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Apr 21, 2006

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David J. French writes:

Regarding the "publication" of Canadian patent applications, these documents are "laid open" as of exactly 18 months from the priority date. This includes allowing access to the physical file at the patent office and the posting of a copy of the specification as filed on the Canadian Intellectual Property Office web site public search page:

CIPO - Canadian Patents Database
http://patents1.ic.gc.ca/srch_bool-e.html.

The posted documents are "as filed" until the patent is granted. Then the granted patent is posted.

David J. French,
Canada
www.MiltonGeller.com

David,

In this case, the prior art patent application was filed in 1982. I believe that the rules at that time regarding publication of patent applications may have been somewhat different.

You are correct Dennis. Canadian patent applications filed in 1982 were not published after 18 months. This change to Canadian patent law did not occur until the late 80s.

To quote from the Canadian Manual of Patent Office Practice:

"All patent applications, except those filed prior to October 1, 1989 and documents on file in connection therewith, shall be open to public inspection after the expiration of an eighteen-month confidentiality period (subsection 10(2) of the [Canadian] Patent Act)."

Regards,
Kevin E. Holbeche
Hofbauer Associates
www.capatents.com

If unpublished drawings from the file history are publications, are the entire contents of the file history (including the office actions) publications as well?

If so, can an office action that states that it is obvious to combine/alter certain references create -- as to later filed applications -- a teaching-suggestion-motivation to combine/alter those references once the file history is publicly available?

Further, could an office action's characterization of the reference's disclosure be relevant to how that reference is later interpreted or combined?

In view of this case, a defendant might want to search the USPTO to see how key pieces of prior art have been combined or characterized by examiners. For example, the defendant could search on the REF field in the USPTO's advance search page: http://patft1.uspto.gov/netahtml/PTO/search-adv.htm

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