The decision in Belzberg v Commissioner of Patents said that the Commissioner of Patents must clearly grant or refuse a patent application following a Patent Appeal Board hearing.
"The decision is an admonishment of the Patent Office’s practice of returning an application to the examiner for further prosecution," said Fraser Rowand of Ridout & Maybee, who served as counsel to Belzberg in the case. "The Court has made it clear the Commissioner only has two options: grant the patent, or refuse it and let the applicant appeal to Federal Court."
The patent application at issue was examined from December 9 1996 until May 30 2002 and rejected seven times. An eighth and final rejection was issued in 2002 and appealed to the Patent Appeal Board. The Board recommended and the Commissioner of Patents agreed that the rejection be reversed, but returned to the examiner for further prosecution.
In her order, Madam Justice Simpson of the Federal Court said of the Board’s decision:
"Both the PAB's Recommendation and the Decision appear bizarre. The PAB made no
recommendations for further prosecution. This means there was no basis for returning the Patent Application to an Examiner for further prosecution. The Commissioner used the same meaningless language when he returned the Patent Application for further prosecution consistent with the PAB's Recommendation when, in fact, no such recommendation existed."
At the time of Judge Simpson’s order, 15 of the applicant’s 20 years of potential patent protection had already lapsed.
Rowand added: "If the Patent Office were permitted to keep patent applications in an endless loop of examination, appeal, and further examination the entire term of an eventual patent could be consumed. That would unjustly deny an applicant an opportunity to benefit from his or her innovation, and simply cannot be consistent with the purpose of the patent system."
