In Belzberg v. Canada (Commissioner of Patent), 2009 FC 657, the Federal Court (FC) set aside the Commissioner of Patents' ("the Commissioner") decision to return a patent application for further examination and requisitions. The FC ordered the Commissioner to grant Belzberg's patent application. The FC held that once an examiner issues a rejection labelled "Final Action" the Commissioner may only refuse or grant an application. sdfsdfdsf

Belzberg filed Canadian Patent Ser. No. 2,119,921 ('921 Patent) in 1994. The eighth office action, issued in 2002, was labelled "Final Action". A Patent Appeal Board (PAB) hearing was convened in 2005, where the Board concluded that none of the examiner's allegations were substantiated. In 2007 the Commissioner issued a decision concurring with the PAB's recommendation and returned the application to the examiner for further prosecution. Two more office actions were issued, and included problems raised before the Final Action but not put in front of the PAB, despite Belzberg's insistence that the Commissioner had no jurisdiction to issue further office actions. Belzberg applied for judicial review in 2008.

The FC first noted that the Patent Rules (SOR/96-423) empowers the Commissioner to grant or refuse a patent. During examination, the examiner raises objections based on non-compliance with the Patent Act, R.S.C. 1985, c. P-4 or Patent Rules and notifies the applicant by issuing a requisition, or office action. The applicant responds by amending the application or arguing compliance. The exchange continues until the examiner accepts or rejects the application. Rejections not withdrawn by the examiner are reviewed by the Commissioner, and the applicant is given an opportunity to appear before the PAB before the Commissioner makes a decision.

The FC noted that these provisions were to be interpreted in light of other provisions, namely those allowing re-examination and revocation of a patent even after it is granted pursuant to sections 48.1 and 48.3 of the Patent Act. The FC also pointed to the Manual of Patent Office Practice (MOPOP) as a useful interpretive tool. For example, chapter 21 of MOPOP specifies that a Final Action "must be comprehensive and deal with every ground" of objection and that "there is no further opportunity for the examiner to make objections." Sections 21.07 and 21.08 of MOPOP provide that the Commissioner may return an application for further prosecution if satisfied that a rejection was not justified or provide that it may be amended voluntarily.

The FC held that the examination rules mentioned above provide that if a "good faith impass" is reached between examiner and applicant, the latter is entitled to a hearing about the outstanding issues causing the examiner to reject the application. The FC held that the reference to "outstanding defects" in section 30(3) of the Patent Rules means all defects. Requiring that the defects identified in a Final Action be "comprehensive rather than merely a selection" is not unduly onerous or contrary to the sprit and intent of the patent regime. In light of the "lengthy and uncertain" application process, the FC thought it sensible to give the word "final" its ordinary meaning. Thus, when a requisition is issued that may trigger a hearing, it is reasonable to conclude that all outstanding issues are before the PAB. As further support for this interpretation, the FC noted that the relevant rules were amended to include "outstanding." Based on the foregoing, the FC held that a Final Action is meant to dispose of a patent application and thus that the Commissioner may only grant or refuse an application following a Final Action.Because the PAB found that none of the alleged defects were outstanding, and there was no evidence that it or any examiner recommended new areas of investigation, the FC set aside the Commissioner's decision and all subsequent Office Actions and ordered that the Commissioner grant the patent.

The FC also held that Crown immunity from cost orders, pursuant to section 25 of the Patent Act, applied only to proceedings under the Patent Act, not to judicial review under the Federal Courts Act. The FC ordered the Commissioner to pay costs.