Canada: IP Monitor - Hope For The Hapless: Court Rules A Second Time For The Correction Of A Clerical Fee Payment Error That Caused A Patent To Lapse

On July 27, 2012, the Federal Court set aside for a second time a refusal by the Canadian Commissioner of Patents to correct a clerical error that caused a patent to lapse. In Repligen Corporation v. Canada (A.G.) the Court held that the Commissioner of Patents had failed to act reasonably again by not weighing all the relevant factors when deciding not to correct a clerical fee payment error. The Court was not slow to substitute its own decision for that of the Commissioner, even when that decision was clearly a discretionary one.


The applicant, Repligen Corporation (Repligen), sought a second review by the Court of a further refusal by the Commissioner to exercise discretion under section 8 of the Patent Act (the Act). The Commissioner refused to correct the payment of two anniversary maintenance fees for Repligen's patent no. 1,341,486 (the 41 Patent) where Repligen's fee agent had used a form which listed the wrong patent number 1,314,486 - a patent held by Rolls-Royce PLC, (the 14 Patent). The end result was that the 41 Patent was declared to have lapsed pursuant to section 46(2) of the Act.

Over the course of the first three anniversary payments for the 41 Patent there followed a cycle of payments and refunds where Repligen's and Rolls-Royce's respective fee agents would both attempt to pay against the 14 Patent. This resulted in Repligen's fee agent receiving a refund of its first anniversary payment and Rolls-Royce receiving a refund of two of their anniversary payments where Repligen's fee agent had paid first.

In August 2007 Repligen's patent agent was informed that the prescribed fees for the 41 Patent had not been paid and that the patent would lapse unless payment was made within 12 months of the anniversary date. The patent agent did nothing in response to this and failed to inform Repligen of the situation. The 41 Patent was declared lapsed due to non-payment in July 2008.

In April 2009, Repligen's new patent agent discovered that the 41 Patent had lapsed. The new agent requested that the error in relation to the fee documents be corrected by the Commissioner pursuant to section 8 of the Act and paid the fourth anniversary maintenance fee.

In February 2010, the Commissioner declined to correct the error. Importantly, the Commissioner acknowledged that this error was clerical in nature. The reasons for the refusal included Repligen's delay in asserting the error and the potential for damage to third parties that could result from a correction. It was suggested also that section 46(2) of the Act prevented the revival of lapsed patents for non-payment.


Standard of review of the decision

It is an established principle that questions of fact, discretion or policy involve a mixture of law and facts and as such are to be reviewed by the Court against a standard of reasonableness . This is the case here where section 8 of the Act allows for the exercise of discretionary power to correct clerical errors.
The question for the Court was whether it was reasonable, under the circumstances and given the scope of section 8 of the Act, for the Commissioner to decide not to exercise discretion here.

Repligen No. 1 - in brief

In Repligen Corporation v. Canada (A.G.) (No.1) (discussed in more detail here), a successful application was made for judicial review of the Commissioner's decision.

The Court held that the Commissioner had failed in reaching a decision to weigh up all the relevant factors in favour of making the correction. These included the impact on Repligen from the loss of its patent; its lack of awareness of the error; the purpose of maintenance fees under the Act (to avoid "deadwood" and to pay the costs of the Patent Office) and that payments had been made on time.

It was also held that the Commissioner was wrong to cite section 46(2) of the Act since this would not operate in case of a correction under section 8 of the Act which mean that the 41 Patent had never lapsed.

The Court further considered that the speculative invocation of third party rights (which could always be raised by virtue of the patent publication process), without more, would "fundamentally impair" the Commissioner's remedial powers under section 8 of the Act.

Following this judgment, the correction request was sent back to be decided by another official at the Patent Office. This again resulted in a refusal to correct the error – but with revised reasoning.

Repligen No. 2 – the present case

The Court accepted Repligen's application for a second review and considered the Commissioner's refusal and the reasoning that:

  • certain other incorrect information automatically generated in the fee documents was substantive and not merely clerical in nature
  • Repligen's lack of due diligence of its payment arrangements offset the objective of the maintenance fee provisions of the Act in favour of correction
  • a correction under section 8 that would deem a patent to be valid retrospectively would be "an extraordinary remedy"
  • there was potential for prejudice to unknown third parties since the expiry of the 41 patent expiry had been public for two years
  • there could be adverse implications for Rolls-Royce if its 14 Patent was found to have expired retrospectively.

The Court's decision

The Court found that the main issue was still whether the Commissioner had acted reasonably in deciding not to exercise discretion to correct the patent number error.

Mr Justice Lemieux's decision in Repligen No.1 was used for guidance since the parties disputed the extent to which the Commissioner had complied with its provisions.

The Court considered that the Commissioner's decision should be reached in a manner that "reflects justification, transparency and intelligibility" and should reflect "the remedial nature of section 8 of the Act in addressing clerical errors".

The Court held that Commissioner had again failed to reach a balanced decision. The actions of Repligen in the circumstances and the impact of the loss of its patent had not been afforded sufficient weight against the view that Repligen had not been diligent enough in its payment arrangements and that there was potential for damage to third parties.

The Court expressly stated that the Commissioner's decision should "reasonably reflect the interests of Repligen and Rolls Royce" where "both attempted to comply with maintenance fee provisions". It was considered important that the 14 Patent had expired without causing prejudice to Rolls Royce.

The Court considered that the Commissioner was driving towards a standard of perfection in the payment of fees by describing as "extraordinary" the use of section 8 discretion to remedy a clerical error through which a patent would not have lapsed. It was suggested that this would defeat the purpose of section 8 of the Act.

The Court directed that the application for correction again be sent to the Patent Office for another decision by a different official. It remains to be seen how the application is decided this time around.

Effects of the Court's decision

The Court's decision means that neither a lack of due diligence nor possible damage to third parties are of themselves fatal to the correction of a party's fee submission under section 8 of the Act.

Any decision as to whether or not to exercise section 8 discretion should involve a balanced assessment of the prejudice that the patentee will suffer as a result of the lapsed patent. It appears that this will offset third party prejudice that is merely speculative.

This decision has wider implications and may be revisited in future litigation where a party asserts (offensively or defensively) that it has relied on the listing of a patent as expired on the patent register where this has since been restored.


1 2012 FC 931

2 The fact that the error was clerical was not disputed. If not the interpretation of the meaning of "clerical error" under s.8 of the Act would have to be considered. The applicable standard of review here would be correctness.

3 Scannex Technologies LLC v Canada (A.G.), 2009 FC 1068
2010 FC 1288

Links to decision

Repligen No. 1

Norton Rose Group

Norton Rose Group is a leading international legal practice. We offer a full business law service to many of the world's pre-eminent financial institutions and corporations from offices in Europe, Asia, Australia, Canada, Africa, the Middle East, Latin America and Central Asia.

Knowing how our clients' businesses work and understanding what drives their industries is fundamental to us. Our lawyers share industry knowledge and sector expertise across borders, enabling us to support our clients anywhere in the world. We are strong in financial institutions; energy; infrastructure, mining and commodities; transport; technology and innovation; and pharmaceuticals and life sciences.

We have more than 2900 lawyers operating from 43 offices in Abu Dhabi, Almaty, Amsterdam, Athens, Bahrain, Bangkok, Beijing, Bogotá, Brisbane, Brussels, Calgary, Canberra, Cape Town, Caracas, Casablanca, Dubai, Durban, Frankfurt, Hamburg, Hong Kong, Johannesburg, London, Melbourne, Milan, Montréal, Moscow, Munich, Ottawa, Paris, Perth, Piraeus, Prague, Québec, Rome, Shanghai, Singapore, Sydney, Tokyo, Toronto and Warsaw; and from associate offices in Dar es Salaam, Ho Chi Minh City and Jakarta.

Norton Rose Group comprises Norton Rose LLP, Norton Rose Australia, Norton Rose Canada LLP, Norton Rose South Africa (incorporated as Deneys Reitz Inc), and their respective affiliates.

On January 1, 2012, Macleod Dixon joined Norton Rose Group adding strength and depth in Canada, Latin America and around the world. For more information please visit

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.