PAB Confirms that under s. 47(1) It Is Not Necessary that the Invention Claimed in an Application for Reissue Relate to the Same Inventive Concept as the Issued Claims

PAB Confirms that under s. 47(1) It Is Not Necessary that the Invention Claimed in an Application for Reissue Relate to the Same Inventive Concept as the Issued Claims

CD 1330,
Re. Patent No. 2,413,004 entitled "Self-Aligning Hitch"

This recommendation deals with a review by the Commissioner of Patents
of an application for reissue of Patent No. 2,413,004 entitled "Self-Aligning
Hitch." The present application for reissue was considered to be
unacceptable by the Reissue Board ("the RIB").

The position of the RIB is reversed. The application for reissue is
returned to the Patent Branch for examination of the amended specification for
compliance with the other provisions of the Act and Rules.

In the reissue petition, the Patentee argued that the patent is
defective or inoperative in that it lacks claims protecting the invention
specified in claims 21-26 of its US Patent No. 6,286,852, claims which the
Patentee submits are supported by the description and drawings of the issued
Canadian Patent.

The RIB conceded that the patent is defective in that the Patentee had
proven, by objective evidence (i.e., what they sought and obtained
protection for in the US) that they intended to protect the subject matter of
proposed claims 44-49, but failed to do so. The RIB also conceded that the
subject matter of proposed claims 44-49 was supported by the original
specification. However, the RIB maintained that the application for reissue was
not compliant with s. 47(1) and s. 36(1) of the Act because the new claims were
not directed to the "same invention" as the issued patent, for
reasons which are addressed later.

The granting of a reissued patent is discretionary, however the
requirements of s.

47(1) of the Act must be met before this discretion may be exercised.
The Board assessed the following three questions in deciding whether the
discretion to reissue should be exercised:

Question 1: Is the application for reissue
non-compliant with s. 47(1) of the
Act because the proposed reissue
claims are not directed to the "same invention" as that of the issued
patent?

The present application for reissue is compliant with the "same
invention" requirement in s. 47(1) of the Act.

The RIB considered that s. 47(1) of the Act also requires, to
meet the requirement of "same invention", that the inventive concept
of the invention sought on reissue must be the same as that of the claims
originally issued. However, a review of the relevant case law suggests that it
is not necessary that the invention sought in an application for reissue relate
to the same inventive concept as the issued claims.

Question 2: Is the application for reissue
non-compliant with s. 36(1) of the
Act?

Any assessment for compliance with s. 36(1) of the Act is more
appropriately performed by the examiner at the second phase of the examination
of the present application for reissue. In performing this assessment, the
examiner is not bound by the conclusions reached in any other jurisdiction.

Question 3: Is this a case where the
Commissioner should exercise his discretion under s. 47(1) of the
Act to
not grant the reissue because in this case to grant the reissue would prejudice
the public?

In relation to third party prejudice, there is no evidence which would
require the exercise of the Commissioner's discretion under s. 47(1) of the Act
to refuse the application for reissue.

The potential for a third party being prejudiced by a reissue is not
unique to the present situation. Nevertheless, Parliament has provided, by s.
47(1) of the Act, the provision for a Patentee to amend a patent so long
as the requirements under that provision are satisfied.

Commentary

This decision is interesting in that it appears to further diminish the
ability of CIPO examiners to rely on “inventive concept” for defining the
invention.

The PAB determined that case law (Mobil Oil Corp. et al. v. Hercules
Canada
(1994), 57 C.P.R. (3d) 488 at 499 (F.C.T.D), rev'd on other grounds
(1995), 63 C.P.R. (3d) 473 (F.C.A.)) restricts the meaning of “same invention”
in s. 47(1) of the Patent
Act
to what is
supported in the specification as originally filed, and does not support
further examination of the specification to determine the inventive concept and
assess whether the reissue claims embody that concept.