Date: 20051129
Docket: A-591-03
Citation: 2005 FCA 399
CORAM: RICHARD C.J.
LÉTOURNEAU J.A.
MALONE J.A.
BETWEEN:
F. HOFFMANN-LA ROCHE AG
Appellant
and
THE COMMISSIONER OF PATENTS
Respondent
Heard at Ottawa, Ontario, on November 29, 2005.
Judgment delivered from the Bench at Ottawa, Ontario, on November 29, 2005.
REASONS FOR JUDGMENT OF THE COURT BY: LÉTOURNEAU J.A.
Date: 20051129
Docket: A-591-03
Citation: 2005 FCA 399
CORAM: RICHARD C.J.
LÉTOURNEAU J.A.
MALONE J.A.
BETWEEN:
F. HOFFMANN-LA ROCHE AG
Appellant
and
THE COMMISSIONER OF PATENTS
Respondent
REASONS FOR JUDGMENT OF THE COURT
(Delivered from the Bench at Ottawa, Ontario, on November 29, 2005)
LÉTOURNEAU J.A.
[1] We see no error in the Federal Court's decision that warrants our intervention. The appellant who is not a newcomer in the field of patents applied for a re-issuance of its '429' Patent, obtained such re-issuance as the '121' Patent, knew its '121' Patent was a re-issued patent, knew it had to pay the fees required by section 46 of the Patent Act, R.S.C. 1985, c. P-4 (Act), but failed to do so. Pursuant to subsection 46(2) of the Act, the appellant's '121' Patent lapsed by the mandatory effect of the Act.
[2] At the hearing, the appellant abandoned estoppel as a ground of appeal and did not pursue orally its argument based on equitable relief. In addition, it relied upon the doctrine of legitimate expectation not as a ground of relief of its own, but rather as a component of a duty of fairness that it says the Commissioner of Patents (Commissioner) has to comply with.
[3] Basically, the position of the appellant, relying upon the decision of the Supreme Court of Canada in Baker v. Canada, [1999] 2 S.C.R. 817, at page 836, is that an administrative decision affecting the rights, privileges or interests of an individual is sufficient to trigger the application of the duty of fairness. Its contention is that the Commissioner made a decision with respect to the fact that the maintenance fees for the appellant's '121' Patent had not been paid and that the Patent had lapsed. That decision entailed a duty of fairness, namely that the appellant be given notice before it be taken. The appellant does not question that the Commissioner did not err in stating the fact that fees were not paid.
[4] With respect, the appellant puts a wrong interpretation on what the Commissioner did. The Commissioner simply informed the appellant that the fees had not been paid and drew its attention to the legal consequences that follow from subsection 46(2) of the Act. No decision determinative of the appellant's rights was made by the Commissioner. The rights of the appellant were affected by the operation of the Act.
[5] The appellant submits that the failure to pay the fees in due time was a result of a shared error between itself and the Commissioner. There is no doubt that the Commissioner made some errors in this case.
[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.
[7] The Federal Court rightly concluded that the re-issued patent expired entirely from the operation of the Act and that it, as well as the Commissioner, had no authority to extend the time for paying the maintenance fee as this would amount to substituting their own deadline for that enacted by Parliament: see the decision, at paragraph 43.
[8] There is no doubt that the consequences of a failure to pay the maintenance fees are serious. However, the Act is clear in this respect and the courts, bound as they are to apply the law, cannot resuscitate a patent that the Act clearly says had expired. Neither the Commissioner nor the Federal Court can amend section 46 of the Act so as to relieve the appellant of its omission to comply with it.
[9] The appeal will be dismissed without costs as the respondent did not seek them.
"Gilles Létourneau"
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: A-591-03
STYLE OF CAUSE: F. HOFFMANN-LA ROCHE AG v. THE
COMMISSIONER OF PATENTS
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: November 29, 2005
REASONS FOR JUDGMENT
OF THE COURT BY: RICHARD C.J.
LÉTOURNEAU J.A.
MALONE J.A.
DELIVERED FROM THE
BENCH BY: LÉTOURNEAU J.A.
APPEARANCES:
| Mr. Kevin L. LaRoche
Ms. Christine Collard
|
FOR THE APPELLANT
|
| Mr. F.(Rick) Woyiwada
|
FOR THE RESPONDENT
|
SOLICITORS OF RECORD:
| BORDEN, LADNER, GERVAIS LLp
Ottawa, Ontario
|
FOR THE APPELLANT
|
| John H. Sims Q.C.
Deputy Attorney General of Canada
Ottawa, Ontario
|
FOR THE RESPONDENT
|
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