, and the Commissioner returned the application to the examiner “for further prosecution consistent with the Board's recommendation” [21], though nothing in the recommendation identified any problems with the application. The examiner then issued a new report with new requisitions [26]. Simpson J held that new requisitions could not be raised after a Final Action, and ordered the Commissioner to grant the patent.

Bartley raises essentially the same facts. The distinguishing point, in the view of the Commissioner, was that the Commissioner’s decision in Bartley specifically returned the application to the examiner “for consideration of any outstanding defects which have been held in abeyance” pending resolution of the matters raised in the Final Action. [35], [64]. In effect, while in Belzberg it appears that the PAB was of the view that all outstanding issues had been resolved, in Bartley the PAB felt that there remained outstanding issues, albeit ones that had not been raised in the Final Action. The apparent reason for the PAB’s view that there were outstanding issues was that one member of the Board had a private conversation with the examiner [72]. No hearing was held to allow the applicant to address these issues. When the application was returned to the examiner, the examiner then raised old objections once again, as well as an objection based on prior art that was never before raised [72].

Hughes J held “the Board’s inquiries and recommendations as to outstanding matters to be completely unsatisfactory and lacking in due process” [73] and that “whether the matter is considered on the basis of lack of procedural fairness or correctness having regard to the Subrule 30(6) or reasonableness having regard to the factual history, the decision of the Commissioner, inasmuch as it states that the examiner must consider ‘outstanding matters’, is wrong” [74]. As the applicant protested the subsequent report by objecting to the Commissioner and asking that a Notice of Allowance issue, Hughes J returned the matter to the Commissioner to reconsider the applicant’s request in light of his reasons. Given his reasons, it is not entirely clear why he did not simply order the Commissioner to grant the patent, as Simpson J did in Belzberg.

A significant point was raised regarding the timeliness of the application for judicial review. The Commissioner argued that the application for judicial review was really an attack on the Commissioner’s decision on the Final Action, which returned the application for prosecution of “outstanding matters.” If that was the case, it was out of time [76]. The applicant argued that it was seeking judicial review of the Commissioner’s subsequent refusal of the applicant’s request that a Notice of Allowance be issued. Hughes J held for the applicant, on the basis that “since the Commissioner did not ‘refuse’ the application, no appeal could be taken under section 41 or any other provision of the Patent Act. A judicial review, not an appeal, is the proper way to proceed” [77].