Date: 20070913
Docket: T-1488-06
T-26-07
Citation: 2007 FC 914
Vancouver, British Columbia, September
13, 2007
PRESENT: The Honourable Mr. Justice de Montigny
BETWEEN:
DAVID
DECK RENDINA
Applicant
and
ATTORNEY GENERAL OF CANADA
and COMMISSIONER OF PATENTS,
CANADIAN INTELLECTUAL PROPERTY OFFICE
Respondents
REASONS FOR JUDGMENT AND
JUDGMENT
[1]
The
applicant
is seeking judicial review of a decision of the Commissioner of Patents (the Commissioner)
dated March 31, 2006, in which the Commissioner refused to accept payment of
the patent application maintenance and reinstatement fees during the one-year
reinstatement period for Canadian Patent Application No. 2,424,725 (the 725
Patent).
I. Background
[2]
The applicant is the sole owner and inventor of the
725 Patent entitled "Renewable, Energetic, Nanodimensional Dispersion."
He personally prepared and submitted the 725 Patent on April 3, 2003. He
subsequently appointed a patent agent, Antony C. Edwards (the Patent Agent), in
respect of the 725 Patent.
[3]
The annual maintenance fee due on or
before April 4, 2005, was not paid by either the applicant or the Patent Agent;
the application was therefore deemed abandoned. The Canadian Intellectual
Property Office (the CIPO) issued a Notice of Abandonment which stated that the
725 Patent could be reinstated by making a request for reinstatement,
paying the maintenance fee, and paying the fee for reinstatement on or before
April 4, 2006, pursuant to subsection 73(3) of the Patent Act, R.S.C.
1985, c. P-4 (the Act).
[4]
On March 21, 2006, the applicant wrote a letter to the
Commissioner requesting the reinstatement of the 725 Patent and authorizing the
payment of the fees from his credit card. Those payments were apparently
received and processed by CIPO. Yet on March 31, 2006, CIPO sent a notice to
the applicant advising that “while an application is pending, the fee to
maintain that application may only be paid by the authorized correspondent in
regard to that particular application”, pursuant to subsection 6(1) of Patent
Rules, SOR/96-234 (the Rules). As a result, the letter indicated that
a refund would be issued upon request. The applicant claims that he only became
aware of that decision on April 5, 2006.
[5]
The 12-month period for reinstatement expired on April 4, 2006. On
May 17, 2006, the Patent Agent wrote a letter to CIPO seeking reconsideration
of the rejection of the payment by the applicant himself. He also authorized
the payment of the fees from his own credit card.
[6]
In a second letter dated July 18, 2006, CIPO reiterated its
position to refuse the payment by the applicant, as the applicant is not the
authorized correspondent. It also took into consideration Rule 3.1 of the Rules
which expressly gives the power to a Commissioner to extend the delay of
payment when an unsuccessful attempt is made; however, it concluded that this
provision is inapplicable since the communication did not issue from the
authorized correspondent.
[7]
The applicant filed a second application for leave and judicial
review of that July 18, 2006 decision (docket number T-1488-06). At the
hearing, however, the applicant explained that this second application was made
essentially to protect his rights but relates to the same decision from CIPO to
refuse his application for reinstatement. Accordingly, there will be only one
set of reasons for the two files.
II. Issues
[8]
This application for judicial review raises the
following issues:
1. What is the appropriate standard of review?
2. Did the Commissioner err in refusing to accept payment of
the maintenance and reinstatement fees in respect of the 725 Patent?
III. Relevant
Provisions
[9]
The relevant provisions are attached hereto as
Annex A.
IV. Analysis
[10]
There is no dispute between the parties that the
appropriate standard of review in the present case is the correctness standard,
as the issue to be decided is essentially a question of law. I can do no better
in this respect than quoting from the decision reached by my colleague Justice
Dawson in Dutch Industries Ltd. v. Canada (Commissioner of
Patents), [2002] 1 F.C. 325 (affirmed at 2003 FCA 121). Conducting a pragmatic and functional analysis as directed by the
Supreme Court of Canada in cases such as Pushpanathan v. Canada (Minister of Citizenship and Immigration), [1998] 1 S.C.R. 982, she stated:
21 Expertise is the most important of the four factors to be
considered. While the Commissioner has expertise with respect to a number of
matters, I am not persuaded that such expertise extends to interpreting the
relevant provisions of the Act and the Rules for the purpose of determining the
effect of an underpayment of fees. As the majority of the Federal Court of
Appeal observed in President and Fellows of [page333] Harvard College v. Canada
(Commissioner of Patents), [2000] 4
F.C. 528 (C.A.) at
paragraph 183, the broader the proposition and the further the implications of
a decision stray from the Commissioner's expertise, the less deference is
warranted. This suggests a less deferential standard of review, closer to the
correctness and of the spectrum.
22 While the object of the Act is to promote the development
of inventions so as to benefit both inventors and the public, I conclude that the
purpose of the specific provisions at issue with respect to the payment of fees
is not polycentric in nature, not involving a multi-faceted balancing test. The
Act establishes and regulates the respective rights of patent holders. Where
the purpose of the legislation is to establish rights between parties, closer
scrutiny by the Court is warranted.
23 The nature of the question at issue is a question of law:
the interpretation will have determinative impact on future decisions. This again
warrants less deference, and a standard closer to correctness.
24 Applying those factors, I conclude that the decisions of
the Commissioner in the cases before me are reviewable on the standard of
correctness.
[11]
The issue before this
Court, therefore, is whether the Commissioner was right in his interpretation
of the Act. There is no room for deference here: either the interpretation of
the relevant provisions of the Act given by the Commissioner was correct or it
was not. For the reasons that follow, I believe the Commissioner came to the
proper conclusion.
[12]
Section 27.1 of the Act provides that the payment of annual fees is
required to maintain a patent application after it is filed. The application
will be considered abandoned if it is not paid within the time allowed
(subsection 73(1)(c) of the Act). However, the application can be reinstated
if: a request is made to the CIPO; the action that should have been taken in
order to avoid the abandonment is taken; and if the prescribed fee is paid
(subsection 73(3) of the Act). It has to be done “before the expiry of the
12-month period after the date on which the application is deemed to be
abandoned as a result of that failure” (Rule 98 of the Rules).
[13]
In this case, the application was deemed to be abandoned on April 4,
2005. However, the Applicant then had a 12-month period to ask for
reinstatement, until April 4, 2006. He made his request on March 21, 2006. The
request was therefore submitted within the prescribed 12-month period. The only
reason why the applicant’s request for reinstatement was rejected was because
it was made by the applicant himself, and not by his agent. According to the
Commissioner, this was contrary to subsection 6(1) of the Rules.
[14]
The applicant relies on the opening phrase of that provision (“Except as
provided by the Act or these Rules”) to contend that his application should
have been accepted. He submits that subsection 27.1(1) of the Patent Act
provides that the applicant shall pay the prescribed fees to the
Commissioner to maintain the patent application. Similarly, subsection 73(3)
provides that a patent application will be reinstated if the applicant,
amongst other things, pays the prescribed reinstatement fee within the
prescribed deadline. Section 98 of the Patent Rules further provides
that it is the applicant who must take the necessary actions to avoid
the deemed abandonment of the patent. Finally, section 24.02.02 of CIPO’s Manual
of Patent Office Practice equally confirms that either the applicant or the
authorized correspondent is the appropriate party to pay the maintenance fee in
respect of a patent application. On the basis of these provisions, the
applicant is of the view that the opening words of subsection 6(1) of the Rules
find application and that he could apply for reinstatement himself.
[15]
The problem with this proposed interpretation is that it would strip
subsection 6(1) of the Rules of its meaning and render it superfluous. Sections
27.1, 73 and 98 of the Act are not unique in the use of the term “applicant”.
This term is consistently used in the provisions of the Act and of the Rules
relating to the prosecution phase of the patent application process to denote
the initiator of a patent application. The legislation is framed in terms of
the steps to be taken by the applicant or the Commissioner in the patent
application process. Given the consistent use of the word “applicant” throughout
the provisions relating to the prosecution phase of the patent application
process, each such provision would be an exception to subsection 6(1). This
simply makes no sense and would go against the presumption that words found in
a statute must be given meaning and have a function. That provision is
straightforward and the Commissioner should not be left to decide in each
instance whether an applicant’s direct communication with the Office should be
considered or not.
[16]
Indeed, there are provisions in the Patent Act and Patent
Rules which explicitly identify someone other than the applicant as
initiator of a step in the process. Subsection 35(1) of the Patent Act
and subsection 28(1) of the Patent Rules are examples of such
exceptions. According to these provisions, “any person” may request
examination of an application for a patent, requiring the Commissioner to
communicate with someone other than or in addition to the authorized
correspondent regarding prosecution or maintenance of a patent application. In such
instances, the introductory phrase of subsection 6(1) clearly finds
application.
[17]
Counsel for the applicant also submitted that the interpretation of the Patent
Act and the Patent Rules should be governed by the principles of
statutory interpretation, and more particularly by a purposive analysis.
Relying on Dutch Industries Ltd. v. Canada (Commissioner of Patents)
(2001), 14 C.P.R.(4th) 499, he stressed that the principal object of
the Patent Act is to promote the development of inventions so as to
benefit both inventors and the public. Therefore, he asserts that his
proposed interpretation of subsection 6(1) should be preferred, as it would
best promote the development of inventions by facilitating the payment of the
necessary fees and avoid punishing inventors through the loss of their patent
rights as a result of ambiguity or uncertainty regarding who is the appropriate
party to pay those fees.
[18]
The Supreme Court of Canada has recently discussed statutory
interpretation, see: Winters v. Legal Services Society, [1999] 3
R.C.S. 160; Bell ExpressVu Limited Partnership v. Rex, [2002] 2 S.C.R.
559 and Euro-Excellence Inc. v. Kraft Canada inc., 2007 SCC 37. The approach
taken by the Supreme Court recognizes the importance of the entire context of the
provisions. The words of a statute should be given their grammatical and
ordinary sense in harmony with the object, the intention of the Parliament, as
well as the scheme of the Act.
[19]
In the decision Eiba v. Canada (Attorney General), 2004 FC 25034 [Eiba], Justice Mosley held the following on the
maintenance fees provisions:
[43] The
object of the annual maintenance fee provisions, as stated by the Federal Court
of Appeal in Barton No-till Disk Inc. et al., supra, is to provide for
defrayment of the costs of administering the patent regime and also to
discourage the proliferation of "deadwood" patents and patent
applications by requiring patentees to take steps on an annual basis to keep
them in good standing. While the affidavit evidence filed in this proceeding
reveals that the application in the present case was not intended to be
abandoned, I am satisfied that the maintenance fee provisions of the Act and
the Rules must be interpreted strictly by the Commissioner, and also this
Court, in order to ensure compliance by applicants through the timely and
diligent filing of fees.
[20]
While the applicant is most certainly right as to the overarching
purpose of the Patent Act, I do not think it can be achieved by
introducing uncertainty in the application of the Act and by
disregarding its clear wording. Various persons (i.e., inventor, multiple joint
inventors, legal representative of inventor or joint inventors, associate
patent agent or patent agent) may wish to communicate with and direct
communications to the Commissioner of Patents regarding a particular patent
application. Having multiple correspondents is an administrative burden for
CIPO, creates the potential for conflicting requests, instructions and
responses, and the potential for lack of instructions because of uncertainty as
to who would act, with the consequence of missed deadlines. I agree with the
respondent that subsection 6(1) was designed to prevent that confusion and is a
reflection of the need that was felt to delineate who the Commissioner must
communicate with and whose communications the Commissioner must have regard to
with respect to a particular patent application.
[21]
For
all the foregoing reasons, I do not think the Commissioner erred in refusing to
accept payment of the maintenance and reinstatement fees in respect of the 725
Patent from the applicant; his interpretation of subsection 6(1) of the Rules
which only allows him to communicate with and have regards to communication
from the authorized correspondent is correct.
[22]
I am further of the opinion that the
Commissioner of Patents did not err in his July 18, 2006 decision when he
refused once again to accept the prescribed fees despite subsection 3.1(1) of
the Rules. This subsection expressly gives the power to the Commissioner who
receives an unsuccessful attempt to pay the fee to extend the delay of payment.
However, the beginning of the provision expressively provides that it is
“subject to subsection 6(1)”. The respondent is right to say the request for
reinstatement had to come from the Patent Agent. In this case, the request was
made by the applicant; section 3.1 can therefore be of no assistance to the
applicant.
[23]
Furthermore, I
believe that the CIPO was justified in refusing the July 18, 2006, Patent
Agent’s request for payment as the time limit to make a reinstatement request
was expired. In Pfizer Inc. v. Canada (Commissioner of Patents) [2000] F.C.J. No. 1801, the Federal
Court of Appeal concluded that no discretionary power to extend the period of
reinstatement was given to the Commissioner under the Act, see also: F.
Hoffman-La Roche AG v. Canada (Commissioner of Patents), 2005 FCA 399 and Eiba.
[24]
I would therefore
dismiss this application for judicial review.
JUDGMENT
THIS COURT ORDERS AND
ADJUDGES that the application for judicial review is dismissed with costs.
"Yves
de Montigny"
ANNEX
"A"
Patent Act
27. (1)
The Commissioner shall grant a patent for an invention to the inventor or the
inventor’s legal representative if an application for the patent in Canada is
filed in accordance with this Act and all other requirements for the issuance
of a patent under this Act are met.
…
35. (1) The Commissioner shall, on the
request of any person made in such manner as may be prescribed and on payment
of a prescribed fee, cause an application for a patent to be examined by
competent examiners to be employed in the Patent Office for that purpose.
…
73.
(1) An application for a patent in Canada
shall be deemed to be abandoned if the applicant does not
(a)
reply in good faith to any requisition made by an examiner in connection with
an examination, within six months after the requisition is made or within any
shorter period established by the Commissioner;
(b)
comply with a notice given pursuant to subsection 27(6);
(c) pay
the fees payable under section 27.1, within the time provided by the
regulations;
(d)
make a request for examination or pay the prescribed fee under subsection
35(1) within the time provided by the regulations;
(e)
comply with a notice given under subsection 35(2); or
(f) pay
the prescribed fees stated to be payable in a notice of allowance of patent
within six months after the date of the notice.
(2)
An application shall also be deemed to be abandoned in any other
circumstances that are prescribed.
(3)
An application deemed to be abandoned under this section shall be reinstated
if the applicant
(a)
makes a request for reinstatement to the Commissioner within the prescribed
period;
(b)
takes the action that should have been taken in order to avoid the abandonment;
and
(c)
pays the prescribed fee before the expiration of the prescribed period.
(4)
An application that has been abandoned pursuant to paragraph (1)(f) and reinstated is subject to amendment and further
examination.
(5)
An application that is reinstated retains its original filing date.
Patent
Rules
2. In these Rules, authorized correspondent" means, in respect of an
application,
(a) where the application was filed by the
inventor, where no transfer of the inventor’s right to the patent or of the
whole interest in the invention has been registered in the Patent Office and
where no patent agent has been appointed
(i) the sole inventor,
(ii) one of two or more joint inventors authorized by all
such inventors to act on their joint behalf, or
(iii) where there are two or more joint inventors and no
inventor has been authorized in accordance with subparagraph (ii), the
first inventor named in the petition or, in the case of PCT national
phase applications, the first inventor named in the international application,
(b) where an associate patent agent has been
appointed or is required to be appointed pursuant to section 21, the
associate patent agent, or
(c) where paragraphs (a) and (b) do
not apply, a patent agent appointed pursuant to section 20; (correspondant autorisé)
…
3. (1) If a person
takes any proceeding or requests that any service be rendered by the
Commissioner or by the Patent Office, the person shall pay to the
Commissioner the appropriate fee, if any, set out in Schedule II for that
proceeding or service.
…
6. (1) Except as provided by the Act or these Rules, for
the purpose of prosecuting or maintaining an application the Commissioner
shall only communicate with, and shall only have regard to communications
from, the authorized correspondent.
…
20. (1) An
applicant who is not an inventor shall appoint a patent agent to prosecute
the application for the applicant.
(2) The appointment of a patent agent shall
be made in the petition or by submitting to the Commissioner a notice signed
by the applicant.
(3) The appointment of a patent agent may
be revoked by submitting to the Commissioner a notice of revocation signed by
the applicant or that patent agent.
…
28.
(1) Subject to subsection (2), the Commissioner
may advance an application for examination out of its routine order upon the
request of any person who pays the fee set out in item 4 of Schedule II,
where the Commissioner determines that failure to advance the application is
likely to prejudice that person’s rights.
…
98.
(1) For an application deemed to be
abandoned under section 73 of the Act to be reinstated, the applicant shall,
in respect of each failure to take an action referred to in subsection 73(1)
of the Act or section 97, make a request for reinstatement to the
Commissioner, take the action that should have been taken in order to avoid
the abandonment and pay the fee set out in item 7 of Schedule II, before the
expiry of the 12-month period after the date on which the application is
deemed to be abandoned as a result of that failure.
(2) For the purposes of
subsection (1), if an application is deemed to be abandoned for failure to
pay a fee referred to in subsection 3(3), (4) or (7), for the applicant to
take the action that should have been taken in order to avoid the
abandonment, the applicant shall, before the expiry of the time prescribed by
subsection (1), either
(a) pay the applicable
standard fee, or
(b) file a small entity declaration in respect of
the application in accordance with section 3.01 and pay the applicable small
entity fee.
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Loi sur les brevets
27. (1) Le commissaire accorde un brevet d’invention à l’inventeur ou
à son représentant légal si la demande de brevet est déposée conformément à
la présente loi et si les autres conditions de celle-ci sont remplies.
…
35. (1) Sur requête à lui faite en la forme réglementaire et sur
paiement de la taxe réglementaire, le commissaire fait examiner la demande de
brevet par tel examinateur compétent recruté par le Bureau des brevets.
…
73. (1) La demande de brevet est considérée comme abandonnée si le
demandeur omet, selon le cas :
a) de répondre de bonne foi, dans
le cadre d’un examen, à toute demande de l’examinateur, dans les six mois
suivant cette demande ou dans le délai plus court déterminé par le
commissaire;
b) de se conformer à l’avis
mentionné au paragraphe 27(6);
c) de payer, dans le délai
réglementaire, les taxes visées à l’article 27.1;
d) de présenter la requête visée au
paragraphe 35(1) ou de payer la taxe réglementaire dans le délai
réglementaire;
e) de se conformer à l’avis
mentionné au paragraphe 35(2);
f) de payer les taxes
réglementaires mentionnées dans l’avis d’acceptation de la demande de brevet
dans les six mois suivant celui-ci.
(2) Elle est aussi considérée comme
abandonnée dans les circonstances réglementaires.
(3) Elle peut être rétablie si le
demandeur :
a) présente au commissaire, dans le
délai réglementaire, une requête à cet effet;
b) prend les mesures qui
s’imposaient pour éviter l’abandon;
c) paie les taxes réglementaires
avant l’expiration de la période réglementaire.
(4) La demande abandonnée au titre
de l’alinéa (1)f) et rétablie par la suite
est sujette à modification et à nouvel examen.
(5) La demande rétablie conserve sa
date de dépôt.
Règles sur les brevets
2. Les définitions qui suivent s’appliquent aux présentes règles.
«correspondant
autorisé» Pour une demande :
a) lorsque
la demande a été déposée par l’inventeur, qu’aucune cession de son droit au
brevet, de son droit sur l’invention ou de son intérêt entier dans
l’invention n’a été enregistrée au Bureau des brevets et qu’aucun agent de
brevets n’a été nommé :
(i) l’unique inventeur,
(ii) s’il y a deux coïnventeurs ou plus,
celui autorisé par ceux-ci à agir en leur nom,
(iii) s’il y a deux coïnventeurs ou plus
et qu’aucun de ceux-ci n’a été ainsi autorisé, le premier inventeur nommé
dans la pétition ou, dans le cas des demandes PCT à la phase nationale, le
premier inventeur nommé dans la demande internationale;
b)
lorsqu’un coagent a été nommé ou doit l’être en application de l’article 21, le
coagent ainsi nommé;
c) lorsque
les alinéas a) et b) ne s’appliquent pas, l’agent de brevets
nommé en application de l’article 20. ( authorized correspondent )
…
3.
(1) La personne qui remplit des
formalités ou demande la prestation d’un service par le commissaire ou le
Bureau des brevets verse au commissaire la taxe qui est prévue, le cas
échéant, à l’annexe II.
…
6. (1) Sauf disposition contraire de la Loi ou des présentes règles, dans
le cadre de la poursuite ou du maintien d’une demande, le commissaire ne
communique qu’avec le correspondant autorisé en ce qui concerne cette demande
et ne tient compte que des communications reçues de celui-ci à cet égard.
…
20. (1) Le demandeur qui n’est pas l’inventeur nomme un
agent de brevets chargé de poursuivre la demande en son nom.
(2) L’agent de brevets est nommé dans la pétition ou dans un
avis remis au commissaire et signé par le demandeur.
(3) La nomination d’un agent de brevets peut être révoquée par
un avis de révocation remis au commissaire et signé par l’agent ou le
demandeur.
…
28. (1) Sous réserve du paragraphe
(2), le commissaire peut, à la demande de la personne qui verse la taxe
prévue à l’article 4 de l’annexe II, devancer la date normale d’examen d’une
demande s’il juge que le non-devancement est susceptible de porter préjudice
aux droits de cette personne.
…
98. (1) Pour
que la demande considérée comme abandonnée en application de l’article 73 de
la Loi soit rétablie, le demandeur, à l’égard de chaque omission visée au
paragraphe 73(1) de la Loi ou à l’article 97, présente au commissaire une
requête à cet effet, prend les mesures qui s’imposaient pour éviter l’abandon
et paie la taxe prévue à l’article 7 de l’annexe II, dans les douze mois
suivant la date de prise d’effet de l’abandon.
(2) Pour prendre les mesures qui s’imposaient pour éviter l’abandon
pour non-paiement de la taxe visée aux paragraphes 3(3), (4) ou (7), le
demandeur, avant l’expiration du délai prévu au paragraphe (1) :
a) soit paie la taxe générale applicable;
b) soit
dépose, à l’égard de sa demande, la déclaration du statut de petite entité
conformément à l’article 3.01 et paie la taxe applicable aux petites entités.
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