Didone v. Sakno, 2003 FC 1530

Date: 20031231

Docket: T-406-02

Citation: 2003 FC 1530

Ottawa, Ontario, this 31^st day of December, 2003

Present:           The Honourable Justice James Russell                                  

BETWEEN:

                                          BRIAN M. DIDONE and MANFRED HARLE

                                                                                                                                                      Applicants

                                                                                 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. 2,331,099 ("099 Application").

[2]                 There is a related application for judicial review of the decision of the Board concerning Canadian patent application No. 2,319,876 ("876 Application") as Court file No. T-407-02 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 '099 Application. The Applicants take issue with this and believe 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 '099 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 '099 Patent and at changing the record at the Patent Office to the advantage of one side at the expense of the other.

[6]                 The '099 Application was filed at the Canadian Patent office on January 16, 2001. 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 '099 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 Applicants' employer, regarding ownership of the patent rights in '099 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 '099 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 '099 Application, and by which he appointed David French as his sole patent agent for the '099 Application. That document was received by the Canadian Patent Office on Tuesday, September 25, 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 '099 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 '099 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 '099 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 Applicants as co-inventors on the '099 Application.

[14]            By letter dated September 18, 2001, and by representing themselves as agent for the Respondent, Dennison wrote to the Patent Office to cancel the appointment of David French as associate agent on the '099 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 '099 Application was directed solely to Dennison as ostensible agent for the Respondent and as agent for the Applicants.

[16]            Concurrently, by letter dated September 18, 2001, Scott Johnson, a partner at Dennison, wrote to the Patent Office requesting the addition of the Applicants as co-inventors for the '099 Applicant. That letter included factual allegations from Scott Johnson purporting to justify the addition of the Applicants as co-inventors. On September 21, 2001, Dennison submitted an affidavit sworn by Scott Johnson, essentially reiterating the factual allegations set out in his letter of September 18, 2001.

[17]            On September 25, 2001, the Patent Office sent a letter to Dennison indicating that, based on Dennison's letter of September 21, 2001, and on the understanding that Dennison was agent for the Respondent, the Applicants had been added as co-inventors on the '099 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 '099 Application, following receipt of the September 27, 2001, letter from Dennison.

[19]            The Applicants are employees of Royal Group Technologies Limited, which company disputes the Respondent's claim to ownership of the patent in the '099 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 November 20, 2001, that the Respondent received confirmation from the Patent Office that the Applicants had been added as co-inventors for the '099 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 Applicants, the identity of the "authorized correspondent" would be determined in accordance with s. 2 of the Patent Rules.

[22]            On January 31, 2002, Dennison provided the Patent Office with an Appointment of Agent for the '099 Application signed only by the Applicants.

[23]            On February 8, 2002, Peter Davies, the Chairman of the Board, wrote to the Respondent and the Applicants 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 Applicants now seek 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 Applicants and the Respondent for the '099 Application;

b.          Dennison did not have the authority to act for all three of the Respondent and the Applicants;

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 three applicants on the '099 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 '099 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:

[26]       The relevant section of the Interpretation Act RS.C. 1985, c.I-21, as amended, is as follows:

[27]        The relevant section of the Federal Court Act is as follows:

ISSUES RAISED

[28]            The Applicants raise the following issues and make 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 '099 Application;

c.          the Board was wrong:

(1)         to reject the Applicants' 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 '099 Application by virtue of sub-paragraph (c) in s. 2 and s. 20 of the Patent Rules.

[29]            In essence, the Applicants' position is that the appointment of Dennison as patent agent under the '099 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 Applicants are really asking the Court to review the decision of the Patent Office to revoke Dennison as patent agent, which decision was communicated to the Applicants 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 '099 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

Should the application be time-barred?

[33]            The Respondent submits that s. 18.1(2) of the Federal Court Act provides that an application for judicial review must be made within thirty days after the time the decision was first communicated to the party affected thereby, or within such further time as a judge may allow.

[34]            The Respondent further submits that the decision alleged to be under review is that of the Chairman of the Patent Appeal Board dated February 8, 2002, determining who is the "authorized correspondent" for purposes of the prosecution and maintenance of the '099 Application. The Respondent submits, however, that the real decision being challenged in the argument made by the Applicant is the decision of the Commissioner of Patents that Dennison had been revoked as agent for the Respondent.

[35]            The decision on revocation of Dennison was first communicated to the Applicants by letter dated September 27, 2001.

[36]            Pursuant to s. 18.1(2), any judicial review of that decision was required to be brought no later than October 27, 2001. However, no judicial review application was filed by the Applicants until March, 2002.

[37]            The Respondent contends that the Applicants have provided no explanation for the delay, and nor has an extension of time been sought from the Court.

[38]            Accordingly, the Respondent submits that at least to the extent the Applicants question the decision of the Commissioner of Patents to revoke Dennison as agents for the Respondent, the application for judicial review is barred by section 18.1(2) of the Federal Court Act.

[39]            The Applicants take the position that they are not time-barred in raising the revocation in this application. The Commissioner of Patents has never said that he is functus officio as regards the revocation and he is at liberty to reconsider it any time it is raised.

[40]            I do not think that this answer by the Applicants meets the arguments raised by the Respondent. The Patent Office may well be willing to reconsider decisions it has made from time to time in light of new information that it receives. But this has nothing to do with judicial review of a Patent Office decision under s. 18.1 of the Federal Court Act.

[41]            Dennison was informed of the revocation by Joanne Pétrin, Maintenance Fee Clerk, in a letter dated September 27, 2001, which read as follows:

This is to inform you that your appointment as representative and agent of record, has now been revoked against the above mentioned application.

Should you require any further information or assistance, please do not hesitate to contact the undersigned.

[42]            By the time Dennison received this communication of revocation from the Patent office, Dennison was aware that the Respondent (in his letter of September 10, 2001) had terminated the agency relationship.

[43]            It is significant that Dennison did not challenge the revocation at that time but, instead, took various steps that led to the Applicants being added as co-inventors. In allowing this to occur, the Patent Office made it clear that it was on the understanding that Dennison was the agent for the Respondent. But Dennison chose to keep quiet about this issue and, because the objective of having the Applicants listed as co-inventors was achieved, it appears in retrospect that the subterfuge worked. Had Dennison questioned the revocation decision at the time it received the September 27, 2001, letter from the Patent Office, the whole matter of the Respondents' withdrawing authority from Dennison to act for him would have come to light and Dennison and the Applicants would have been thwarted in their objective of having the record at the Patent Office show the Applicants as co-inventors.

[44]            What Dennison and the Applicants did not anticipate was that the revocation would eventually lead to a further decision by the Patent Office that there was no agent of record so that, in accordance with ss. 2(a)(iii) of the Patent Rules, the Respondent would become the "authorized correspondent" in the '099 Application and would thus retain some control over the prosecution of the patent.

[45]            In making these observations, I in no way wish to imply that the Respondent has a better claim to the patent in the '099 Application than the Applicants. But it is clear from the record before me that the Applicants did try to advance their cause by means of a subterfuge with the Patent Office. Dennison continued to act and communicate as though it was still agent for the Respondent when it knew the Respondent had withdrawn his consent to that agency relationship. In this regard, then, the Applicants are the creators of the position they now find themselves in and that underlies this application. They may be totally correct in their allegations that the Respondent has no rights to the patent, but that is an issue for another forum and is not before me now.

[46]            Having decided not to challenge the revocation in September, 2001, the Applicants now wish to challenge it because of the Decision made by the Board on February 8, 2002.

[47]            The Applicants' principal argument in this application is that, pursuant to s. 20(2) of the Patent Rules, Dennison was appointed as agent for the '099 Application in the petition that was filed on January 16, 2001. This made Dennison the "authorized correspondent" under ss. 2(c) of the Patent Rules.

[48]            The Applicants then say that the appointment of Dennison as agent was never properly revoked. Hence, Dennison remains agent and "authorized correspondent."

[49]            The Applicants' case is almost entirely concerned with the revocation and its legitimacy. But the Applicants themselves chose not to challenge the revocation when they received notice of it on September 27, 2001, because, I suspect, such a challenge could have thwarted their plan to advance the inventorship interests of the Applicants by having them recognized on the record at the Patent Registry.

[50]            The Applicants want the advantages of their subterfuge (inventorship recognition) and to remove the disadvantages (the naming of the Respondent as authorized correspondent).

[51]            In my opinion, the Applicants cannot do this. Having decided to leave the revocation decision unchallenged to further their cause, they cannot now challenge it at this late date because it has resulted in consequences that they did not foresee when they adopted their subterfuge.

[52]            I conclude, therefore, that in so far as the present application seeks to attack the revocation decision communicated to Dennison on September 27, 2001, it is time-barred. As the Applicants argument is based upon a reviewable error that "in making the Decision, the Commissioner has improperly had regard to a purported revocation," this is sufficient in itself to dispose of the application before me. However, should I be incorrect on this issue, I am also of the view that the application before me cannot succeed on its merits for the reasons that follow.

STANDARD OF REVIEW

[53]            As the Applicants point out, in order to determine the standard of review applicable to a decision of a board or tribunal, it is necessary to conduct a pragmatic and functional analysis of a legislative intent in order to determine the level of deference that should be accorded to the decision in question.

[54]            The Applicants characterize the issue in this case (the identification of the "authorized correspondent") as being a question of law and, applying a pragmatic and functional analysis (there is no privative clause; the Commission of Patents has no particular expertise to interpret the provisions of the Patent Act and Patent Rules at issue here; the Decision establishes rights between parties; the question is one of law that will have a determinative impact on future decisions) urge the Court to apply a standard of correctness.

[55]            While acknowledging that there is no case law directly on point, the Applicants refer the Court to Dutch Industries v. Canada (Commissioner of Patents) (2001), 14 C.P.R. (4^th) 499 (F.C.T.D.) and Harvard College v. Canada (Commissioner of Patents) (2000), 7 C.P.R. (4^th) 1 (F.C.A.) in support of their position.

[56]            The Respondent, on the other hand, argues that the question of who is the "authorized correspondent" for the purpose of maintaining or prosecuting a patent falls uniquely within the expertise of the Commissioner of Patents.

[57]            The Respondent characterizes the Decision made in this case as being one that applied the statute to the facts and, thus, as one of mixed fact and law.

[58]            Applying a pragmatic and functional analysis, the Respondent urges the Court to observe the maximum deference to the Decision and to apply a standard of patent unreasonableness.

[59]            The Respondent directs me to Housen v. Nikolaisen, [2002] S.C.R. 235 and Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers et al., [2002] 4F.C. 3 in support of his position on this issue.

[60]            Of the various authorities urged upon me by counsel, I find the decision of Dawson J. in Dutch Industries, supra, to be of most assistance for the case at bar. Significant guidance is provided by the following passages from that decision:

18.            In order to determine the standard of review applicable to the Commissioner's decisions it is necessary to conduct the pragmatic and functional analysis as explained by the Supreme Court of Canada in cases such as Pushpanathan v. Canada (Minister of Citizenship and Immigration), [1998] 1 S.C.R. 982.

19.            The pragmatic and functional approach requires consideration of the existence of a privative clause, the relative expertise of the decision-maker, the purpose of the legislation and the particular provisions at issue, and the nature of the question before the decision-maker.

20.            Applying those factors in turn, ss. 18 and 18.1 of the Federal Court Act provide that decisions of the Commissioner are amenable to judicial review. This is an intermediate provision between a full privative clause and an unrestricted right of appeal, and suggests some deference.

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 Harvard College v. Canada (Commissioner of Patents), [2000] 4 F.C. 528 at paragraph 183, 7 C.P.R. (4^th) 1 sub nom. Harvard College v. Canada (Commissioner of Patents) (C.A.), 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.

[61]            In the case at bar, the Decision can be broken down into two conclusions that were reached by the Board:

a.              "in order to revoke a patent agent it is sufficient for one of several applicants to sign the revocation"; and

b.              the Respondent validly revoked Dennison as patent agent as of September 24, 2001.

[62]            I regard the first conclusion as being a matter of law and the second, which applies the law to the facts, as being a question of mixed law and fact.

[63]            Applying a pragmatic and functional analysis to this case, I believe that expertise is the most important of the four factors to look at. And to use the words of Dawson J. in Dutch Industries, supra, while the Commission, or the Board in this case, has expertise with respect to a number of matters, I am not persuaded that such expertise extends to interpreting the relevant provisions of the Patent Act and the Patent Rules for the purpose of determining that it is sufficient for one of several applicants to sign a revocation. Hence, on this aspect of the Decision, I am of the view that the standard should be correctness.

[64]            As regards the second aspect of the Decision (that the Respondent, on the facts, had validly revoked Dennison as agent) I regard this as a question of mixed law and fact where the Board's expertise is substantial and requires a greater degree of deference. Hence, I regard the appropriate standard as being one of reasonableness simpliciter.

ANALYSIS

[65]            The Board states categorically in the Decision that "in order to revoke a patent agent it is sufficient for one of several applicants to sign the revocation." Is this correct?

[66]            Section 20 of the Patent Rules provides as follows:

[67]            Subsection 20(3) is the one upon which the Decision is based. There appears to be no dispute between the parties that the Respondent is an "applicant" or that Dennison was a "patent agent" validly appointed in the original petition of January 16, 2001. The dispute is whether the Respondent validly revoked the appointment.

[68]            Because Dennison was appointed as patent agent in the original petition, it became the "authorized correspondent" by virtue of ss. 2(c) of the Patent Rules. Section 2 of the Patent Rules reads as follows as regards the definition of "authorized correspondent":

[69]            The Applicants' argument with respect to ss. 20(3) of the Patent Rules is, essentially, that s. 33(2) of the Interpretation Act, which provides that, in legislation, words in the singular (in this case "applicant") include words in the plural (in this case "applicants"). Accordingly, if in fact there are multiple applicants, as there were in this case, ss. 20(3) requires that all of the applicants have to sign a revocation, which did not occur in this case.

[70]            The Applicants advance a similar argument with respect to ss. 6(2) of the Patent Rules, which reads as follows:

The Applicants say there is a requirement, in the case of multiple applicants, that a communication must be from all of the applicants.

[71]            The Respondent's position is that the Board's interpretation of the relevant Patent Rules and statutory provisions was correct.

[72]            In the Decision, the Board says that "to appoint an agent any notice must be signed by several applicants. However, in order to revoke a patent agent it is sufficient for one of several applicants to sign the revocation."

[73]            The rationale offered by the Board for making this distinction between ss. 20(2) and 20(3) of the Patent Rules is that "a patent agent is a person who acts on behalf of a single applicant or on the joint behalf of several applicants. If one applicant revokes that agent then the agent has no authority to act for the several applicants." No authority is offered for this position.

[74]            In the absence of binding authority on point, rules of statutory interpretation suggest that we "must seek the intent of Parliament by reading the words of the provision in context and according to their grammatical and ordinary sense, harmoniously with the scheme and object of the statute," to use the words of Major J. and Iacobucci J. in R. v. Jarvis, [2002] SCC 73, para. 77. In relation to the provisions of the Patent Act under consideration in this case, the interpretation adapted by the Board is the only one that, in my opinion, makes the scheme of the Act workable. The Applicants' interpretation favours the Applicants on the facts of this case but renders the Act unworkable on a general administrative scheme. It could not have been Parliament's intention to create such an unworkable situation.

[75]            I find that there was no inconsistency in the Boards interpretation of ss. 20(2) and 20(3) of the Patent Rules and that the Board's interpretation was correct. This is because, in the case of multiple applicants, a valid appointment as patent agent requires authority from all of the applicants. If one of the applicants subsequently withdraws that authority (as happened in the present case in accordance with the Respondent's letter to Dennison of September 10, 2003) then the patent agent no longer enjoys the authority of all of the applicants and notification of this fact to the Patent Office by any one of the applicants is sufficient to effect the revocation. To require notification by all of the applicants is impractical and would lead to undesirable consequences. Where a patent agent, as in this case, represents (indeed, insists that he only represents) the parties on one side of a dispute, it would be impossible to have all parties involved sign a revocation. And if this is the case, then to allow the patent agent to continue as the agent of record for all of the parties would be an inaccurate reflection of the actual situation and an invitation to abuse. This cannot have been Parliament's intent.

[76]            Even if I should be wrong in this interpretation of ss. 20(2) and 20(3) of the Patent Rules, for reasons that follow, I still conclude that a valid revocation occurred in this case because, at the time of the revocation, there was, in fact, only one applicant (the Respondent) and he provided a revocation of Dennison that was validly accepted by the Patent Office.

[77]            As regards the second important aspect of the Decision (that a valid revocation of Dennison as patent agent occurred in this case), the Applicants allege that this was an error because:

a)          the only purported revocation came from the Respondent; and

b)          the actual notice received by the Patent Office was not sufficient to achieve the revocation objective and for the Patent Office to have had regard to it was a reviewable error of law.

[78]            There is no doubt on the facts before me that, in the original application and petition of January 16, 2001, the Respondent was the only applicant and Dennison was appointed as patent agent.

[79]            The revocation of Dennison as patent agent occurred no later than September 27, 2001, when Dennison was informed by the Patent Office that "your appointment of representative and agent of record, has now been revoked against the above mentioned application."

[80]            Under s. 20(2) of the Patent Rules, a patent agent is appointed by submitting a notice to the Commissioner signed by the applicant.

[81]            The Applicants were added as co-inventors on the '099 Application in September, 2001, when, in accordance with a letter of September 25, 2001, the Patent Office informed Dennison that, based on the Dennison letter of September 21, 2001, and on the understanding that Dennison was agent for the Respondent, the Patent Office notified Dennison of this fact.

[82]            But it was not until January 31, 2002, that Dennison provided the Patent Office with an appointment of agent for the '099 Application signed by the Applicants.

[83]            This means that, at the time of the revocation decision in September, 2001, or indeed at any time subsequent to this, there was no notice of appointment signed by all of the applicants appointing Dennison as patent agent in accordance with ss. 20(2) of the Patent Rules. This is why the Board was correct to conclude in the Decision that "there is no common patent agent of record appointed by all three applicants":

On January 25, 2002, Dennison Associates submitted a letter inviting the Patent Office to name the patent agent of record since no agreement could be made with Mr. Sakno [the Respondent]. This was followed by a letter dated January 31, 2002, which included the appointment of Dennison Associates by Messrs. Didone and Harle [the Applicants]. Since Dennison Associates do not have authority to act for all three applicants, it follows cannot it [sic] be the agent of record to act on their joint behalf.

[84]            So the Applicants who, in this application, seek to set aside the Decision and the early revocation decision of September 27, 2001, upon which it is based, have never succeeded in having the Patent Office accept their agent as agent of record.

[85]            They merely say that by virtue of their becoming co-inventors on the record on or before September 25, 2001, their signatures are required on any valid notice of revocation under ss. 20(3) of the Patent Rules.

[86]            Bearing in mind the subterfuge that was used to achieve their status as co-inventors on the record, there is something incongruous about the Applicants seeking to assert rules that they have circumvented in order to gain a position that allows them to make such an assertion. In saying this, I again reiterate that I take no position as regards the ultimate merits of the Applicant's and their employer's rights to the patent in question. But once again it shows that if the Applicant's interpretation of s. 20(3) were correct, it would mean that parties who are able to persuade the Patent Office to accept them as co-inventors on the basis of an understanding that is incorrect (in this case that Dennison was agent for the Respondent) could then insist that their own agent, who has ceased to represent one of the applicants (in this case the Respondent) cannot be removed without their consent. In my opinion, this would be absurd.

[87]            Finally, the Applicants say that the Board erred by having regard to a purported revocation that was deficient and ineffective for a variety of reasons.

[88]            The controlling provision here is ss. 6(2) of the Patent Rules which reads as follows:

[89]            First of all, the Applicants say that, in making the decision on revocation the Commissioner improperly had regard to a communication to the Patent Office by David French who was neither the applicant under the '099 Application, the patent agent or the associate patent agent.

[90]            The Respondent executed a document entitled "Revocation and Appointment of New Agent and Representative for Service" dated September 19, 2001, which read as follows:

The undersigned inventor and applicant cancels all prior appointments of Agent and Representatives for Service and hereby appoints the following person as his Agent and Representative for Service, with full power of appointment and substitution. David J. French, Box 2486, Stn. D, Ottawa, ON    K1P 5W6 Tel.: 613-232-8389 Fax: 613-567-4689

[91]            A copy of this document was then faxed to the Patent Office by David French under cover of a letter dated September 24, 2000, which merely said "Please accept the enclosed Change of Agent form." The original was forwarded to the Patent Office by Mr. French under cover letter dated October 18, 2001.

[92]            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. Dennison was advised by letter of the same date.

[93]            In the Decision, it is acknowledged that the Respondent "could not appoint David French since the agreement of both Brian Didone and Manfred Harle [the Applicants] was required." But the Patent Office accepted the revocation of Dennison based upon the September 24, 2001, fax from Mr. French that included the Respondent's "Revocation and Appointment of New Agent and Representative for Service."

[94]            Subsection 20(3) of the Patent Rules allows revocation after submission to the Commissioner of "a notice of revocation signed by the applicant or that patent agent."

[95]            The Patent Act and the Patent Rules prescribe no particular form that a notice should take. The fact that the notice of the Respondent was forwarded on his behalf to the Patent Office by Mr. French is irrelevant. The Respondent signed the notice and it is perfectly obvious from the notice itself and Mr. French's letter taken together who Mr. French is and in what capacity he was forwarding the notice.

[96]            I have already dealt with the Applicants' objection that the notice was only signed by the Respondent and not by all of the applicants. The acceptance of the notice under s. 6(2) of the Patent Rules is consistent with the Patent Office's position under s. 20(3), that one applicant can revoke an appointment.

[97]            The Applicants, however, go further and say that the revocation document purports both to revoke any prior appointments and to appoint Mr. French as patent agent. These two purposes are inextricably linked together, say the Applicants, and the Patent Office cannot act upon one without acting upon the other. This is because, say the Applicants, the real purpose of the document was to put Mr. French in the position of patent agent and there is clearly no intention to make the Respondent personally responsible for any and all further communications, which is what the Patent Office has done.

[98]            The Applicants argue that if the document was ineffective for the purpose of appointing Mr. French as patent agent it must also be ineffective for the purpose of revoking the appointment of Dennison.

[99]            The Applicants draw an analogy in this regard to the doctrine of severance in contract law.

[100]        Whether or not the Respondent wished to end up as the "authorized correspondent" has nothing to do, in my opinion, with the revocation notice. He has become "authorized correspondent" as a result of the Patent Office applying rules that follow necessarily from a situation where there is no common patent agent of record. The Respondent's intention plays no part in this.

[101]        There is nothing in the document that says Dennison should only be removed as patent agent if Mr. French is appointed. The document has two clear and separate purposes: to revoke the Dennison appointment and to appoint Mr. French. It gives the Patent Office a clear indication that the Dennison appointment is revoked. Having received notice of that fact, it is difficult to see how the Patent Office could have continued to regard and treat Dennison as the agent of record. Had the document indicated that Dennison was only to be removed if Mr. French was appointed, it would have been a different matter. But there is a clear intent to remove Dennison, and the Patent Office made no error in acting upon that clear intent.

[102]        I find any analogy between the situation faced by the Patent Office upon receiving the communication and the contractual doctrine of severance as entirely spurious. There was no contractual nexus here and completely different considerations apply. All that is relevant is compliance with ss. 20(3) and 6(2) of the Patent Rules.

[103]        In conclusion then, on this issue, and applying a standard of reasonableness simpliciter as articulated by the Supreme Court of Canada in Canada (Direction of Investigation and Research) v. Southam Inc., [1997] 1 S.C.R. 748 that an "unreasonable decision is one that, in the main, is not supported by any reasons that can stand up to a somewhat probing examination," I am of the view that the Board committed no reviewable error. In fact, I conclude that the Board did not err even if a standard of correctness is applied to this aspect of the Decision

[104]        My overall conclusion on this application is that it is time-barred but even if it is not so barred, the Board committed no reviewable error in deciding that the Dennison appointment had been revoked and that there was no common patent agent appointed pursuant to s. 20 of the Patent Rules.

[105]        Having reached this conclusion, the Patent Office was compelled to address the issue of who was the "authorized correspondent" under s. 2 of the Patent Rules. It concluded that the facts of the situation fell squarely within ss. 2(a)(iii) of the Patent Rules and this meant that Respondent, as the first inventor named in the petition, became the "authorized correspondent." In coming to this conclusion the Patent Office was, in my opinion, correct and the Board was also correct in the Decision in concluding that "the provisions of subparagraph (iii) must be invoked to identify the authorized correspondent" and that "since the only petition presented to the Patent Office named Michael Peter Sakno as the applicant, he is now the authorized correspondent."

[106]        The fact that this ultimate result may have been entirely unforeseen by either the Applicants or the Respondent is irrelevant. The Patent Office must know with whom it should communicate. Hence, a fall-back position is required where, as in this case, disputing applicants and inventors cannot agree on a common patent agent.

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

    NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                   T-406-02

STYLE OF CAUSE: BRIAN M. DIDONE ET AL. v. MICHAEL PETER

SAKNO

PLACE OF HEARING:                                   TORONTO

DATE OF HEARING:                                     OCTOBER 14, 2003

REASONS FOR ORDER AND ORDER : RUSSELL, J.

DATED:                      DECEMBER 31, 2003

APPEARANCES:

FRANK FARFAN                                              FOR THE APPLICANTS

MICHAEL CRINSON                                                    FOR THE RESPONDENT

SOLICITORS OF RECORD:

MacBETH & JOHNSON                                                FOR THE APPLICANTS

TORONTO, ONTARIO

DIMOCK STRATTON CLARIZIO                  FOR THE RESPONDENT

TORONTO, ONTARIO