IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application number 592,357, having been rejected under
Subsection 47(2) of the Patent Rules, the Applicant asked that
the Final Action of the Examiner be reviewed. The rejection has
consequently been considered by the Patent Appeal Hoard and by
the Commissioner of Patents. The findings of the Board and the
ruling of the Commissioner are as follows:
Agent for Applicant
Sim & McBurney
Suite 701
330 University Avenue
Toronto, Ontario
M5G 1R7
This decision deals with the Applicant's request that the
Commissioner of Patents review the Examiner's Final Action on
patent application number 592.357 (Class 182-9) which was filed
on February 28. 1989 by Applicant/Inventor Ernst F. Hark for an
invention entitled "Improved Method for Water Filtration". The
Examiner in charge issued the Final Action on November 27, 1992
refusing the application under Subsection 27(2) of the Patent
Act. The Applicant submitted a written response on May 26, 1993
and requested a review by the Commissioner of Patents.
The application relates to a process and apparatus for treating
water from a municipal water supply. This involves various steps
including prefiltration, activated carbon filtration, secondary
guard filtration as well ae a double reverse osmosis step. The
Applicant's objective is to produce ultra-pure water with a
purity in the 16 megohm-cm3 and greater range.
The Applicant had also filed a patent application directed
towards the identical subject matter is the United States on
December 21, 1987, which application issued as U.B. Patent
4,808,287 on February 28, 1989. Since the date of February 28,
1989 is the same date as the Canadian filing date, the Examiner
rejected the application under Subsection 27(2) of the Patent Act
which reads as follows:
Any inventor or legal representative of an inventor who applies in Canada for a
patent for an invention for which application for palest has been made in any
other country by that investor or his legal representative before the filing of the
application in Canada is not entitled to obtain a patent for that invention unless this
application in Canada is filed, either
(a) before issue of any patent to that inventor or his legal representative for
the same invention in any other country, or
(b) if a patent has issued in any other country, within twelve months after
the filing of the first application by that inventor or his legal representative
for a patcnd for that invention in any other country.
It is the Examiner's position that the application was not filed
is Canada before the issue of the U.S. Patent referred to above
i.e. Subsection 27(2)(a) of the Patent Act is a bar to obtaining
a patent is Canada. Is taking this position the Examiner is
following the policy laid down by the Patent Office in the Manual
of Patent Office Practice.
The Board notes that the Patent Office has on several occasions
sought to resolve the question associated with filing a Canadian
application on the same day as the date of issue of a foreign
patent. In a decision of the Commissioner of Patents dated May
28, 1957 it was decided not to object to the grant o! a patent on
an application on the grounds that the application had bean filed
is Canada on the same day as the issue date of a corresponding
foreign patent. This decision did not give reasons but did
reverse previous Commissioner's decisions rendered on June 24,
1954 and June 14, 1956. As a result, this has been the practice
of the Patent Office until a change was made to the Manual of
Patent Office Practice in July 1989. The practice was changed in
view of another Commissioner's Decision rendered in 1989 relating
to a divisional application that had been filed on the day of
issue of a Canadian patent on the parent application.
The Board however believes that a decision relating to the grant
of patents on divisional applications is not necessarily
persuasive in the present case which relates to the date of issue
of a patent in a foreign country since the facts and legal
principles as they pertain to the country of issue have to be
considered.
Accordingly the question before the Board is whether a Canadian
application filed on a specific date can be considered to have
been filed before the issue of its corresponding United States
patent which bears the same date, i.e. whether or not the present
application filed on Feb. 28, 1989 can be said to have been filed
before the issue of the corresponding United States patent which
bears an issue data of Feb. 28, 1989.
The Board has examined the statutory provisions in the United
States covering the issue of a patent, is particular 35 U.S.C.
154, which refers to the contents and term of a patent but does
not provide guidance as to the date of issue. The Patent Rules
do make a reference to a date is ~ 1.315 entitled "Delivery of
patent" as follows:
The patent will be delivered or mailed on the day of its date to the attorney or
agent ...
This does not however clarify the issue to be decided.
The Board notes that a text book, written in the last century,
Robinson, The Law of Patents (Boston : Little, Brown and Company
1890) calculated the term of as U.S. patent not affected by that
of a prior foreign patent, is paragraph ~ 625 in Volume II of
Book III, at page 263 :
In calculating the term of a patent whose duration is not affected by that of a
foreign patent, the day of its date is excluded, and it will expire an tho last hour of
the same day and month, seventeen years after its issue.
The Applicant has referred the Board to a decision of the United
States Circuit Court Of Appeals, Seventh Circuit, Standard Oil
Co. v. Commissioner of Internal Revenue (1942), 129 F.(2d) 363.
This is a tax case involving a computation of the depreciation
allowance for a patent. The U.S. patent in question issued on
January 7, 1913 while the relevant federal tax act came into
force on March 1, 1913 (all calculations appear on page 373 of
the judgment). The court accepted that the patent had seven
days, as opposed to six days. to run in 1930. Further the court
found that from, and including March 1, 1913, the patent had 16
years and 313 days to run. The Applicant argues that this
judgment stands for the proposition that a U.S. patent issues at
the end of the day on which it is dated.
In support of this position the Applicant has also referred to
Chapter 201.11 of the Manual of Patent Examining Procedure issued
by the United States Patent and Trademark Office which defines
copendency as follows:
If the first application issues as a patent, it is sufficient for the second application to
be copending with it if the second application is filed on the same date....
In view of the above. the Board accepts that a U.S. patent that
bears the issue date of February 28, 1989 (a Tuesday) issued at
the and of that day, i.e. at midnight between the Tuesday and the
Wednesday. Accordingly Applicant's Canadian application filed on
February 28, 1989 was filed before the issuance of Applicant's
corresponding U.S. patent so that Subsection 27(2)(a) of the Act
is therefore not a statutory bar. The Board therefore recommends
that the rejection of the application be reversed.
Michael Howarth Murray Wilson
Member Member
Patent Appeal Board Patent Appeal Board
I concur with the findings and the recommendation of the Board
and accordingly withdraw the rejection of this application.
Peter J. Davies
Acting Commissioner of Patents
Dated at Hull, Quebec
this 16th day of August 1995