Date: 20031231
Docket: T-407-02
Citation: 2003 FC 1531
Ottawa, Ontario, this 31st day of December, 2003
Present: The Honourable Justice James Russell
BETWEEN:
WALTER MILANI
Applicant
and
MICHAEL PETER SAKNO
Respondent
REASONS FOR ORDER AND ORDER
[1] This is an application for judicial review of a decision of the Patent Appeal Board ("Board") dated February 8, 2002 ("Decision") in relation to Canadian patent application No. 2,319,876 ("876 Application").
[2] There is a related application for judicial review of the decision of the Board concerning Canadian patent application No. 2,331,199 ("199 Application") as Court file No. T-406-02 which the Court heard at the same time.
[3] In the Decision, the Board held that Michael Peter Sakno, the Respondent in this application, was the "authorized correspondent" under s. 2 of the Patent Rules for the purpose of the prosecution and maintenance of the '876 Application. The Applicant takes issue with this and believes that, in so holding, the Board has committed a reviewable error.
BACKGROUND
[4] The background dispute between the parties has a considerable history and is fraught with cross allegations of wrongdoing that are matters for the judge who hears them and are not relevant to the narrow legal issues that are the subject matter of this application.
[5] For purposes of this application, suffice it to say that a dispute has arisen between the parties over the ownership of the patent in the '876 Application. That dispute has resulted in a series of communications between the parties, and between the parties and the Canadian Patent Office, aimed at asserting proprietary rights in the '876 Patent and at changing the record at the Patent Office to the advantage of one side at the expense of the other.
[6] The '876 Application was filed at the Canadian Patent office on September 19, 2000. The accompanying petition identified the Respondent as the sole inventor and as the owner of the whole interest in the invention. The Petition also appointed Dennison Associates ("Dennison") as patent agent for the '876 Application.
[7] Dennison signed the petition which indicated that Dennison was acting as agent for the Respondent.
[8] By the late summer of 2001, a serious dispute had arisen between the Respondent and Royal Group Technologies Limited, the Applicant's employer, regarding ownership of the patent rights in '876 Application.
[9] On September 10, 2001, the Respondent wrote to Dennison and specifically withdrew Dennison's authority to act on his behalf in respect of the '876 Application.
[10] On September 19, 2001, the Respondent executed a document for submission to the Canadian Patent Office by which he revoked and cancelled the prior appointment of Dennison as his patent agent for the '876 Application, and by which he appointed David French as his sole patent agent for the '876 Application. That document was received by the Canadian Patent Office on September 24, 2001.
[11] On September 27, 2001, the Patent Office sent a letter to David French acknowledging the revocation of Dennison and the appointment of David French as patent agent for the '876 Application. The Patent Office also advised Dennison by letter of the same date that Dennison was no longer patent agent of record for the Respondent on the '876 Application.
[12] After receiving the Respondent's letter of September 10, 2001, Dennison waited until September 27, 2001, to reply. In that letter Dennison stated as follows:
We have your letter of September 10, 2001.
Your letter appears to suggest, disingenuously, that we have been acting on your behalf. As you are and at all times have been aware, we have acted, and continue to act, only on behalf of our client Royal Group Technologies Limited and its subsidiaries and related companies ("Royal")
[13] However, in their reply, Dennison did not inform the Respondent of the steps they had taken in the Patent Office after receiving the Respondent's letter of September 10, 2001, withdrawing their authority to act as his patent agent. Dennison had, following receipt of the Respondent's letter of September 10, 2001:
(a) chosen not to advise the Patent Office of the withdrawal of their authority to act as agent for the Respondent on the '876 Application;
(b) continued to act towards the Patent Office as though they still had authority to act for the Respondent;
(c) taken steps to have David French removed as associate patent agent;
(d) taken a series of steps to add the Applicant as co-inventor on the '876 Application.
[14] By letter dated September 18, 2001, Dennison wrote to the Patent Office to cancel the appointment of David French as associate agent on the '876 Application. David French had been acknowledged by the Patent Office as associate agent in June, 2001.
[15] In response, the Patent Office sent a letter dated September 19, 2001, to David French advising that his appointment as associate agent was cancelled. The consequence of this was that Patent Office correspondence on the '876 Application was directed solely to Dennison as ostensible agent for the Respondent and as agent for the Applicant.
[16] Concurrently, by letter dated September 20, 2001, Scott Johnson, a partner at Dennison, wrote to the Patent Office requesting the addition of the Applicant as co-inventor for the '876 Application. That letter included factual allegations from Scott Johnson purporting to justify the addition of the Applicant as co-inventor. On September 21, 2001, Dennison submitted an affidavit sworn by Scott Johnson, essentially reiterating the factual allegations set out in his letter of September 20, 2001.
[17] On September 25, 2001, the Patent Office sent a letter to Dennison indicating that the Applicant had been added as co-inventor on the '876 Application.
[18] The Respondent was unaware of the steps that had been taken by Dennison since his letter of September 10, 2001. He only learned of the actions of Dennison in this regard when he reviewed the file history of the '876 Application, following receipt of the September 27, 2001, letter from Dennison.
[19] The Applicant is an employee of Royal Group Technologies Limited, which company disputes the Respondent's claim to ownership of the patent in the '876 Application. This is the same company on whose behalf Dennison claims it was always acting, notwithstanding any representations to the Patent Office which show Dennison as agent for the Respondent.
[20] While the Respondent was aware of an allegation made by Royal Group Technologies Limited of a claim to ownership in the relevant patent, he alleges that no claim to co-inventorship was ever made prior to his letter of September 10, 2001, to Dennison.
[21] It was not until October 24, 2001, that the Respondent received confirmation from the Patent Office that the Applicant had been added as co-inventor for the '876 Application. In that letter, the Commissioner took the position that, since there was no "common patent agent of record" acting on behalf of both the Respondent and the Applicant, the identity of the "authorized correspondent" would be determined in accordance with s. 2 of the Patent Rules.
[22] On January 24, 2002, Dennison provided the Patent Office with an Appointment of Agent for the '876 Application signed only by the Applicant.
[23] On February 8, 2002, Peter Davies, the Chairman of the Board, wrote to the Respondent and the Applicant to advise that, pursuant to s. 2 of the Patent Rules, the Respondent as the first named inventor was the "authorized correspondent". It is from that Decision that the Applicant now seeks judicial review.
DECISION UNDER REVIEW
[24] In the Decision, the Board took the following position:
a. there was no common patent agent of record appointed by the Applicant and the Respondent for the '876 Application;
b. Dennison did not have the authority to act for the Respondent and the Applicant;
c. in such a situation the identity of the "authorized correspondent" has to be determined in accordance with s. 2 of the Patent Rules;
d. to appoint an agent, the notice to the Patent Office must be signed by all applicants as an application;
e. to revoke a patent agent it is only necessary for one applicant to sign the revocation;
f. the Respondent, as one of two applicants on the '876 Application, could revoke Dennison as patent agent and did so on September 24, 2001;
g. as of September 24, 2001, there was no patent agent for the '876 Application;
h. in such a situation, ss. 2(a)(iii) of the Patent Rules is applicable to decide who the "authorized correspondent" should be;
i. since the only petition presented to the Patent Office named the Respondent as the applicant, the Respondent had become the "authorized correspondent."
PERTINENT LEGISLATION
[25] The relevant sections of the Patent Rules SOR/96-423, are as follows:
| 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)
... 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.
(2) For the purpose of appointing, in respect of an application, a patent agent or an associate patent agent or of revoking the appointment of a patent agent or an associate patent agent, the Commissioner shall have regard to communications from any of the applicant, the patent agent and the associate patent agent.
...
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.
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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)
...
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.
(2) Aux fins de la nomination d'un agent de brevets ou d'un coagent ou de la révocation de cette nomination dans le cadre d'une demande, le commissaire ne tient compte que des communications reçues du demandeur, de l'agent de brevets et du coagent.
...
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.
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[26] The relevant section of the Interpretation Act RS.C. 1985, c.I-21, as amended, is as follows:
| 33(2) Words in the singular include the plural, and words in the plural include the singular.
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33(2) Le pluriel ou le singulier s'appliquent, le cas échéant, à l'unité et à la pluralité.
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[27] The relevant section of the Federal Court Act is as follows:
| 18.1(2) Time limitation
(2) An application for judicial review in respect of a decision or order of a federal board, commission or other tribunal shall be made within thirty days after the time the decision or order was first communicated by the federal board, commission or other tribunal to the office of the Deputy Attorney General of Canada or to the party directly affected thereby, or within such further time as a judge of the Trial Division may, either before or after the expiration of those thirty days, fix or allow.
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18.1(2) Délai de présentation
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| (2) Les demandes de contrôle judiciaire sont à présenter dans les trente jours qui suivent la première communication, par l'office fédéral, de sa décision ou de son ordonnance au bureau du sous-procureur général du Canada ou à la partie concernée, ou dans le délai supplémentaire qu'un juge de la Section de première instance peut, avant ou après l'expiration de ces trente jours, fixer ou accorder.
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ISSUES RAISED
[28] The Applicant raises the following issues and makes the following assertions concerning the Decision:
a. the Board was wrong to conclude that, in a patent application involving several applicants, it is sufficient for one applicant to sign a revocation;
b. the Board was wrong to conclude that sub-paragraph (a) of the definition of "authorized correspondent" in s. 2 of the Patent Rules governed the circumstances of the case at bar and made the Respondent the "authorized correspondent" under the '876 Application;
c. the Board was wrong:
(1) to reject the Applicant's argument that the appointment of Dennison as patent agent could only be revoked pursuant to Rule 20(3) of the Patent Rules; and
(2) for failing to find that, in accordance with s. 33(2) of the Interpretation Act, Dennison had not been validly revoked as patent agent so that Dennison remained the "authorized correspondent" for the '876 Application by virtue of sub-paragraph (c) in s. 2 and s. 20 of the Patent Rules.
[29] In essence, the Applicant's position is that the appointment of Dennison as patent agent under the '876 Application was never validly revoked, so that Dennison remains the "authorized correspondent" under the relevant law and rules.
[30] The Respondent takes the position that this application must fail because:
a) the Applicant is really asking the Court to review the decision of the Patent Office to revoke Dennison as patent agent, which decision was communicated to the Applicant by letter dated September 27, 2001, and so is time-barred under s. 18.1(2) of the Federal Court Act; and
b) even if this application is not time-barred, the Board committed no reviewable error in concluding that the Respondent, as the first-named inventor and owner of the patent under the '876 Application, was the "authorized correspondent."
[31] The Respondent also raises an objection to the affidavit of Doreen Hardy-Smith that was filed with the Court but was not before the Board at the time of the impugned decision. The Respondent feels that this affidavit is inadmissible for purposes of this application.
[32] It is trite law that a reviewing court is bound by the record filed before the board or tribunal in question whose decision is under appeal: (Rahi v. Minister of Employment and Immigration (May 28, 1990), 90-A-1343 (F.C.A.) per MacGuigan J.A.). While I recognize that there is an exception to this rule in the case of jurisdictional error, no such issue arises on these facts. For purposes of this review, I do not think that anything turns on the information contained in the affidavit of Ms. Hardy-Smith but, to the extent that it is not in accordance with the jurisprudence concerning the filing of new evidence with the reviewing Court, I have disregarded it and do not feel it is necessary to address this issue further.
ANALYSIS
[33] This matter was heard on October 14, 2003, together with a related application on Docket T-406-02 which dealt with Canadian patent application No. 2, 331,099 ("'099 Application").
[34] Counsel indicated at the hearing that, notwithstanding some factual variations between the two applications, this application for judicial review of the Decision gives rise to the same legal issues and falls to be determined in accordance with application T-406-02.
[35] Having reviewed the materials and submissions on this application, I have determined that this is indeed the case.
[36] I have, concurrently with the Reasons for Order and Order in this application, completed and signed the Reasons for Order and Order on application T-406-02.
[37] In making the Reasons for Order and Order in this application, T-407-02, I adopt the analysis, reasons and conclusions rendered in application T-406-02, mutatis mutandis.
ORDER
THIS COURT ORDERS that
1. The Application is dismissed.
2. The Respondent shall have the costs of this application payable immediately and irrespective of the cause.
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
DOCKET: T-406-02
T-407-02
STYLE OF CAUSE: BRIAN M. DIDONE ET AL
Applicant
- and -
MICHAEL PETER SAKNO
Respondent
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: October 14, 2003
REASONS FOR ORDER
AND ORDER BY: RUSSELL, J
DATED: December 31, 2003
APPEARANCES BY: Mr. Frank Farfan
For the Applicant
Mr. Michael Crinson
For the Respondent
SOLICITORS OF RECORD: Mr. Frank Farfan
MacBeth & Johnson
133 Richmond St West, Suite 301
Toronto, Ontario
M5H 2L7
For the Applicant
Michael Crinson
Dimock Stratton Clarizio LLP
20 Queen St West, Suite 3202 Box 102
Toronto, Ontario
M5H 3R3
For the Respondent
FEDERAL COURT OF CANADA
Date: 20031014
Docket: T-406-02
T-407-02
BETWEEN:
BRIAN M. DIDONE ET AL
Applicant
- and -
MICHAEL PETER SAKNO
Respondent
REASONS FOR ORDER
AND ORDER
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