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 conclusion."
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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