Canada: Federal Court Upholds Commissioner's Refusal To Correct Patent Priority Date As Untimely

Last Updated: March 6 2017
Article by Scott Beeser

In April 3rd, 2013, Bayer Cropscience filed a US patent application. The USPTO refused to award this application an April 3, 2013 filing date because the application did not include figures, a decision that Bayer Cropscience did not initially contest. In March, 2013, Bayer Cropscience later filed a PCT application (published here) claiming priority the earlier US application but also sought to resurrect the earlier April 3, 2013 filing date of the US priority application. WIPO, noticing a discrepancy in the filing dates of the US application, refused the patentees request to accord the PCT application an earlier filing date.

Bayer then requested that the USPTO correct the filing date of the US application, which the USPTO did on April 14, 2015, conceding that it should never have delayed the filing date to April 19, 2013, the date Bayer Cropscience provided figures for the US application. Having successfully obtained an earlier filing date with the USPTO, Bayer again requested that WIPO correct the priority fling date of their PCT application but this second request was also denied.

When the PCT application entered Canadian phase prosecution in August 2015, Bayer Cropscience requested that the Canadian Commissioner of Patents accord the Canadian application the April 3, 2013 priority date recognized by the USPTO. The Commissioner of Patents refused Bayer Cropscience's request, noting that it was out of time.

Bayer Cropscience then sought judicial review this decision, arguing that the Commissioner had misapplied the timing requirements of claims for priority.

Rule 88

Rule 88 requires that a request for a priority must be made within 16 months of the filing date of the previously regularly filed application. Here, since the US priority application was filed on April 19, 2013, and since the USPTO had not yet corrected the filing date, Bayer was required to make a claim for priority no later than the August 19, 2014, that is, prior to the PCT application entering national phase prosecution in Canada.

Justice O'Reilly rejected the patentee's argument that it had, in fact, made a timely request for an April 3, 2013 priority date when it filed the PCT application in March 2013, holding:

[14] I cannot agree. On March 15, 2013, Bayer indeed requested a priority date of April 3, 2012, but it had no basis for that request. Indeed, just two months later, Bayer conceded that the correct date was April 19, 2012. Therefore, even accepting that Bayer's request for an alternate priority date was made on March 15, 2013, there was no basis for it at that time. It was not until April 2015 that the filing date for the '691 US Priority Application was corrected to April 3, 2012. The filing date for the '888 PCT Application was never successfully amended.

[15] Further, the Commissioner correctly concluded that s 88(1)(b) of the Patent Rules requires that a request for a priority date be made within 16 months of the filing date of the application for which priority is sought. That provision states that an applicant can make a request by providing the required information (filing date, county of filing, and application number) within the 16-month period following the filing date of "that application", that is, the prior application to which priority is being claimed. Here, that means Bayer had to make its request by August 19, 2013. Clearly, its August 2015 request was out of time.

 A copy of Justice O'Reilly's Reasons may be found here.

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