Wednesday, December 17, 2008

Gold-plating patents, Canada-style

Mondaq has an article on the "gold-plating" of patents that adds a Canadian twist:

The gold-plating of patents is but one aspect of a more extensive proposal to address a certain type of litigation largely confined to the U.S., to restore some balance. There would be no need for any "plating" of Canadian patents.

Yet Canadian law has not reached the correct balance either. The absence in Canada of any meaningful presumption of patent validity is unsatisfactory. The Canadian Intellectual Property Office (CIPO) examines over 28,000 patent applications annually.

For the 2006/2007 financial year, CIPO's expenditures amounted to almost $130 million, 78 percent of which related to patents.

Canada has more than 580 certified patent agents, a large proportion of whom spend much of their time prosecuting Canadian patent applications. Prosecuting a single application takes years and often costs more than $10,000 in professional services.

If Canadian courts give no deference to the prosecution and CIPO's allowance of patent applications, why spend such sizable resources on patent prosecution? Canada may not need gold-plated patents, but some plating would be reasonable.

IPBiz notes that in a re-examination, in the US, there is no presumption of validity, and the preponderance of evidence standard applies.

The Mondaq article is by Vincent M. De Grandpré, published Dec. 2, 2008.

See also the Nov. 11 post on IPBiz titled On gold-plating patents and an article in the Nov. 2008 issue of IPT.


Mondaq also has an article which states: In a rare precedential opinion, the U.S. Patent and Trademark Offices Board of Patent Appeals and Interferences (BPAI) recently affirmed the position stated in the Manual of Patent Examination Procedure (MPEP) that the critical date, used for determining whether a reference is prior art, reaches back to the filing date of an underlying provisional application.

08 December 2008
Article by Eric M. Shelton


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