• Responding to Canadian Patent Office Objections: Breadth of Claims
  • May 8, 2012 | Author: Lisa Melanson
  • Law Firm: McCarthy Tétrault LLP - Toronto Office
  • This is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed.

    The Objection

    In a standard objection, the patent examiner asserts that the claims do not comply with section 84 of the Patent Rules because they are broader in scope than the teachings of the description. Frequently, the examiner will request that the claims be amended to incorporate an “essential element” identified from the disclosure.

    The Regulatory Provision

    The Patent Rules are subordinate legislation enacted pursuant to section 12 of the Patent Act, which authorizes the Governor in Council to make regulations under the statute. Section 84 of the Patent Rules states:

    "84. The claims shall be clear and concise and shall be fully supported by the description independently of any document referred to in the description."

    It is important to recognize that this provision is an administrative drafting rule, not a rule of substantive law. The statutory requirement relating to the content of claims is actually established in subs. 27(4) of the Patent Act:

    "27 (4) The specification must end with a claim or claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed."

    The claims requirement in subs. 27(4) closely resembles the claims requirement for US applications in 35 U.S.C. §112, 2nd para.

    Section 84 cannot overrule the provisions of the Patent Act; otherwise, it is ultra vires the statute.

    Addressing the Objection

    Here are some reasons why you should consider arguing in traverse of a Rule 84 objection to the claims on the basis that they fail to include an “essential element” found in the disclosure:

    • It is basic Canadian patent law that the claims and the disclosure perform two separate and distinct functions.
      • As noted above, the requirement for the content of claims is found in sub. 27(4) of the Patent Act.
      • In contrast, the requirement for a description of the claimed invention is found in subs. 27(3) of the Patent Act.
    • The Rule 84 objection is backwards: it suggests that the disclosure must be reviewed to determine if the claims have properly identified the claimed invention.
      • As provided in subs. 27(4) of the Patent Act, patent claims are the vehicle by which the patent applicant provides notice to the public of the subject matter of the invention for which protection is sought.
      • While the subject matter of the claims must be included in, and supported by, the description (otherwise the public is deceived in its bargain), the exclusive right sought by a patent applicant is never defined by the disclosure. The exclusive right is defined by the claims, and only the claims.
    • Rule 84 does not provide the Commissioner with the authority to require the inclusion of elements in a claim.
      • Rule 84 requires that claims be (a) clear, (b) concise, and (c) fully supported by the description.
      • Insisting on the inclusion of additional substantive elements cannot be made on the basis of lack of clarity or concision.
      • At most, Rule 84 permits an examiner to identify a claim element not fully supported by the description, not vice versa.
      • Claims are not drafted by the Commissioner. They are drafted by the patent applicant, in words of his or her own choosing.
    • The “essential element” language used in the objection appears to be borrowed from the Canadian law of infringement.
      • Although there is no doctrine of equivalents in Canada, an infringement analysis under Canadian law permits a determination of the elements of a claimed invention that are essential or not essential.
      • The Rule 84 objection confusingly imports this “essential element” notion into the context of assessing descriptive support for a claimed invention.
      • According to the Supreme Court of Canada, an essential element may be identified in a patent claim once drafted. However, it is incorrect to suggest that an element not already in a patent claim is essential and must be recited.
    • Responding to the objection by amendment rather than argument results in narrower claims and a loss of patent scope.
      • Given the lack of continuation, continued-examination, or terminal-disclaimer practice in Canada, there is little opportunity to reclaim this claim scope in a subsequent application.