2021 Patent Appeal Board Statistics
March 22, 2022
Patent applicants with computer-implemented inventions may find some reassurance in the 2021 Canadian Patent Appeal Board (“PAB”) statistics. Despite a general sense that the PAB is hostile to these types of inventions, the statistics reveal that computer-related subject matter rejections are over-turned on appeal in over half of the cases.
In Canada, prosecution of a patent application can continue until an Examiner allows the application or has reasonable grounds to believe that the Applicant will not overcome one or more objections to the application. In the event that the Examiner has reasonable grounds to believe that the Applicant will not overcome one or more objections to the application, the Examiner may reject the application in a Final Action.
A rejected application is reviewed by the Commissioner of Patents who renders a “Commissioner’s Decision”. In practice, this function is delegated to the PAB. The PAB may ultimately recommend that the Commissioner allow the application, refuse the application, or send the application back for further prosecution. The PAB recommends sending the application back for further prosecution if the PAB believes there are changes, such as proposed alternate claims, that would put the application in condition for allowance.
2021 PAB Decisions
In 2021, the Canadian patent office issued a total of 54 PAB decisions. Of the 54 decisions, 15 applications were allowed, 23 applications were refused, and 16 applications were sent back for further prosecution.
Patentable Subject Matter
It comes as no surprise that in 2021 the most common objections reviewed by the PAB were objections relating to patentable subject matter. In total, 41 of the 54 applications reviewed by the PAB included one or more patentable subject matter objections. Of these 41 applications, 13 applications were allowed, 17 applications were refused, and 11 applications were sent back for further prosecution.
Patentable Subject Matter – Computer Technology
Of the patentable subject matter objections, the most common objections reviewed by the PAB were subject matter objections relating to computer technology. In total, 31 of the 41 subject matter objections in applications reviewed by the PAB related to computer technology. Of these 31 applications, 8 applications were allowed, 15 applications were refused, and 8 applications were sent back for prosecution.
Applications Sent Back for Further Prosecution
Of the 16 applications that were sent back for further prosecution, 15 of the applications had a proposed or alternative set of claims identified as allowable by the PAB. The other application was sent back to prosecution to correct a minor antecedent issue with one of the dependent claims.
There has been a general sense in the Canadian patent bar that the PAB is hostile to computer-implemented inventions. However, the 2021 statistics show that Applicants should not be afraid to request review by the PAB. As outlined above, 52% of applications reviewed by the PAB in connection with subject matter objections involving computer technology resulted in an allowance or were sent back for further prosecution, which typically quickly leads to allowance.
In scenarios where alternative sets of claims were provided by the Applicant, the PAB took time to review these alternative sets of claims and often identified one of the alternative sets of claims as allowable. As such, it is recommended to submit one or more alternative sets of claims when going through the PAB process as this may increase the chances of a successful appeal.