On June 6, 2008, the Federal Court of Canada released its
decision in a case involving payment of maintenance fees,
Sarnoff Corporation v. Attorney General of
Canada.1 The Court's decision
is noteworthy not only for its analysis of the payment issue
but also for its comments on the entitlement to equitable
relief from forfeiture.
At the time when Sarnoff filed its patent application, the
Gowlings law firm was acting as Sarnoff's patent agent.
Gowlings paid all maintenance fees up to the fifth anniversary
of the application. In March 2004, Sarnoff transferred
responsibility for the application to another firm, Dimock
Stratton. Dimock Stratton paid the 6th and 7th anniversary
maintenance fees on a timely basis and the Patent Office
accepted the fees without complaint. After the 7th anniversary
payment, the Patent Office notified Dimock Stratton that it had
no record of a change of agent or appointment of associate
agent respecting that firm and because maintenance fees had not
been paid by the appropriate person, the application was
abandoned. A request for reinstatement by Dimock Stratton
(along with repayment of the 7th anniversary fee and payment of
the 8th anniversary fee) was rejected. Gowlings requested
reinstatement (again submitting both the 7th and 8th
anniversary fees) and was advised that no maintenance fees had
been paid, the one-year grace period had expired and the
application was deemed abandoned.
Hughes J noted that the Canadian Patents Database, however,
had listed Dimock Stratton as the agent of record as of April
21, 2006 (i.e., shortly after the 7th anniversary). Hughes J
also took note of the fact that the Patent Office accepted the
6th anniversary payment and that the Patent Office continued to
communicate with Dimock Stratton and not Gowlings. After an
analysis of the relevant statutory provisions, Hughes J found
the decision of the Patent Office unreasonable. He stated that
the legislation regarding who can pay maintenance fees and when
a notice of appointment of associate agent is necessary are
ambiguous, and given the facts of this case, "it would be
absurd and lead to dire consequences to interpret the
[Patent] Rules as nullifying any
correspondence and payment actually accepted by the Patent
Office". The Patent Office was directed to process the
Hughes J went on to analyze a second issue, that of relief
from forfeiture. He stated that assuming that the Patent Office
had decided reasonably, the question becomes whether the
consequence of abandonment of the patent application can be the
subject of relief by way of Court order. Hughes J described
several factors that would weigh in favour of granting such a
remedy including the conduct of the Applicant, the gravity of
the breach and the disparity between the value of that which is
forfeited and the damage, if any, caused by the breach. In the
circumstances of this case, Hughes J found that Sarnoff would
be in an equitable position to obtain relief from forfeiture.
Whether equitable relief would be available to other parties in
other circumstances will have to be determined on a caseby-case
1. 2008 FC 712
About Ogilvy Renault
Ogilvy Renault LLP is a full-service law firm with close to
450 lawyers, patent and trade-mark agents practicing in the
areas of business, litigation, intellectual property, and
employment and labour. Ogilvy Renault has offices in
Montréal, Ottawa, Québec, Toronto, and London
(England), and serves some of the largest and most successful
corporations in Canada and in more than 120 countries
worldwide. Find out more at ogilvyrenault.com.
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