Date: 20001102
Docket: A-429-99
CORAM: ISAAC J.A.
McDONALD J.A.
BETWEEN:
THE COMMISSIONER OF PATENTS
Appellant
- and -
PFIZER INC.
Respondent
Heard at Ottawa, Ontario on Thursday, October 12, 2000
Judgment delivered at Ottawa, on Thursday, November 2, 2000
| REASONS FOR JUDGMENT BY: ISAAC J.A. |
| CONCURRED IN BY: McDONALD J.A. |
Date: 20001102
Docket: A-429-99
McDONALD J.A.
SHARLOW J.A.
BETWEEN:
THE COMMISSIONER OF PATENTS
Appellant
- and -
PFIZER INC.
Respondent
REASONS FOR JUDGMENT
ISAAC J.A.
[1] This is an appeal from an order made by a Motions Judge in the Trial Division on 10 June 1999, allowing the respondent's application for judicial review and ordering that a Notice of Reinstatement of the respondents's patent application serial number 2,131,371 should govern, with the result that the respondent's patent application which had been deemed to be abandoned for non-payment of annual maintenance fees was reinstated.
Relevant Legislation
[2] The relevant provisions of the Patent Act1 read:
| 27.1(1) An applicant for a patent shall, to maintain the application in effect, pay to the Commissioner such fees, in respect of such periods, as may be prescribed. |
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. |
. . .
| (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. |
. . .
| (5) An application that is reinstated retains its original filing date. |
[3] Section 152 of the Patent Rules2 reads:
| In order for an application deemed to be abandoned under section 73 of the Act to be reinstated, the applicant must, in respect of each failure to take an action referred to in subsection 73(1) of the Act or section 151, make a request for reinstatement to the Commissioner, take the action that should have been taken in order to avoid the deemed abandonment and pay the fee set out in Item 7 of Schedule II before the expiry of the twelve-month period after the date on which the application is deemed to be abandoned as a result of that failure. [emphasis added] |
Facts
[4] The respondent owns the patent application serial number 2,131,371 ("371 application") which was filed on 27 January 1993. Annual fees of $100 ("maintenance fees") are payable on the anniversary of the filing date in order to maintain the application in effect.
[5] The respondent's maintenance fees for the 371 application were due on 27 January 1997; because the respondent failed to pay, its application was deemed abandoned as of 27 January 1997. On 5 March 1997, the Patent Office thus sent to the respondent a Notice of Abandonment. On 10 March 1997, the respondent requested that some amendments be made to the 371 application.
[6] On 5 February 1998, the respondent asked the Patent Office to transfer maintenance fees previously paid for its other patent applications to satisfy the outstanding maintenance fee due on 27 January 1997 and the reinstatement fee on its 371 patent application. At that time, the maintenance fee due on 27 January 1998 remained outstanding.
[7] On 24 February 1998, the Patent Office sent to the respondent a Notice of Reinstatement and a Notice of Abandonment. On 2 March 1998, the Patent Office sent another Notice of Abandonment with respect to the 371 application. Also on 2 March 1998, the respondent petitioned for reinstatement of the 371 application and purported to pay the 28 January 1998 maintenance fee and the required reinstatement fee. A Notice of Reinstatement followed one week later.
[8] On 20 March 1998, the Patent Office sent a letter to the respondent stating that the 24 February 1998 Notice of Reinstatement had been sent in error and that the respondent had not satisfied requirements for reinstatement of the 371 application. In a subsequent letter, dated 23 March 1998, the Patent Office stated that the respondent's letter of 10 March 1997 did not qualify as a request for reinstatement and that since "...[n]o request for reinstatement was received by January 27, 1998, ... the application is now dead in the sense that the period for reinstatement has expired." The Notice of Reinstatement was thus retracted.
[9] On 11 May 1998, the Patent Office issued another Notice of Reinstatement with respect to the 371 application.
Reasons of the Motions Judge
[10] Relying on the decision of Evans J. (as he then was) in Markevich v. Canada,3 the Motions Judge rejected the appellant's preliminary objection that the appellant's letters of 20 March 1997 and 23 March 1997 were not subject to judicial review.
[11] The Motions Judge concluded that although the statutory requirements for reinstatement of application 371 had not been met, the application had been validly reinstated by issuance of the Notice of Reinstatement dated 24 February 1998 because neither the Act nor the Rules gave the Commissioner of Patents the right to withdraw or retract a Notice of Reinstatement.
[12] The Motions Judge found that the respondent's letter of 10 March 1997, could not be interpreted as a reinstatement request as required by subsection 73(3) of the Act because a request implied asking for something in an explicit manner. The Trial Judge noted that the 10 March 1997 letter requested an amendment to the respondent's patent application and failed to deal in any way with the issue of reinstatement.
Position of the Parties
[13] The appellant contended, first, that the Notices of Reinstatement of the respondent's patent application dated 24 February 1998, 2 March 1998 and 11 May 1998, are a nullity.
[14] Secondly, the appellant said that a patent application may be reinstated if, and only if, all the statutory requirements under subsection 73(3) of the Act have been met. Under the law, if the statutory requirements for the reinstatement were not met, a patent application could not be reinstated. The appellant claimed that both abandonment and reinstatement of a patent application result from the operation of the law and not the exercise of any discretionary or decision-making powers given to the Commissioner of Patents by the Act or the Rules. Accordingly, the Notices of Reinstatement and Notice of Abandonment in issue here merely informed the respondent of the status of its application and was without statutory warrant.
[15] Thirdly, the appellant said that the three Notices of Reinstatement are not subject to judicial review and that Markevich on which the Motions Judge relied was distinguishable on its facts. The appellant contended that Markevich involved a situation in which the Minister of Revenue decided to write off a tax debt of a taxpayer. Counsel for the appellant drew comparisons between section 73 of the Act in which no discretionary power is given to the Commissioner and other provisions of the Act which extend to the Commissioner clear discretionary or decision-making powers as well as provide for further recourse to the Federal Court. In particular, the appellant referred to sections 19, 19.1, 19.2, 31, 37, 40 and 41 of the Act.
[16] The appellant noted that since there is no statutory warrant to issue a Notice of Reinstatement, there could not be one for retracting or withdrawing such a Notice.
[17] The appellant contended fourthly that it was not estopped from relying on the correct interpretation and application of the law, i.e., section 73 of the Act.
[18] For its part, the respondent contended that the only issue on this appeal is whether the appellant's letters of 20 March 1997 and 23 March 1997 were subject to judicial review since they are determinative of the respondent's rights.
[19] The respondent also contended that its 371 application was reinstated by virtue of the Notice of Reinstatement dated 24 February 1998, which was issued subsequent to its request for such a reinstatement dated 5 February 1998.
[20] The respondent contended further that regardless of whether or not the Notice of Reinstatement of 24 February 1998 was faulty or defective, and even if the statutory requirements were not met, once the Commissioner issued a Notice, he could not withdraw it because nothing in the Act allows for such a withdrawal. The respondent contended further that the Patent Office is not allowed to revisit its decision with respect to the reinstatement.
[21] The respondent disagreed with the appellant's characterization of section 73 of the Act, arguing that the issuance of a Notice of Reinstatement is not a formality, because someone at the Patent Office had to decide whether the statutory conditions for reinstatement had been met. This decision is subsequently communicated to the patent applicant in the form of a Notice of Reinstatement.
Analysis
[22] It is my respectful view that the respondent's argument cannot succeed.
[23] From a reading of the Act, it is plain that subsection 73(3) of the Act provides that reinstatement of an abandoned patent application will occur if three statutory requirements are met and not when the Patent Office issues a Notice of Reinstatement. The three requirements are: (1) a request for reinstatement has been made; (2) the action which should have been taken to avoid the abandonment has been taken; and (3) a reinstatement fee has been paid. Section 152 of the Rules clearly requires that the request for reinstatement of a patent application be made within 12 months from the date on which a patent application was deemed to be abandoned. In this case, the date of abandonment was 27 January 1997. Thus, the deadline for making a request for reinstatement was 27 January 1998. The respondent failed to make its request until 5 February 1998. This is clearly outside the statutory time limit prescribed by section 152 of the Rules. As a consequence, the application could not be reinstated in law.
[24] The appellant's position, that the 371 patent application was abandoned and not reinstated, is supported by the decision of this Court in Granger v. Canada (Employment and Immigration Commission),4 a case which involved a pension recipient who relied on the information which the Commissioner had erroneously given to him. In that case, the appellant contended that the Commission was bound by the information which it had given to him and was therefore estopped. In rejecting that contention, Pratte J. wrote:
| ... A judge is bound by the law. He cannot refuse to apply it, even on grounds of equity... |
. . .
| In case at bar the applicant did not argue that the Commission had exercised its discretion improperly, because here the law gives the Commission no discretion: it simply imposes on it a duty to calculate and pay the benefits in accordance with law. |
| In actual fact, the applicant would like to receive the higher labour adjustment benefits than those to which he is entitled under the law in order to compensate himself for the damage resulting from the incorrect representations made to him by the Commission. It is possible, though the record does not definitely establish this, that the applicant may have suffered such damage: I think it is clear, however, that neither the Board of Referees nor the Umpire has jurisdiction to order compensation for such damage.5 |
[25] On appeal from this Court, the Supreme Court of Canada unanimously dismissed the appeal for the reasons given by Pratte J.
[26] Because I have decided that, as a matter of construction of the relevant provisions of the Act and the Rules, the order which the learned Motions Judge made cannot stand, I do not find it necessary or desirable to deal with the other grounds of appeal which were argued before us.
[27] For these reasons, I would allow the appeal without costs, set aside the order of 10 June 1999 which the Motions Judge made and dismiss the application for judicial review.
| __________________________________ J.A. |
"I agree
McDonald J.A."
"I agree
Sharlow J.A."
__________________
1 R.S.C. 1985, c. P-4 [hereinafter "Act"].
2 SOR/96-243 [hereinafter "Rules"].
3 [1999] 3 F.C. 28 (T.D.) [hereinafter "Markevich"] (appeal to the Court of Appeal pending).
4 [1986] 3 F.C. 70 (C.A.), appeal to the Supreme Court of Canada dismissed [1989] 1 S.C.R. 141.
5 Ibid. at paras. 9-11.
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