In Dow Chemical Company v. Canada (Attorney
General) [2007 FC 1236], the Federal Court considered the
meaning of a "clerical error" that may be rectified
under section 8 of the Patent Act (the Act). The
Dow Chemical Company (Dow) sought judicial review of a decision
of the Commissioner of Patents (the Commissioner), who had
declined to correct a patent application by adding nine pages
of missing text.
More than a year after its application was laid open for
public inspection, Dow asked the Commissioner to insert the
missing pages. The Commissioner declined because Dow had
failed to explain the error. Dow later asked the
Commissioner to reconsider and provided a letter from its
Canadian solicitors and an affidavit sworn by its United States
patent attorney. The evidence stated that the pages must
have inadvertently been deleted while the US application was
being revised for Canada.
The Commissioner was not convinced that the omission was a
"clerical error" within the meaning of the
Act, namely, an error arising "in the mechanical
process of typewriting or transcribing."
Furthermore, even if it was a clerical error, the Commissioner
declined to exercise his discretion to enter the correction due
to the time that had elapsed between the application being
opened to public inspection and the initial request for
correction, and the potential prejudice to parties who may have
relied on the application as filed.
The Federal Court found that the Commissioner did not err in
exercising his discretion. The Commissioner was entitled
to presume that third parties could be adversely affected by
the correction; he did not need evidence of any actual
prejudice. While it was not necessary to do so, the
Federal Court proceeded to consider the issue of what
constitutes a clerical error. The Court found that,
absent evidence showing how the pages could be deleted by
"a simple keyboarding or transcription slip, it is
difficult to take issue with the Commissioner's
Inadvertence is not sufficient to establish a clerical error
as contemplated by the Patent Act. The Federal
Court accepted that "in an age where documents are
produced and edited by computer, simple keyboarding or other
transcription mistakes can cause seemingly disproportionate
effects"; however, evidence may still be required to
explain the error. Here, the Commissioner did not find
sufficient evidence that the pages were "somehow
inadvertently deleted during the editing process."
While it was open to the Commissioner to come to a different
conclusion, his decision was not unreasonable.
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