The Federal Court of Canada has set aside a decision of the Commissioner of Patents in which the Commissioner refused to correct a clerical error in the payment of a maintenance fee on a patent. In Repligen Corporation v. Canada (A.G.),1 the Court ruled that the Commissioner of Patents had failed to consider all of the relevant factors before refusing to exercise her discretion to correct a typographical error in the identification of the patent.
Background and Facts
Canadian patents are subject to the payment of annual maintenance fees which are prescribed in the Patent Rules. If a fee is not paid the patent lapses. The only flexibility is that a lower fee applies if payment is made on or before a particular anniversary, and a higher fee applies if the payment is made within one year after that anniversary. After that period of grace, the patent lapses and cannot be restored.
The typographical error in Repligen was simple. Based on an error originally made by Repligen's former Canadian patent agents, the form that accompanied the maintenance fee payment misidentified the patent number as 1,314,486, instead of 1,341,486. Accordingly, the payment was allocated to the wrong patent. As is typically done, the Patent Office sent a notice that the lower maintenance fee had not been paid on time (July 19, 2007), and advised of the deadline for payment of the higher fee (July 21, 2008) in order to avoid the lapse of the patent.
As it happened, no action was taken until 2009, well after the deadline for payment of the higher fee. At that time, Repligen's counsel argued that the situation arose as a result of a clerical error and requested that it be corrected under s. 8 of the Patent Act, which provides: "Clerical errors in any instrument of record in the Patent Office do not invalidate the instrument, but they may be corrected under the authority of the Commissioner."
The Commissioner rendered her decision in early 2010. She acknowledged that, indeed, the situation arose as a result of a clerical error, but she refused to exercise her discretion to correct the error, stating:
. the delay in addressing the errors has resulted in an extensive period of time where third parties may have relied upon publicly available documents and the information contained therein. The Office record reflected that as of July 21, 2008, the exclusive right to make, use, or sell the invention ceased in reference to Canadian patent no. 1,341,486. Therefore, effecting said correction has the potential to negatively affect the rights of others.2
The Court's Decision
Repligen then brought an application for judicial review of the Commissioner's decision. In setting aside the Commissioner's decision, the Court stated that "[t]he exercise of discretionary power must be compatible with and promote the object and purpose of a statute or a statutory provision".3 After discussing the purpose of the patent system, "to advance research and development and to encourage broader economic activity", and the purpose of annual maintenance fees, to "defray part or all of the costs of the Patent Office" and "to discourage the proliferation of deadwood patents and patent applications", the Court ruled that the Commissioner had failed to properly exercise her discretion in that she failed to take into account relevant factors. Such factors included (i) the impact on Repligen - the loss of its patent; and (ii) the fact that Repligen's payment was in fact received by the Commissioner, and in good time.
The Court also ruled that it was improper for the Commissioner to have considered the possibility that third party rights could be affected by the requested correction, when such a possibility was based on nothing more than speculation. The Court distinguished a refusal to grant a similar correction request in Bristol-Myers Squibb Co. v Canada (Commissioner of Patents)4 on the basis that the latter refusal relied on hard facts pointing to the likelihood that third parties would be affected.
While the Court did not grant the correction requested by Repligen, it did set aside the Commissioner's decision and order that the request be reconsidered taking into account the Court's reasons.
Effects of the Court's Decision
As a result of the Repligen decision, when deciding whether to exercise a discretionary power, the Commissioner of Patents will be forced to consider factors such as how the applicant is affected. She will also have to base her decision on evidence rather than speculation. Unfortunately, though the application of Repligen is not necessarily limited to corrections of clerical errors, it will only apply in situations in which the Commissioner has discretion.
Many patentees, as well as their counsel, are painfully aware of the important negative consequences that can follow seemingly minor errors or inadvertent omissions in the prosecution and maintenance of Canadian patents and patent applications, even where notice of such errors or omissions is never communicated. Where such errors and omissions are not discovered and corrected within the rigid time periods provided for in the Patent Act and the Patent Rules, patentees can be left with no rights and no way to recover them. Examples of such errors or omissions include
- paying fees incorrectly as a small entity;5
- in responding to an Office Action, failing to respond to a part seeking identification of prior art cited during prosecution of corresponding patent applications in other jurisdictions;6
- a patent agent paying a fee on a patent application without having filed a document identifying the patent agent as the agent of record on the application;7
- the applicant itself, instead of the agent of record, paying a fee on a patent application;8
- a determination, years after issuance of the patent, that a response to an Office Action (during prosecution of the application) lacked candour.9
For the most part, the Commissioner has no discretion to exercise in these situations, and so the Repligen decision does not help.
1. 2010 FC 1288.
2. Ibid., para. 16.
3. Ibid., para. 46.
4. (1998), 82 C.P.R. (3d) 192 (F.C.A.).
5. Barton No-till Disk Inc. v. Dutch Industries Ltd., 2003 FCA 121.
6. DBC Marine v. Canada (Commissioner of Patents), 2008 FCA 148; M-Systems Flash Disk v. Canada (Commissioner of Patents), 2010 FC 441.
7. Unicrop v. Canada (A.G.), 2010 FC 61.
8. Rendina v. Canada (A.G.), 2007 FC 914.
9. G.D. Searle v. Novopharm, 2007 FCA 173; Lundbeck v. Ratiopharm, 2009 FC 1102.
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