Date: 20071126
Docket: T-2179-05
Citation: 2007 FC 1236
Ottawa, Ontario, November 26, 2007
PRESENT: The Honourable Mr. Justice Barnes
BETWEEN:
THE
DOW CHEMICAL COMPANY
Applicant(s)
and
ATTORNEY GENERAL OF CANADA and
THE COMMISSIONER OF PATENTS
Respondent(s)
REASONS FOR JUDGMENT AND JUDGMENT
[1]
This
is an application for judicial review brought by The Dow Chemical Company (Dow)
from a decision by the Commissioner of Patents (Commissioner) made under section
8 of the Patent Act (Act), R.S.C 1985, c. P-4. Dow's Notice of
Application seeks an Order directing the Commissioner to correct Canadian
Patent Application No. 2,381, 559 ('559) by adding nine missing pages of text.
Dow asserts that these pages were inadvertently omitted from the '559
application through a clerical error made by its United States patent
attorney. It further says that the '559 application was amenable to correction
and should have been corrected by the Commissioner pursuant to his statutory discretion.
Dow contends that the Commissioner's decision to refuse its request for a
correction was exercised on the basis of an error of law as to what constitutes
a "clerical error" for the purposes of the exercise of the discretion
conferred by section 8 of the Act. Dow also asserts that the Commissioner's
discretion was made on the basis of speculation and was contrary to the
evidence before him on the issue of third-party prejudice.
Background
[2]
It
is undisputed that Dow's '559 application was filed on September
1, 2000 and laid open for public inspection on March 15, 2001. It was not
until April 17, 2002 that Dow first asked the Commissioner to insert the
missing pages into the '559 application. That request offered no
explanation for the mistake beyond the following bare assertion:
Due to an inadvertent clerical error,
several pages were omitted from the PCT application text. Wording similar to
that omitted in error can be found in the provisional applications cited as
priority documents for both corresponding PCT and U.S. applications. The counterpart U.S. application, filed the same day as the
PCT application, contains the full text.
[3]
Not
surprisingly, Dow's request for a section 8 correction was declined by the
Commissioner in a letter dated July 22, 2003. One of the reasons given by the
Commissioner for refusing relief was that Dow had failed to provide an
explanation for the alleged clerical error.
[4]
It
was not until May 9, 2005 that Dow asked the Commissioner to reconsider his
decision. On this occasion, Dow's request was supported by a 5-page letter
from its Canadian solicitors and an accompanying affidavit sworn by Dow’s United
States
patent attorney, Dan R. Howard.
[5]
On
November 9, 2005, the Commissioner responded to Dow's request for
reconsideration and again the requested relief was declined. The Commissioner's letter gave
the following reasons for this decision:
This is in reference to your letter dated
May 9, 2005, in which you submitted a request for reconsideration of the Patent
Office decision to not enter the correction requested by the applicant under
Section 8 of the Patent Act, in a letter dated April 17, 2002.
Section 8 of the Patent Act states
that clerical errors in any instrument of record in the Patent Office may be
corrected under the authority of the Commissioner. It cannot be accepted that
this is a clerical error in an instrument of record in the Patent Office.
Reference is made to the Bayer v. Commissioner of Patents (53 C.P.R.
(2d) 70) decision.
“I accept that a clerical error is an
error that arises in the mechanical process of typewriting or transcribing and
that its characteristic does not depend at all on its relative obviousness or
the relative gravity or triviality of its consequences.”
The error that occurred in respect of the
subject application was the inadvertent deletion of a considerable part of the
description. After a review of Mr. Howard’s affidavit, it is still unclear how
a simple amendment of the text for minor wording changes could have lead to the
absence of 9 pages in the application. From the explanation of the circumstances
as presented in the affidavit, it is impossible to clearly conclude that the
error arose in the mechanical process of typewriting or transcribing and,
therefore, the error is not a clerical error within the meaning of section 8 of
the Patent Act.
Even if it was determined that the error
in this case is a clerical error, the Commissioner has the discretion, under
section 8 of the Patent Act, to decide whether or not to correct
clerical errors (Bristol-Myers Squibb Co. v. Commissioner of Patent [1998]
82 C.P.R. (3d) 192 at 197). In the present case, the Commissioner does not
consider that it is an appropriate exercise of his discretion to enter the
requested correction.
The applicant’s request cannot be
accepted for the following reason:
The request under Section 8 of the Patent
Act was made on April 17, 2002. This is more than a year after the application
was opened to public inspection (March 15, 2001). The accuracy and reliability
of the information of the document as opened to public inspection is an
essential part of the procedure. Following the opening of the patent
application to public inspection, third parties may have relied on the
information appearing in the application as available and could be prejudiced
by the addition of new subject matter.
For the reasons above, the requested
correction is refused. The fee for a request of correction of a clerical error
has already been levied for the consideration of matter by the Patent Office
and is non refundable under Section 4 of the Patent Rules.
[6]
This
application for judicial review is brought from the above-noted decision.
The Evidence Before the
Commissioner
[7]
The
evidence before the Commissioner in support of Dow's reconsideration request
was in the form of an affidavit deposed by Mr. Howard. That affidavit stated
that Mr. Howard had prepared a draft of the '559
application in conjunction with a draft of the corresponding United
States
patent application. He stated that the electronic versions of these two draft
documents would have been substantially identical and that any differences
would have been limited to matters of form and format necessary to conform with
the respective requirements of the United States Patent and Trademark Office
and the World Intellectual Property Organization. Somewhere in the process of
either initially drafting these applications or in their revision, nine pages
of text contained within the specification of the United States application
was omitted from the '559 application.
[8]
Mr.
Howard's affidavit
went on to note that the missing text was present in the United States
application but "inexplicably" left out of the '559 application.
Although he could not precisely identify the source of the error, his affidavit
offered the following possibilities:
9. I do not know whether I
inadvertently deleted the omitted text when editing this PCT application to
delete wording subject to a objection outside the US, or whether Carolina Garcia
inadvertently deleted the omitted text when reformatting the PCT final
application. In either case, the error clearly occurred when Carolina Garcia
or I were carrying out the mechanical process of electronically editing this
PCT application, because the omitted text is not missing from the corresponding
US application.
10. Based on the foregoing, I do
believe that the omitted text was inadvertently and not deliberately deleted
from this PCT application (and accordingly from this Canadian application) as a
result of an error which occurred during the mechanical process of transcribing
this PCT application, and accordingly is an error of a clerical nature.
The Decision Under
Review
[9]
The
Commissioner's decision to
refuse relief to Dow was based on the following two grounds:
(a)
Dow had failed to establish that its error met the definition of
"clerical error" as required by section 8 of the Act; and
(b) Even
if Dow’s mistake was a clerical error, the request for a correction was made
too late and third parties may have relied to their prejudice on the
application as originally filed.
Issue
[10]
(a) Does
the Commissioner’s decision contain a reviewable error either with respect to
the issue of clerical error or in the exercise of the discretion to grant section
8 relief to Dow?
Analysis
[11]
In
Procter & Gamble Co. v. Canada (Commissioner of Patents), 2006 FC
976, 298 F.T.R. 139, I applied the standard of review of correctness to the
issue of whether the Commissioner had a legal duty under section 43 of the Act
to correct an admitted error concerning the date of issuance of the subject
patent. As counsel for the Commissioner points out here, the decision in Procter
& Gamble, above, did not strictly involve a consideration of the
Commissioner's discretion pursuant to section 8 because the Commissioner in
that case had declined to exercise that authority and could identify no other
legal basis for making a correction to his records. The fact that a dating
error had been made in the records of the Patent Office was not in dispute.
The issue presented by that case was thus described in paragraph 16 of the
decision:
The Commissioner's decision turned on a point of legal
interpretation going to the root of his statutory authority. He did not
exercise his statutory discretion or apply the facts to the law but determined,
instead, that he had no authority to grant the relief requested of him.
[12]
There
are, of course, cases where the issue presented on judicial review is nominally
one of mixed fact and law but where the legal issue can be isolated from the
facts surrounding it. Where a legal issue can be segregated in this way from
the evidence and where the decision-maker has incorrectly identified the legal
principle or standard required to be applied to the relevant evidence, the
standard of review will usually be correctness: see Canwell Enviro
Industries Ltd. v. Baker Petrolite Corporation, 2002 FCA 158, 288 N.R. 201
at para. 51. However, in cases where fact and law are truly mixed, the
deference owed to the decision-maker will usually be assessed at least against
the standard of reasonableness. Much, of course, depends on the significance
of the evidence to the issue under review. The more factual or evidence-laden
the exercise, arguably the greater the deference that is owed by a reviewing
court.
[13]
In
Pason Systems Corp. v. Canada (Commissioner of
Patents),
2006 FC 753, 295 F.T.R. 1, the issue before Justice Roger Hughes as to whether
a "clerical error" had occurred was seen to be "essentially
factual" requiring a "reasonable but not high degree of
deference" (para. 21).) I do not see this holding to be inconsistent with
the standard applied in Procter & Gamble, above, where the issue was
one of legal interpretation and where the corresponding standard was
correctness.
[14]
In
this case, the two grounds relied upon by the Commissioner to refuse Dow's
request for relief need to be assessed separately for the purpose of
identifying an appropriate standard of review. I will address the first of the
Commissioner's grounds for
refusing Dow's request at a later point in this decision.
[15]
The
second of the Commissioner's grounds for refusing to correct the '559
application seems to me to be an issue of mixed fact and law. The Commissioner
was concerned with the two interrelated issues of the length of delay and the
potential for third-party prejudice and therefore declined to grant relief
under section 8 of the Act. This is the kind of issue which attracts judicial
deference and I would adopt the following standard of review analysis from Bristol-Myers
Squib Co. v. Commissioner of Patents (1997), 138 F.T.R. 144 aff’d on appeal
at (1998), 82 C.P.R. (3d) 192 (F.C.A.):
10 Section 8 of the Act was interpreted before by this
Court in Bayer Aktiengesellschaft v. Commissioner of Patents (1980),
53 C.P.R. (2d) 70. At page 74 of that decision, Mahoney J. stated:
Section 8
provides that "clerical errors ... may be corrected by certificate under
the authority of the Commissioner". "May" is permissive; it is
not directory nor mandatory. There is nothing in the circumstances contemplated
by s. 8 that would lead me to conclude that the respondent is obliged to issue
a certificate of correction once he determines that what is sought to be
corrected is a clerical error. It is in his discretion to do so. The Court
cannot substitute its discretion for his. Mandamus does not lie to require the
respondent to issue a certificate under s. 8 of the Patent Act.
11 Thus, even where an error is accepted as clerical in
nature, the Commissioner of Patents' decision whether to
correct it is discretionary. In my view, this interpretation remains valid,
notwithstanding the subsequent adoption of rule 35 in replacement of rule 141.
This change in the Rules, in the context of section 8 of the Act, does nothing
more than to formally allow "the applicant" to request the correction
of obvious clerical errors in the specified documents. Such a request made by
the applicant under rule 35, however, remains subject to the approval of the
Commissioner as edicted in section 8 of the Act.
12 The Commissioner's decision, therefore, was
discretionary. In Maple Lodge Farms Limited v. Government of Canada et al., [1982]
2 S.C.R. 2, at pages 7 and 8, McIntyre J., for the Supreme Court of Canada,
stated:
... It is,
as well, a clearly-established rule that the courts should not interfere with
the exercise of a discretion by a statutory authority merely because the court
might have exercised the discretion in a different manner had it been charged
with that responsibility. Where the statutory discretion has been exercised in
good faith and, where required, in accordance with the principles of natural
justice, and where reliance has not been placed upon considerations irrelevant
or extraneous to the statutory purpose, the courts should not interfere....
13 Later, the Federal Court of Appeal, in Canadian
Association of Regulated Importers v. Canada, [1994] 2 F.C. 247, at page 260, expressed
the following view:
It is not
fatal to a policy decision that some irrelevant factors be taken into account;
it is only when such a decision is based entirely or predominantly on irrelevant
factors that it is impeachable. It is not up to the Court to pass judgment on
whether a decision is "wise or unwise." (See Cantwell v. Canada
(Minister of the Environment) (1991), 6 C.E.L.R. (N.S.) 16 (F.C.T.D.), at
page 46 per MacKay J.) This Court, because these matters involve "value
judgments", is not to "sit as an appellate body determining whether
the initiating department made the correct decision." (See Strayer J. in
Vancouver Island Peace Society v. Canada, [1992] 3 F.C. 42 (T.D.), at page 49.)
[...]
In other
words, for a court to interfere, there must be reliance primarily on irrelevant
matters as well as an absence of evidence supporting the Minister's decision.
14 Furthermore, I am of the opinion that in granting
this general discretion to authorize the correction of clerical errors under
section 8 of the Act, Parliament clearly signalled a reliance on the
specialized expertise of the Commissioner. Accordingly, the Commissioner's
determination of the factors to be taken into account in exercising her
discretion ought to be given curial deference, and should not be overturned
unless unreasonable (see Pezim v. B.C. (Superintendent of Brokers) (1994), 114 D.L.R. (4th) 385, at 404-406).
[footnotes omitted]
[16]
Dow’s
request to the Commissioner for a correction of the '559
application was made under section 8 of the Act which reads:
|
8.
Clerical errors in any instrument of record in the Patent Office do not
invalidate the instrument, but they may be corrected under the authority of
the Commissioner.
|
8.
Un document en dépôt au Bureau des brevets n’est pas invalide en raison d’erreurs
d’écriture; elles peuvent être corrigées sous l’autorité du commissaire.
|
[17]
Dow
contends that the Commissioner erred in the application of his section 8
discretion by relying upon a single unfounded and hypothetical consideration to
refuse Dow's request for a correction to its '559
application. It argues that the Commissioner wrongly speculated about the
potential for prejudice to third parties. Dow says further that not only was
there no evidence of actual prejudice to any other party, no reasonable person
after reviewing the '559 application would fail to see the substantial omission
of text. Having identified the omission, any prudent, knowledgeable and
interested party would know to look to the corresponding priority documents to
see what had been left out and would, therefore, suffer no prejudice. Dow also
advances a related argument -- albeit not one it put to the Commissioner --
that under Rule 17.2 of the Patent Cooperation Rules, the United
States
priority application was legally deemed to be part of the Canadian file history
and the Commissioner was, as of March 15, 2001, deemed to be in receipt of it.
[18]
There
are several deficiencies in Dow's argument. Firstly, the Commissioner did
not rely solely on a presumption of prejudice to third parties but was also concerned
about the length of Dow’s delay in seeking relief. The Commissioner’s letter
of November 9, 2005 refers to the fact that Dow's request came more than one
year after the '559 application was opened to public
inspection. This observation was actually quite generous to Dow because its
initial request to the Commissioner was completely unsubstantiated. It was not
until more than four years had elapsed from the laid open date that Dow
supplied any evidence to support its assertion of a clerical error.
[19]
Dow's
argument that the substantial omission of text from the '559
application would have been obvious to a third party is weakened by the fact
that Dow and its agents failed to recognize the mistake for many months.
Furthermore, I agree with the Commissioner that third parties, acting in good
faith, are entitled to assume that a patent application is accurate and
complete. In turn, the Commissioner is not required to embark upon the
somewhat speculative exercise of attempting to assess either the obviousness of
an error to a third-party reader or the relative availability of other sources
of remedial information. The fact that the U.S. priority
documents are deemed to be part of the Canadian file history adds nothing of
significance to the problem of de facto third-party prejudice. On this
point, I accept the validity of the Commissioner’s position as expressed in his
supplementary written argument to the Court:
The Applicant's additional arguments do
not squarely address this aspect of the Commissioner's refusal to exercise his discretion to
correct in the matter at hand. The fact that the priority application
documents were available, and that reference to those documents could have
revealed that certain pages were not included in the Canadian application does
not address the concern that third parties may never have averted to the fact
that material was missing from the Canadian application at all, nor does it
address the inherent concerns relating to prejudice associated with the delayed
manner by which the requests for correction were made.
[20]
In
cases of long delay like this one, the Commissioner is entitled to presume that
third party interests could be adversely affected by a s.8 correction. Indeed,
in many if not most cases, there will be no available evidence of actual
third-party prejudice. Taken to its logical conclusion, Dow's argument would
require the Commissioner to grant relief in virtually every instance where a
clerical error has been made by the patentee.
[21]
The
right of the Commissioner to consider the potential for third-party prejudice
in the exercise out his section 8 discretion has also been judicially
recognized.
[22]
In
Bristol-Myers Squib Co., above, the Court at first instance considered the
Commissioner's refusal to
grant section 8 relief for a requested correction to a patent petition where
text had been incorrectly deleted by the patentee's agent. The Commissioner's refusal to
grant relief was expressed, in part, as follows (at para. 9):
-
according
to the Rules applicable at the time of filing [New Rule 142], the request for
priority had to be submitted within six months of the filing date;
-
the
application has been opened to public inspection based on the date of the
priority request and the accuracy and reliability of the information of the
opened document is an essential part of that procedure; and
-
following
the opening of the patent application to public inspection, third parties may
have relied on the information appearing in the application and could be
prejudiced by the addition of a part to the priority claim.
[23]
In
upholding the Commissioner's decision, Justice Yvon Pinard dealt with the
argument advanced here by Dow that the Commissioner had erred by speculating
about third-party interests. He rejected that argument on the following basis
(at para. 15):
In the case at bar, the good faith of the
Commissioner is not at issue and it is my opinion that she carefully considered
the evidence supporting her decision. Upon review of the factors expressly
taken into account in her decision, I am satisfied, although the alleged
prejudice to third parties may be speculative, that it was reasonable for the
Commissioner to exercise her discretion as she did.
[24]
On
appeal, Bristol-Myers argued again that the Commissioner had improperly
exercised her section 8 discretion by applying irrelevant considerations and by
failing to take account of relevant considerations (see Bristol-Myers Squibb
Co., above, at para. 11). The Court of Appeal noted the Commissioner' s concern
about the retroactive effect of the requested correction and dismissed the
above argument for the following reasons (at para. 25):
The Commissioner, pursuant to s. 4 of the
Act, has "the charge and custody" of the records belonging to the
Patent Office. In view of this, the words "under the authority of"
in s. 8 of the Act suggest that the Commissioner is responsible for the
integrity of the system under her care. The effect of the request for
correction was not, as in Bibeault, to record a transfer of rights and
obligations which had occurred by operation of the law. The Commissioner of
Patents was asked to give priority to a claim which, under the law, can only be
made within a period of six months from the filing of the patent application on
June 25, 1993. The application had been opened to public inspection based on
the priority date. It was reasonable for her to estimate that reliability of
the opened document was an essential part of the procedure of public inspection
and that third parties may have relied on the information appearing in
the application and could be prejudiced by the addition of a part to the
priority claim. These considerations were not, as claimed by the applicant,
irrelevant. Far from it. The Commissioner could have been preoccupied with
the effect the request could have had on others had the correction being
granted.
[Emphasis
added; footnotes omitted]
[25]
I
can find nothing in the Commissioner’s decision in this case to distinguish it
from the decision which was upheld in Bristol-Myers Squibb Co., above.
The Commissioner was entitled to exercise the statutory discretion for the
reasons expressed and to interfere with the decision would represent an
inappropriate judicial trespass upon that discretion.
[26]
In
light of my conclusion that the Commissioner did not err in the exercise of his
section 8 discretion, it is unnecessary for me to decide whether the mistake by
Dow’s United
States
patent attorney amounted to a clerical error. Nevertheless, it should be noted
that the Commissioner was not satisfied by the evidence presented that a
clerical error had occurred and he expressed doubt that an error of this scope
would be the likely result of the types of clerical slips for which section 8
relief would ordinarily be available. The weight to be attributed to the
evidence tendered is, of course, a matter falling squarely within the Commissioner’s
authority and is, therefore, deserving of considerable deference. In the
absence of convincing evidence that a mistake involving the deletion of nine
pages of text could readily result from a simple keyboarding or transcription
slip, it is difficult to take issue with the Commissioner’s conclusion.
[27]
I
would add that the fact that an error is shown to be inadvertent (as this one
was found to be) is not sufficient to establish that it was a clerical error
insofar as that term has been judicially defined. Although Dow’s arguments to
the Court attempted to explain how such a thing might have occurred, that
information was not contained within the evidence put before the Commissioner
and, therefore, cannot be considered in a review of his decision. The same is
true for the affidavit of Mr. Schwartz which contained evidence concerning
the obviousness of the mistake and the availability from other sources of the
complete text of the '559 application. This was evidence that was available
and could have been placed before the Commissioner. Having failed to apprise
the Commissioner of this evidence, it is inappropriate to ask the Court to rely
upon it in assessing the reasonableness of the Commissioner's decision.
[28]
It
was, of course, open to Parliament to have granted a broader corrective
authority to the Commissioner by leaving out the word "clerical" from
section 8 of the Act. The inclusion of that term was clearly intended to
confine the Commissioner's discretion to some degree. Although I agree that in
an age where documents are produced and edited by computer, simple keyboarding
or other transcription mistakes can cause seemingly disproportionate effects,
some evidence may still be required to establish the character or source of the
error. In some cases that may be obvious but here it was not and the
Commissioner was not satisfied by Mr. Howard's scant
explanation that the text was somehow inadvertently deleted during the editing
process. While it was open on this evidence to have come to a different
conclusion, I cannot say that the Commissioner's view of the evidence was
unreasonable.
[29]
In
the result, this application for judicial review is dismissed. Having regard
to section 25 of the Act, no award of costs will be made.
JUDGMENT
THIS COURT ADJUDGES that this application for judicial review is dismissed without costs.
“ R. L. Barnes ”
Email this Content