What is ‘Refusal of Patent’ and What to do About it

Acquiring protection for an invention through the filing of a patent application requires an investment of time and financial resources. The patent application process is complicated and it can take a substantial amount of time, generally 3 - 8 years from filing, for the issuance of a patent. The patent examination process is stringent and many patents never make it past this phase of the process to issuance. Those patent applications that don't make it past the examination phase may be rejected by the commissioner. The term for this rejection is "Refusal of Patent". Let us take you through the possible causes of the rejection and what you can do about the rejection.

What is ‘Refusal of Patent’?

The Canadian Patent Act, in its comprehensiveness, clearly elaborates the many facets of applying for a patent. It also clearly states that the Commissioner must be entirely satisfied with the patent application if they are to grant the application with a patent. If the Commissioner is not satisfied with the patent application, they reserve the right to reject it, and that’s called a ‘Refusal of Patent’. This rejection of patent is then addressed to the applicant or their registered agent in the form of an official letter alongside the reasoning for the rejection.

The Reasons for Refusal

There are several possible reasons for why a patent application can end up being rejected. Here are the most common grounds for the 'refusal of patent’. A competent patent lawyer or agent can provide additional information.

The Existence of a Similar Patent

The existence of an already existing patent is one reason for the Commissioner to dismiss your application. This type of rejection can sometimes be avoided by completing a thorough patent search.

The Non-Obviousness Criteria

For an application to be granted a patent, the primary requirement will always remain that the invention must not be obvious in its working or conceptualization to the Examiner.

The Uniqueness Criteria

Another equally important criterion remains that the invention must be unique and singular in its working and application.

The Utility Criteria

An invention is granted patent protection because it serves some useful purpose. If the invention is not capable of being put to industrial use, it will not be granted a patent. Generally, a mere scintilla of utility is required, therefore refusal based on a lack of utility is uncommon.

Your Response to ‘The Refusal’

Every individual or entity that has faced ‘refusal of patent’ has the option to appeal to the Federal Court the refusal by the Commissioner. The appeal must be made to the Federal Court within a period of six months from the date of being notified about the rejection of the patent application. The Federal Court then hears and determines the validity of the appeal and makes the final decision about the granting of a patent. It goes without saying that you will need adequate legal representation to present a convincing appeal.

By all means, a rejected patent application does not mean the end of the road. Kindly contact our team for a consultation. Our team can help you determine the probability of success and assist with the necessary course of action.