In the recent case of Repligen Corporation v. Canada
(Attorney General) (2012 FC 931), the Federal Court
granted a second application for judicial review of a decision made
by the Commissioner of Patents. This decision provides greater
guidance as to the factors that should be considered when
exercising discretion to correct a clerical error under Section 8
of the Patent Act. In this case, the Federal Court
overturned the Commissioner's refusal to correct the inversion
of two digits of the Applicant's patent number, which resulted
in the loss of the Applicant's patent.
As a result of the digit inversion, the Applicant's patent
lapsed in July 2008 due to non-payment of the prescribed fees. Upon
discovery of the error, Repligen filed a request to correct the
error and reinstate the patent. While the Commissioner acknowledged
that the inversion of the patent number digits was clerical in
nature, she refused to fulfill the request on the basis that third
parties may have relied on publicly available information
indicating that the patent had lapsed. In 2010, the Applicant
successfully brought an application for judicial review of the
Commissioner's decision (2010 FC 1288). In that case, the Federal
Court found, among others, that the Commissioner had failed to
adequately consider the impact of the loss of the patent on
Repligen, or the fact that Repligen had made payments in accordance
with the due dates. Instead, the Commissioner focused on the
Applicant's delay in seeking correction and on the inverted
digits. Additionally, it was found that the Commissioner failed to
properly appreciate the remedial powers available under section 8,
and did not balance all of the relevant factors before deciding
whether to exercise these powers.
Following the 2010 decision, the Commissioner reconsidered
Repligen's request, but refused to act yet again. In addition
to the previous reasons provided, the Commissioner found that the
Applicant had not been sufficiently diligent in ensuring proper
payment. The Applicant contested this second refusal by the
Commissioner to correct the clerical error.
In this case, the Court affirmed that the Commissioner has the
discretion to determine whether to correct clerical errors, and
then focused on whether the Commissioner reasonably chose not to
exercise that discretion. The Court acknowledged that maintenance
fee provisions are generally applied in a strict manner and that,
while Repligen's role cannot be ignored, the Patent Office must
still consider all relevant factors including the impact of the
loss of the patent and the fact that payments had been made. These
issues cannot be discounted solely on the basis of a lack of
diligence. The Court was critical of the Commissioner's
decision, which suggested that the standard to be applied is one of
perfection. If that was the standard, then section 8 would
completely lack purpose.
Ultimately, the application was allowed and the issue was
remitted back to the Patent Office, albeit to a different decision
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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