iPatents

The Belzberg decision - FCA critical of endless patent examination

On June 23, 2009, Justice Simpson granted judicial review and ordered that the Commissioner of Patents make a final decision on Mr. Belzberg’s Canadian Patent Application No. 2,119,921 entitled “Computerized Stock Exchange Trading System”. Belzberg’s patent was filed in 1994 and has attracted a lot of attention (and a number of protests, as well). This decision rejected the Patent Office’s practice of sending a patent application for more examination, after the Patent Appeal Board decides a “Final Action” rejection.

The Commissioner of Patents and the Attorney General of Canada (collectively, the “Crown”) moved for a stay of the order pending an appeal.

Justice Sharlow of the Federal Court of Appeal, in her decision released this week, was quite critical of the Crown’s motion. She was particularly incensed that the Crown disobeyed a Court order requiring the Crown to file an affidavit. Notwithstanding that the Crown wrote a letter advising the Court that it would be relying on the record below, she wrote:

“It might be helpful to know, for example:

a)      whether it is common and accepted practice for the Commissioner to make decisions like the one challenged in this case, or whether the facts of this case are unique;

b)      whether it is common and accepted practice for a patent application to be returned for examination after a Board hearing that appears to favour the applicant on the merits;

c)      whether a patent examination period of 13 to 15 years is considered normal; and

d)      whether it is possible to determine how many other patent applicants may be in a position to raise one or more of the issues determined by Justice Simpson in Mr. Belzberg’s favour, and if so, how many other potential cases there are.”

The Court of Appeal denied the Crown’s motion for failing to submit an affidavit. For now, the appeal is pending, but it may be moot once the Commissioner does as  Justice Simpson ordered, and as the Federal Court of Appeal effectively affirmed.

The Belzberg case represents a clash between the Courts and the Canadian Patent Office. In a twist, the Office is consulting on new rules respecting “post-final action” which are in direct response to the Belzberg jurisprudence.