CIPO has announced it is continuing and expanding its procedure to refer final rejections of patent applications to a single member of the PAB in certain circumstances if the rejection only relates to patentable subject matter (with some exceptions), s27(4) and the Patent Rules. CIPO is working to “increase efficiencies and reduce turnaround times” at the PAB. The 2019-2020 Annual Report identified 71 appeals to the PAB and 41 decisions issued.

Copy of the announcement circulated by email on December 29, 2021:

This January, the Patent Appeal Board (PAB) will expand the scope of the pilot project related to electrical patent applications. The current pilot will continue until December 31^st, 2021 while the extended pilot will be from January 1^st, 2022 to December 31^st, 2022. As mentioned in section 26.07.01 of the Manual of Patent Office Practice, a panel of three members from the PAB typically assists the Commissioner of Patents in reviewing rejected applications. However, starting January 1st, 2022, rejected patent applications from all disciplines that are referred to the PAB for review will be assigned to a single member of the PAB if, at the time of rejection, they contain only defects relating to one or more of the following:

• • section 2(*) and/or subsection 27(8) of the Patent Act ;
  • subsection 27(4) of the Patent Act ;
  • the Patent Rules.

(*) excluding defects involving utility, methods of medical treatment, diagnostic methods and higher life forms, which will continue to be reviewed by three-member panels.

All other procedures at the PAB will remain unchanged.

Interestingly, a recent PAB decision (see BGC Partners, Inc (Re), 2021 CACP 48) addresses the issue of whether a particular appeal should be heard by a single member or a panel of three members:

[23] As noted above, following the PR letter, the Applicant requested that the application be reviewed by a panel of multiple Board members, not by a single member. The Applicant stated that while they appreciated the rationale behind the pilot programme (by which a single Board member was assigned to review this application), they desired “this application to be considered by a panel because the set of issues to be contended with has now grown.”

[24] Although the Commissioner is typically assisted in their review of rejected patent applications by a panel of three Board members, this assistance does not need to be bound to such a structure. According to the recently implemented pilot project, rejected applications meeting certain criteria are reviewed by a single Board member instead of three.

[25] The present application met that criteria, so the preliminary review was performed by a single Board member and the results were communicated in the PR letter to the Applicant, inviting their response. There is no avenue to enlarge the panel to three Board members now, which would amount to abandonment of the current review process and initiation of a second review process.