Date: 20050623
Docket: T-1518-04
Citation: 2005 FC
894
Ottawa, Ontario, June 23, 2005
PRESENT: MR. JUSTICE BLAIS
BETWEEN:
THINKSTREAM
INC.
Applicant
and
COMMISSIONER
OF PATENTS
Respondent
REASONS
FOR ORDER AND ORDER
[1] This is an application for judicial
review of a decision by the Commissioner of Patents (the Commissioner), dated
July 21, 2004, refusing to allow the entry into national phase of the patent
application of Thinkstream Inc. (the applicant) under the Patent Cooperation
Treaty (PCT) for delay.
RELEVANT FACTS
[2] On January 14, 2000 (the priority
date), the applicant filed in the United States a patent application for its
invention entitled “Distributed Global Accessible Information Network”
No. US 01/00915.
[3] On January 12, 2001, this U.S.
application was filed with the World Intellectual Property Organization as a
PCT application and Canada was one of the designated countries.
[4] To enter the national phase in
Canada, the applicant had to comply with the time limits provided for by
section 58 of the Patent Rules, 1996, SOR/96-423 (the Rules). The
applicant thus had an initial 30 month period following the priority date in
which to proceed to entry into national phase (on July 14, 2000), but could
avail itself of an additional 12 month period (until July 14, 2003) by paying
some penalty charges.
[5] On July 10, 2003, the applicant
filed in the patent office a “Form for Request of Entry into National Phase
under Articles 22 or 39 of the Patent Cooperation Treaty” and instructed the
Commissioner to debit $200 from its credit card to pay the regulatory fees (the
fee).
[6] The applicant paid $200 for the
fee, since it submitted its request more than 30 months after the priority
date, but before the expiration of the 42 month period, and paragraph 58(3)(b)
of the Rules provides for an additional fee of $200 (the additional fee) making
a total of $400.
[7] In early September 2003, an
official with the Commissioner contacted the applicant to notify it that it
still had to pay the $200 additional fee for the PCT request to enter into the
national phase, and this was done on September 9, 2003.
[8] However, on December 11, 2003, the
Commissioner advised the applicant that, although it had submitted the
additional fee on September 9, 2003, it had not paid it before the expiry of
the time limits provided for by the Rules and it was thus too late for the PCT
application to enter the national phase. On January 9, 2004, the applicant
renewed its instructions to the Commissioner to debit all of the regulatory
fees so that the PCT application could proceed to the national phase.
[9] On April 26, 2004, the Commissioner
again refused to have the PCT application enter the national phase. On May 21,
2004, the Commissioner, following the applicant’s renewed request made in
writing and by telephone, stated that the file would be sent to a senior
officer “for a review of your application”.
[10] On June 9, 2004, the applicant sent
its submissions to the Commissioner, claiming inter alia that section
3.1 of the Rules applied in this case. On July 21, 2004, the Commissioner
replied to the applicant’s letter, refusing to allow the PCT request to enter
into the national phase, and saying that section 3.1 of the Rules had come into
force on January 1, 2004 and therefore did not apply in the circumstances.
IMPUGNED DECISION
[11] The impugned decision is the one
made by the Commissioner on July 21, 2004, in refusing to apply section 3.1 of
the Rules to the applicant’s request for entry into the national phase. Section
3.1 provides that a payment received late may be considered to have been paid
before the expiry of the time limit in certain cases.
[12] In the decision dated July 21, 2004,
the Commissioner states that section 3.1 came into force on January 1, 2004,
and does not apply retroactively.
ISSUE
[13] Did the Commissioner err in refusing to apply section 3.1
of the Rules to the PCT application for entry into the national phase, given
the applicant’s failure to comply with the requirements of paragraph 58(3)(b)
of the Rules?
ANALYSIS
[14] Although the Commissioner’s first
notice was sent on December 11, 2003, I do not agree with the respondent’s
argument that the applicant had 30 days from that date to file its application
for judicial review. On the contrary, the Commissioner, on May 21, 2004, agreed
to submit the applicant’s request to a senior officer for review and, on June
9, 2004, the Commissioner accepted the 11 pages of submissions from the
applicant. I am therefore of the opinion that, for the purposes of applying
rule 18.1(2) of the Federal Court Rules, 1998, the letter of July 21,
2004 was clearly the subject-matter in respect of which relief is being sought
and the applicant thus filed its application within the prescribed time
periods.
[15] Since the issue is whether section
3.1 of the Rules applies in this case and in the manner suggested by the
applicant, the applicable standard of review is correctness. (See Harvard
College v. Canada (Commissioner of Patents), [2002] 4 S.C.R. 45; Apotex
Inc. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153; Canada (Director
of Investigation and Research) v. Southam Inc., [1997] 1 S.C.R. 748.)
[16] The applicant submits, that although
section 3.1 of the Rules came into force on January 1, 2004, it applies in
this case because the facts occurred after its coming into force and, in the
alternative, if the facts occurred before January 1, 2004, section 3.1 is
retroactive. The section in question reads as follows:
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3.1 (1) Subject to subsection 6(1), if, before the expiry
of a time limit for paying a fee set out in Schedule II, the Commissioner
receives a communication in accordance with which a clear but unsuccessful
attempt is made to pay the fee, the fee shall be considered to have been paid
before the expiry of the time limit if
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3.1 (1) Sous réserve du paragraphe 6(1), si,
avant l’expiration du délai fixé pour le versement d’une taxe prévue à
l’annexe II, le commissaire reçoit une communication dans laquelle une
personne fait une tentative manifeste mais infructueuse pour verser la taxe,
celle-ci est réputée avoir été reçue avant l’expiration du délai dans les cas
suivants :
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(a) the amount of
the fee that was missing is paid before the expiry of the time limit;
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a) la taxe impayée est versée avant
l’expiration du délai;
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(b) if a notice is
sent in accordance with subsection (2), the amount of the fee that was
missing, together with the late payment fee set out in item 22.1 of Schedule
II, are paid before the expiry of the two-month period after the date of the
notice; or
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b) dans le cas où un avis est envoyé
conformément au paragraphe (2), la taxe impayée, accompagnée de la surtaxe
pour paiement en souffrance prévue à l’article 22.1 de l’annexe II, est
versée dans les deux mois suivant la date de l’avis;
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(c) if a notice is
not sent, the amount of the fee that was missing, together with the late
payment fee set out in item 22.1 of Schedule II, are paid before the expiry
of the two-month period after the day on which the communication was received
by the Commissioner.
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c) dans le cas où aucun avis n’est envoyé,
la taxe impayée, accompagnée de la surtaxe pour paiement en souffrance prévue
à l’article 22.1 de l’annexe II, est versée dans les deux mois suivant la
date à laquelle le commissaire a reçu la communication.
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(2) Subject to subsection
6(1) and unless the person making the communication did not provide
information that would allow them to be contacted, if the Commissioner has
received a communication in the circumstances referred to in subsection (1),
the Commissioner shall, by notice to the person who made the communication,
request payment of the amount of the fee that was missing together, if
applicable, with the late payment fee referred to in subsection (1).
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(2) Sous réserve
du paragraphe 6(1) et à moins que l’auteur de la communication au commissaire
ne soumette pas les renseignements permettant de communiquer avec lui, si le
commissaire reçoit la communication dans les circonstances visées au
paragraphe (1), il demande, par avis, à la personne qui lui a envoyé la
communication de verser la taxe impayée, accompagnée, s’il y a lieu, de la
surtaxe pour paiement en souffrance visée au paragraphe (1).
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[17] Although the final decision was
issued on July 21, 2004, the relevant facts all occurred before January 1,
2004. The priority date was January 14, 2000, so the deadlines were July 14,
2002 (30 month period) and July 14, 2003 (42 month period). The original
payment of the fee occurred on July 10, 2003 and the Commissioner’s decision
rejecting the applicant’s PCT request was issued on December 11, 2003, that is,
prior to the coming into force of section 3.1 of the Rules.
[18] The applicant submits that this was
not the final decision, since the Commissioner sent it another letter on April
26, 2004 indicating that it was too late for the entry into the national phase
of its PCT request.
[19] But the only reason why the
Commissioner resent a letter reiterating his remarks of December 11, 2003 was
to answer the applicant’s letter of January 9, 2004, which stated:
Dear Mrs. McQuaig:
This letter is being sent to you pursuant to your
notice of December 11, 2003.
The Canadian Intellectual Property Office is hereby
authorized to charge the amount of $350.00 to the credit card of … in payment
of the following fees:
i.
$200.00 in payment of the
reinstatement fee for the filing of the application;
ii.
$100.00 in payment of the late
payment fee set out in item 22.1 of schedule II of the patent rules;
iii.
$50.00 being the second annuity
with respect to the caption application.
The Canadian Intellectual Property Office is hereby
authorized to charge any additional amount which may be due in respect to the
caption application to the credit card of ….
The applicant claims the status of a small entity.
We await the reception of the formal filing
certificate and remain,
Yours truly,
BROUILLETTE KOSKIE PRINCE
(See exhibit RB-2 of the affidavit of
Robert Brouillette.)
[20] In view of the reference to item
22.1 in Schedule II of the Rules, which did not come into force until January
1, 2004, it seems to me that the applicant was trying to draw the matter out
until at least January 1, 2004, in an effort to avail itself of the new
amendments to the Rules. I am of the opinion that, in the absence of payment of
the fee and of the additional fee, the Commissioner correctly applied the Act
and the Rules as they stood at the time when the application for entry into the
PCT national phase was filed and rejected for delay.
[21] In support of its argument that
section 3.1 of the Rules should be applied retroactively, the applicant cited
an extract from a backgrounder appended to the “Government of Canada’s
Legislative Response to Recent Federal Court Decisions”, which was published on
the CIPO web site. I reproduce this extract below:
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The proposed changes
include retroactive amendments to the Patent Act to provide a
mechanism for the retroactive correction of past fee payments in situations
where a fee was incorrectly paid at the small entity fee level instead of the
large entity fee level. This action is required to protect patent applicants
and patentees who, through no fault of their own, may lose patent protection
for their inventions. Regulatory changes will also be forthcoming to
provide greater clarity to the patent payment regime on a forward-looking
basis. The Canadian Intellectual Property Office will consult with
clients and stakeholders on the nature of these technical amendments.
[Emphasis added]
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Les changements
proposés comprennent des modifications rétroactives à la Loi sur les brevets
pour établir un mécanisme permettant de corriger, de façon rétroactive, les
taxes versées au tarif applicable à une petite entité plutôt que celui d’une
grande entité. Ces mesures sont nécessaires pour empêcher que les demandeurs
et les titulaires de brevet perdent, pour des raisons indépendantes de leur
volonté, la protection que le brevet confère à leur invention. Des
modifications aux règles seront également proposées, à des fins proactives,
pour clarifier le régime de versement des taxes relatives aux brevets.
L’Office de la propriété intellectuelle du Canada consultera les clients et
les divers intéressés sur la nature de ces modifications de forme.
[Je souligne.]
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(Tab F-7 of applicant’s
record)
[22] Since the French version of the
backgrounder mentioned the expression “à des fins proactives”, I thought I
would look at the English version by referring to the CIPO web site, the
address of which was mentioned at paragraph 36 of the applicant’s memorandum of
fact and law, to determine precisely what this expression meant.
[23] The government’s position as to the
proposed amendments is clear: the Rules will be amended proactively (on a
“forward-looking basis”, in the English version) and not retroactively.
Therefore, section 3.1 of the Rules applied as of January 1, 2004, and not for
the past.
[24] Although the comments by Mr. Justice
Martineau in Johnson & Johnson Inc. v. Boston Scientific Ltd., 2004
FC 1672, [2004] F.C.J. No. 2040, concerned an abandonment of patent, his
analysis of section 3.1 is applicable in this case:
On another note, section 3.1 does not purport to
retroactively resurrect patents already deemed abandoned by section 30 of the Patent
Act. Section 3.1 is not construed to have retroactive effect to resurrect
patents already deemed permanently abandoned under section 30 of the Patent
Act. In fact, legislation is presumed to apply to future acts and
conditions. In other words, statutes are not to be construed as having
retroactive operation unless such a construction is expressly set out in the
statute or is required as a necessary implication of the language used (Gustavson
Drilling (1964) Ltd. v. Canada (Minister of National Revenue - M.N.R.),
[1977] 1 S.C.R. 271). There must be sufficient indication that the legislation
is meant to apply not only to ongoing and future acts but also to past acts
which is not the case here (Baker Petrolite Corp. v. Canwell
Enviro-Industries Ltd., [2003] 1 F.C. 49 at para. 19).
[Emphasis added]
[25] Now, the deadline by which the
applicant had to pay the fee and additional fee was July 14, 2003. Since
the amount owing under the Rules remained unpaid at that date, under the Act
and the Rules that were applicable at that time the Commissioner had no power
to remedy this deficiency.
In any event, the authority of the Commissioner to extend
deadlines is limited by any contrary provision in the Rules. The Judge found,
and I agree, that section 157, of the Patent Rules and former
subsection 76.1(6), preclude the Commissioner from extending the deadlines for
the payment of maintenance fees. That necessarily implies that the
Commissioner lacks the authority to permit a deficient maintenance fee to be
topped up after the date upon which the fee was due. (Dutch Industries
Ltd. v. Canada (Commissioner of Patents), [2003] 4 F.C. 67 (F.C.A.), at
paragraph 26) [Emphasis added]
[26] See also Eiba v. Canada (Attorney
General), [2004] 3 F.C.R. 416, where Mr. Justice Mosley states:
It is clear that the Commissioner has no authority pursuant
to the Act and the Rules to extend the deadline for payment of maintenance
fees: Pfizer Inc. v. Canada (Commissioner of Patents) (2000), 9 C.P.R.
(4th) 13; 269 N.R. 373 (F.C.A.) and Dutch
Industries Ltd. v. Canada (Commissioner of Patents),
[2003] 4 F.C. 67; (2003), 24 C.P.R. (4th) 157; 301 N.R. 152 (C.A.);
leave to appeal to S.C.C. dismissed, [2003] 3 S.C.R. vi.
[27] Since section 3.1 of the Rules does
not apply retroactively and the Commissioner did not err in applying the Act
and the Rules in force at the time of the PCT national phase request, I am of
the opinion that this application for judicial review must be dismissed.
ORDER
THE COURT ORDERS that:
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The application for judicial review be
dismissed;
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With costs.
“Pierre
Blais”
Judge
Certified true translation
François Brunet, LLB, BCL
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