Date:
20080307
Docket: A-249-07
Citation:
2008 FCA 90
CORAM: NADON
J.A.
SEXTON
J.A.
RYER
J.A.
BETWEEN:
ACTELION
PHARMACEUTICALS LTD
Appellant
(Applicant)
and
HER MAJESTY IN THE RIGHT OF CANADA
AS REPRESENTED BY
THE ATTORNEY GENERAL
AND THE COMMISSIONER OF PATENT
Respondents
(Respondents)
REASONS FOR JUDGMENT
SEXTON J.A.
INTRODUCTION
[1]
This
is an appeal of the decision of Deputy Judge Lagacé of the Federal Court (the “applications
judge”) in which the application for judicial review by Actelion
Pharmaceuticals Ltd. (the “appellant”) was dismissed. The decision under review
was one by the Commissioner of Patents (“Commissioner”) dated August 1, 2006,
where the payment of a patent application maintenance fee and a reinstatement
fee made by the appellant was refused. For the reasons that follow, I would
dismiss the appeal.
FACTS
[2]
This
case involves Canadian Patent Application 2,454,417, whose effective date of
the patent filing was July 31, 2002. The first date on which payment of the
maintenance fee was to be paid was the second anniversary of the filing, namely
July 31, 2004. However, due to a clerical error, the appellant’s Canadian
agents thought that the filing date was July 1, 2003, and thus they thought
that the first maintenance fee would not be due until July 1, 2005.
[3]
The
maintenance fee was not paid on July 31, 2004, and thus the patent application
was deemed to be abandoned on August 2, 2004 by reason of paragraph 73(1)(c)
of the Patent Act, R.S.C. 1985, c. P-4 (the “Patent Act”). The
Canadian Intellectual Property Office (“CIPO”) purportedly sent a Notice of
Abandonment to the appellant on September 27, 2004, though the appellant says
that such a notice had never been received.
[4]
Assuming
that it was paying the first maintenance fee, on July 15, 2005 the appellant
wrote the following letter to the Commissioner (“the appellant’s letter”):
Included in
today’s payment is the maintenance fee of $100.00 which is required for
anniversary 2 for this case. The applicant has elected to pay this fee as a
Regular entity.
The Commissioner
is hereby authorized to debit any additional fee or credit any overpayment
associated with this communication directly from or to our deposit account…
[5]
On
September 7, 2005, CIPO wrote the following in response:
The
maintenance fee was due on August 2, 2004.
Therefore,
please note that if the fee to maintain a patent application is not totally
paid before the start of a scheduled period, Canadian practice allows 12 months
grace period within which the required maintenance fee and a $200.00 reinstatement
fee payment may be paid. According to our records that period ended on August
1, 2005. Consequently, we regret to inform you that this application is now
dead.
In accordance
with section 4(1) of the Patent Rules, a refund in the amount of $100.00, will
be issued upon request. …
STANDARD OF REVIEW
[6]
The
Commissioner’s decision is reviewable by the Federal Court pursuant to section
18.1(3) of the Federal Courts Act, R.S.C. 1985, c. F-7: see Eiba v.
Canada, 2004 FC 250 at paragraphs 32-33. The applications judge decided
this case as if the Commissioner’s decision was to be reviewed on a correctness
standard. The pragmatic and functional approach to determining the standard of
review yields the same result. There is no statutory right of review for a Commissioner’s
decision made under section 73 of the Patent Act, which points to less
deference. Most crucial, however, is the nature of the Commissioner’s decision.
The requirements under subsection 73(3) of the Patent Act are manifestly
non-discretionary with respect to the Commissioner’s decision. This case, in
turn, centres exclusively on the proper interpretation of the provision. As a
result, the standard of review is correctness. This is consistent with a
previous decision by this Court where the standard of review for a
Commissioner’s decision to accept top-up payments for patent maintenance
fees was correctness: Dutch Industries, infra, at
paragraph 23.
LEGISLATION
[7]
The
appellant argues that their letter constituted a request to reinstate their
patent application. The requirements to reinstate a patent application are
outlined under subsection 73(3) of the Patent Act, which provides:
|
73.(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.
|
73. (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.
|
These three requirements must be performed
within twelve months of the abandonment of the application: section 152 of the
Patent Rules, S.O.R. /96-423 ("Patent Rules").
ANALYSIS
[8]
The
respondent draws the Court’s attention to the decisions of Pfizer Inc. v.
Canada (Commissioner of Patents) (2000), 9 C.P.R. (4th) 13 (C.A.), P.E.
Fusion, LLC v. Canada, 2004 FC 645, and Eiba v. Canada, 2004 FC 250
(“Eiba”). These cases demonstrate that where patent holders fail to
follow the strict statutory requirements of the Patent Act and the Patent
Rules, the patent applications cannot be reinstated in law. Indeed, the
facts in Eiba, where the Federal Court did not question the
Commissioner’s decision that there had been no reinstatement, are quite similar
to those before this Court.
[9]
The
applications judge concluded that that the appellant’s letter did not
constitute a request for reinstatement as described in paragraph 73(3)(a)
of the Patent Act. In my view, he was correct to do so. The requirements
in subsection 73(3) of the Patent Act are set out in such a way as to
demand that the applicant must make an explicit request for reinstatement. One
cannot construe the appellant's letter as being an explicit request for
reinstatement for the purposes of paragraph 73(3)(a). The appellant’s
letter was sent for the purposes of paying a maintenance fee, and nothing more.
Indeed, at the time the appellant’s letter was sent, the appellant was unaware
that its patent was deemed to be abandoned. The boiler-plate language used by
the appellant – “The Commissioner is hereby authorized to debit any additional
fee or credit any overpayment associated with this communication directly from
or to our deposit account…” – cannot be said to constitute a request for
reinstatement. This language appears to be regularly used in correspondence
with CIPO. This very same language can be found in other correspondence to
CIPO, such as a letter written by the appellant on January 20, 2004, which was
sent in order to submit an entry form and preliminary examination report for
the purposes of the national entry into Canada of their
patent application. The January 20, 2004 letter clearly could not have
constituted a request for reinstatement, for there was nothing to be
reinstated. If such language can be used in the context of the national entry
of a patent application, how can it also be described as a request for
reinstatement?
[10]
The
use of such language is not limited to the appellant: I would note the
following correspondence cited in the case of Wicks v. Canada
(Commissioner of Patents), 2007 FC 222, 59 C.P.R. (4th) 67 at 77:
The applicant
forwarded $550 to CIPO and authorized the Commissioner to “make any and all
appropriate action” and to debit a Visa account for “whatever additional sum of
money is needed to effect payment of any additional fees”.
Although the letter in Wicks was
written subsequent to the letter that is the subject of dispute before this
Court, it nevertheless demonstrates that applicants are inclined to use vague
language in order to minimize their own risk without having to direct their
minds to any specific problem.
[11]
I
also agree with the concerns of the applications judge with respect to the possible
implications of the appellant’s reasoning: it would lead to the absurd result
where every time payment of a maintenance fee is offered using the sort of
boiler-plate form noted above, the Commissioner should read into the payment an
implicit request for reinstatement or some other implicit request in order to
maintain their patent application in good standing. CIPO receives many patent
applications and letters relating to such patent applications each year. Would
staff members of CIPO now have to read every letter that comes into its office
with a view to inferring some intention of the writer not clearly specified?
Such an outcome would lead to potentially inconsistent results. This outcome
seems even more serious when one considers third parties who may be
scrutinizing the file of a patent application and relying on the contents of
that file. Will they also have to see whether or not certain words can possibly
be construed as a request for reinstatement? Those third parties may wish to
rely on an apparent absence of a request for reinstatement and take action
which would constitute infringement in the event that the patent eventually
issues. The appellant’s interpretation of the Patent Act and the
boiler-plate language would force innocent third parties to choose between
waiting for some resolution of the problem or proceeding with actions which may
put themselves at risk. Finally, it is difficult to imagine what other
implications there would be if the appellant’s interpretation is accepted. What
other uncertainties would be created?
[12]
The
onus is on the applicant to comply with the Patent Act, rather than on
the Commissioner to attempt to interpret vague communications. That was the
approach taken by Justice Létourneau in F. Hoffman-LaRoche AG v. Canada
(Commissioner of Patents), 2005 FCA 399 at paragraph 6:
However, whatever errors
the Commissioner may have committed in its own internal classification of the
patent for administrative purposes, these errors do not have the effect of relieving
the appellant of its statutory obligations under the Act. Nor do they have the
effect of creating, in relation to section 46, a joint or shared responsibility
that would allow avoidance of the legal consequences resulting from the
appellant’s failure to comply with section 46. [Emphasis
added.]
I recognize that this case was about a
re-issuing of a patent and not a reinstatement of a patent application but the
principle remains the same.
[13]
This
Court has held that the purpose of the maintenance fee regime, besides providing the
Patent Office with a means of recovering the costs of administering the patent
system, is to discourage
the proliferation of deadwood patents and patent applications by requiring
patentees and patent applicants to take steps to keep them in good standing: Dutch
Industries Ltd. v. Barton No-Till Disk Inc., 2003 FCA 121 leave to appeal
to S.C.C. refused, 29738 (May 5, 2003) (“Dutch Industries”) at paragraph
30. The requirements under subsection 73(3) of the Patent Act to reinstate
an abandoned patent application deny the Commissioner any ability to exercise
his or her discretion. The elimination of any discretion on behalf of the
Commissioner reflects Parliament’s intention to provide for a concrete, strict,
and thus predictable regime governing the reinstatement of patent applications.
It was such an approach that prevented the Commissioner from accepting top-up
payments when patent applicants or patentees were paying the incorrect
maintenance fee as there was no statutory authority to accept them: Dutch
Industries, supra. The appellant’s liberal interpretation of
what constitutes a “request” for the purposes of paragraph 73(3)(a) of
the Patent Act would not accord with such a regime, nor would it be
consistent with the modern principle of statutory interpretation: see Elmer A.
Driedger, Construction of Statutes, 2nd ed., (Toronto:
Butterworths, 1983) at 87.
CONCLUSION
[14]
For
these reasons, I would dismiss the appeal. Costs will not be awarded as they
were not requested by the respondent.
"J.
Edgar Sexton"
"I
agree
M. Nadon J.A."
"I
agree
C. Michael Ryer J.A."
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