Date: 20091021
Docket: T-166-09
Citation: 2009 FC 1068
Toronto, Ontario, October 21, 2009
PRESENT: The Honourable Madam Justice Tremblay-Lamer
BETWEEN:
SCANNEX TECHNOLOGIES, LLC
Applicant
and
ATTORNEY GENERAL OF CANADA
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1]
This is an application
pursuant Section 18 of the Federal Courts Act and Rule 300(a) of the Federal
Courts Rules, for judicial review of a decision dated January 5, by the
Commissioner of Patents refusing to substitute incorrect figures submitted by
Scannex Technologies LLC (the “Applicant”) in support of its Canadian Patent
application Serial No. 2,373,253 (the “Patent Application”) pursuant to s.8 of
the Patent Act, R.S.C. 1985, c. P-4.
PRELIMINARY MATTER
[2]
By letter
dated October 15, 2009, the Applicant informed the Court that, without having
even asked for leave of the Court or consent of the Respondent, he would not
appear at the oral hearing scheduled on October 20, 2009, relying solely on his
Application Record.
[3]
Consequently,
the Court proceeded with the oral hearing with the Respondent, and gave little weight
the Applicant’s written representations.
BACKGROUND FACTS
[4]
The
Applicant filed a U.S. patent application, serial
number 09/311,442, entitled “Non-Destructive Testing of Hidden Flaws” (the “US
Application”) on May 14, 1999. The Applicant filed a set of figures with the US
Application. The US Application was successful and a patent was issued.
[5]
The
Applicant filed a corresponding international patent application (“PCT
Application”), PCT/US00/12780 on May 10, 2000. A set of figures was also filed
with this application, but the figures were not the same as those filed with
the US Application and were thus incorrect.
[6]
That PCT
Application then entered national phase in Canada, becoming the Patent Application. The
figures filed with the Patent Application were thus also incorrect.
[7]
On
November 28, 2006, a Canadian Examiner’s Report advised the Applicant that
figures filed with the Patent Application were incorrect.
[8]
In
response, the Applicant requested the Commissioner to replace the incorrect
figures filed with the Patent Application with correct figures, pursuant to s.
8 of the Patent Act, which provides that:
|
8. Clerical errors in
any instrument of record in the Patent Office do not invalidate the
instrument, but they may be corrected under the authority of the
Commissioner.
|
8. Un document en dépôt au Bureau des
brevets n’est pas invalide en raison d’erreurs d’écriture; elles peuvent être
corrigées sous l’autorité du commissaire.
|
[9]
The
Applicant submitted an affidavit stating that incorrect figures were filed with
the PCT Application and thus the Patent Application due to an unintentional
error of a clerk of the Applicant’s agent in the United States. The Applicant also filed a certified
copy of the US Application, which contained the correct figures.
DECISION UNDER REVIEW
[10]
In a
letter dated January 5, 2009, the Commissioner refused to make the substitution
requested by the Applicant. The Commissioner took the position that “the type
of error envisaged by section 8 [of the Patent Act] clearly imparts a
mistake by a clerk or subordinate in the mechanical process of typewriting or
transcribing a document but does not extend to the inherent duties and
responsibilities of an agent involved in the prosecution of patent
applications.”
[11]
According
to the Commissioner, the submission of correct figures is one of the “inherent
duties and responsibilities” of an applicant, and the Commissioner has no power
to rectify a submission of incorrect figures.
ISSUES
[12]
This
application raises the following issues:
1) What is or
are the appropriate standard(s) of review?
2) Does
the Commissioners’ decision contain a reviewable error?
ANALYSIS
1) What is or are the
appropriate standard(s) of review?
[13]
The
discretion granted by Parliament to the Commissioner to amend patent
applications pursuant to Section 8 of the Patent Act is limited to
correcting “clerical errors.” The definition of “clerical error” applied by the
Commissioner in this case was articulated in Bayer, and recently
approved by the Federal Court of Appeal in Apotex Inc. v. ADIR, 2009 FCA 222 at par.
124.
[14]
However, somewhat
different approaches have been taken by this Court to determine the appropriate
standard of review of a Commissioner’s decision to accept or deny an
applicant’s request to correct an alleged clerical error.
[15]
One
approach, described by Justice Roger Hughes in Pason Systems Corp. v. Canada (Commissioner of Patents), 2006 FC 753,
[2007] 2 F.C.R. 269 at par. 21, requires the reviewing court, first, to
review the Commissioner’s determination whether there has been a “clerical
error”; and second, if the Commissioner concluded that there has indeed been a
“clerical error”, to review the Commissioner’s decision to correct it or not.
Endorsing this approach in Laboratoires Servier v. Apotex Inc., 2008 FC
825, 67 C.P.R. (4th) 241 Justice Judith Snider concluded, at par.
205, “that the appropriate standard of review with respect to both steps of a
s. 8 decision is reasonableness.” She also agreed with Hughes’ J. finding in Pason,
supra, at par. 21, that “[t]he
determination of what constitutes a clerical error
is highly factual.”
[16]
On this
approach, the determination whether the amendment sought by an applicant is a
“clerical error” involves a single step, based on a “you know it when you see it”
understanding of the term “clerical error.”
[17]
A second approach was
adopted by Justice Robert Barnes in Procter & Gamble Co. v. Canada
(Commissioner of Patents), 2006 FC 976, [2007] 2 F.C.R. 542. In
that case, the Commissioner refused to make the requested amendments, finding
that he lacked jurisdiction to do so because the error that the applicant
sought to correct was not a “clerical error.” Barnes J. held, at par. 19, that
“the
question decided by the Commissioner involved a legal interpretation which was
determinative of his authority under section 8 of the Act. It was also not a
question at the core of any special expertise or which raised a number of
competing policy considerations. In such cases, correctness is inevitably the
appropriate standard of review.”
[18]
On
this approach, the determination whether the amendment being sought is a
clerical error involves two steps: first, a legal decision, namely the interpretation of
the statutory term “clerical error;” and second, a factual finding
whether the error at issue in a case is or is not a “clerical error” within the
meaning of the Patent Act.
[19]
The
Bayer case, on which the Commissioner relies, can itself be seen as a
precursor of the two-step approach, dealing as it did almost exclusively with
the definition of the term “clerical error.”
[20]
In Dow Chemical Co. v. Canada (Attorney
General), 2007
FC 1236, 63 C.P.R. (4th) 89, Barnes J. had to review a decision of the Commissioner
rejecting a request for a rectification of an alleged “clerical error.”
Incidentally, the facts of that case were similar to the present one: due to a
mistake of the applicant’s U.S. patent agent, nine pages of its U.S. patent application had not been inserted into the Canadian
patent application for the same invention. The Commissioner found that the
omission of nine pages goes beyond what is contemplated by the concept of
“clerical error” as interpreted in Bayer, supra, and that even if
it does not, it was a case where he would refuse to exercise his discretionary
authority to correct a “clerical error.” Barnes J. wrote, at par. 12 of
his decision, that:
[t]here are, of course, cases where the issue presented on
judicial review is nominally one of mixed fact and law but where the legal
issue can be isolated from the facts surrounding it. Where a legal issue can be
segregated in this way from the evidence and where the decision-maker has
incorrectly identified the legal principle or standard required to be applied
to the relevant evidence, the standard of review will usually be correctness …
However, in cases where fact and law are truly mixed, the deference owed to the
decision-maker will usually be assessed at least against the standard of
reasonableness.
[21]
According
to Barnes J., the Procter & Gamble case fell in the first category – the legal issue in it stood
alone and could be reviewed on a correctness standard. The Dow Chemical
case was one where fact and law were inextricably mixed. Barnes J. upheld the
Commissioner’s decision because he found that the Commissioner’s exercise of
discretion not to correct a clerical error even if there was one was not
unreasonable.
[22]
In light
of this jurisprudence, I am of the view that at least in cases where the
understanding of the term “clerical error” is contested, as it is by the
Applicant in the present case, the reviewing court will need to examine the
definition applied by the Commissioner. The interpretation of s. 8 of the Patent
Act is a legal question, and the applicable standard of review is,
accordingly, correctness, as Barnes J. held in Procter & Gamble. If
the Commissioner used the correct definition, its application to the facts of a
case is a question of mixed fact and law, and therefore reviewable on the
standard of reasonableness.
2) Does the Commissioner’s
decision contain a reviewable error?
[23]
I recognize
that the continued association of the term “clerical error” with the act of
(type)writing is increasingly anachronistic. As Barnes J. observed in Dow
Chemical, at par. 28, “in an age where documents are produced and edited by computer, simple
keyboarding or other transcription mistakes can cause seemingly
disproportionate effects.” However, the jurisprudence is consistent and does
not extend the definition beyond errors that Snider J. described, in Servier,
supra, at par. 215, as “mechanical
in nature and made without thought.”
[24]
Such an
understanding of section 8 the Patent Act is reinforced by that
provision’s French text, in which the term corresponding to “clerical error” is
“erreur d’écriture.”
[25]
The French
text of the Interpretation Act, R.S.C. 1985, c. I-21, s.35, defines “écrit,”
as “[m]ots pouvant être lus, quel que soit leur mode de présentation
ou de reproduction, notamment impression, dactylographie, peinture,
gravure, lithographie ou photographie.” [Emphasis
mine] While the examples provided with the definition are rather old-fashioned,
it extends to reproduction of words, irrespective of the technology used for
such reproduction. As for Le Petit Robert de la langue française, it
states that “écrit” has a meaning of “tracé par l’écriture.” An “erreur
d’écriture” is, then, an error in the reproduction of words – whether an
omission of a word, a misspelling, an addition of a word, or another similar
mistake – irrespective of the technology used to reproduce them.
[26]
Reading Snider’s J.
definition of a “clerical error” in light of the foregoing discussion of the
terms “erreur d’écriture,” it is well settled that s. 8 of the Patent Act
contemplates errors that occur in the course of “mechanical” writing out
or reproduction of a text, irrespective of the technology used for this
purpose.
[27]
In effect, this
definition is an updated version of the one formulated by Justice Mahoney in Bayer,
though without reference to any specific technology. As the difference between
the two is not significant in the circumstances of this case, I conclude that
the Commissioner did not err in law by applying the Bayer definition.
[28]
I realize that, on the
one hand it may be that this definition is still too narrow in light of the
amount and nature of the clerical work being done electronically in
contemporary business practice, and of the potential for inadvertent mistakes
in the course of this work.
[29]
However, on the other
hand, as the Federal Court of Appeal explained in Bristol-Myers Squibb Co. v. Canada
(Commissioner of Patents), [1998] 229 N.R. 217, 82 C.P.R. (3d) 192 (F.C.A.) [Bristol-Myers],
at par. 25, a patent application is a public document, on which third parties
may rely, which explains why Parliament limited the Commissioner’s discretion
retroactively to correct documents submitted with such an application. Any
re-balancing of these considerations would be Parliament’s to undertake.
[30]
Thus, it
is clear that the error that led to the filing of incorrect figures with the
Applicant’s Patent Application was not a “clerical error” within the admittedly
narrow meaning of the Patent Act. The Commissioner’s determination was
not unreasonable.
[31]
For these
reasons, the application for judicial review of the decision is dismissed. Considering the time and
effort put by the Respondent on this judicial review and the fact that the
Applicant chose at the last minute not to appear at the oral hearing, the
Court exercising its discretion, grants costs to
the Respondent payable forthwith, in the amount of $2,159.01, as set out in the
Bill of Costs filed by the Respondent.
JUDGMENT
THIS COURT
ORDERS that the application for judicial review be dismissed,
with costs of $2,159.01
to the Respondent.
“Danièle Tremblay-Lamer”
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