Date: 20070226
Dockets: T-1836-05
T-526-06
T-527-06
T-1837-05
T-569-06
T-570-06
Citation: 2007
FC 222
Vancouver, British
Columbia,
February 26, 2007
PRESENT: The Honourable Madam Justice Layden-Stevenson
BETWEEN:
HARRY
O. WICKS
Applicant
and
THE
COMMISSIONER OF PATENTS
Respondent
REASONS FOR ORDER AND ORDER
[1]
The applicant, Mr. Wicks, filed six applications for judicial review
regarding the position of the Commissioner of Patents (the Commissioner) that
the applicant’s two patent applications were irrevocably abandoned and could
not be reinstated. These reasons address each of the patent applications as
well as the applicant’s assertions that the Commissioner identified the
incorrect expiration date for each of the patent applications and further misapprehended
the applicable law. Despite the innovative and intriguing submissions of the
applicant, I have determined that the Commissioner’s position was correct.
Accordingly, the applications for judicial review will be dismissed.
I. Background
[2]
The legal issue for determination is a
straightforward question of statutory interpretation. The factual basis that
gives rise to the issue requires that I go back in time. Regard must be had to
certain past practices in the office of the Commissioner, the impact of the
jurisprudence of the Federal Court and the Federal Court of Appeal on those
past practices and Parliament’s response to the jurisprudence. This contextual
backdrop is necessary to situate the applicant’s arguments.
[3]
Before turning to the historical aspect, a brief
introduction of the applicant is warranted. Mr. Wicks claims to be the owner of
Canadian Patent Application No. 2,159,102 (the '102 patent application) and the
inventor of its invention. The nature of the claimed invention is not relevant to
this matter. The '102 patent application was filed September 25, 1995 as a
Canadian National Phase Application, which corresponded to International Patent
Application No. PCT/US94/002212 filed March 1, 1994 and its related priority
document, U.S. Patent No. 5,890,433 filed March 25, 1993 and granted April 6,
1999. Mr. Wicks also claims to be the owner of Canadian Patent Application No.
2,228,707 (the '707 patent application) and the inventor of its invention. The
'707 patent application was filed February 4, 1998 and claimed priority to
United States Serial No. 60/037,162 filed February 4, 1997. The '707 patent
application describes an improvement to the '102 patent application.
[4]
Thus, the '102 patent application was filed in Canada on September 25, 1995, and the '707
patent application was filed in Canada on March 1, 1998. The legislative scheme that applies to patent
applications is set out in more detail later in these reasons. I will return to
the '102 and '707 patent applications in due course. I turn now to a distilled
overview of the historical backdrop. A more comprehensive discussion is
contained in the cases that I refer to below. There is no need for me to engage
in a detailed recitation here.
[5]
The Patent Act, R.S.C. 1985, c. P-4 (the
Act) and the Patent Rules, SOR/96-423 (the Rules) require a patent
applicant to pay a prescribed amount of money, known as a “maintenance fee” at
specified times. The maintenance fee is required to keep the patent application
in good standing. The fee payable by a “small entity” (defined in the Rules) is
less than that payable by a “large entity” (an entity that does not meet the
definition of small entity).
[6]
It was the practice of the Commissioner, in
circumstances where applicants paid small entity fees when they ought to have
paid large entity fees, to accept top-up payments for the deficiencies. The
top-up payments were considered to be retroactive corrective payments whether
or not they were made within the prescribed statutory time limit for
reinstatement of patent applications that had been deemed abandoned for
non-payment of maintenance fees.
[7]
In Dutch Industries Ltd. v. Canada
(Commissioner of Patents), [2002] 1 F.C. 325, 209 F.T.R. 260, 14 C.P.R. (4th)
499 (Dutch Industries No. 1), the issue was whether the Commissioner was
competent to accept payments on account of underpaid maintenance fees after the
prescribed time for payment. The court concluded that the Act and the Rules
manifest a mandatory requirement to pay the prescribed fees and a mandatory
consequence of deemed abandonment if the fees are not paid before the
expiration of the legislated payment period. Any request for reinstatement must
be made within the prescribed period. The Commissioner is without jurisdiction
to permit the deficient portion of the maintenance fees to be paid after the
expiration of the time for applying for reinstatement.
[8]
On appeal, the Federal Court of Appeal, in Dutch
Industries v. Canada
(Commissioner of Patents), [2003] 4 F.C. 67,301 N.R.152, 24 C.P.R. (4th)
157 (F.C.A.) leave to appeal dismissed, [2003] S.C.C.A. No. 204 (Dutch
Industries No.2), agreed that the Commissioner lacked the authority to
permit a deficient maintenance fee to be topped up beyond the time prescribed
for reinstatement. However, the Court of Appeal determined that the status of
an applicant as a small entity is not susceptible to change from time to time.
The Court of Appeal concluded that, on a proper interpretation, status as to
small entity is determined at the time when the patent regime is first engaged
(generally, when submitting a patent application). That status is maintained in
relation to that patent application and any resulting patent throughout its
term. In other words, the status of the applicant is determined at the outset
and remains constant thereafter for all purposes under the Act and the Rules.
[9]
In response to the Dutch Industries
cases, Parliament added section 78.6 to the Act, which came into force on
February 1, 2006, by Order in Council 2005-1871. The pertinent portion is
subsection 78.6(1) which provides:
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78.6 (1)
If, before the day on which this section comes into force, a person has paid
a prescribed fee applicable to a small entity, within the meaning of the Patent
Rules as they read at the time of payment, but should have paid the
prescribed fee applicable to an entity other than a small entity and a
payment equivalent to the difference between the two amounts is submitted to
the Commissioner in accordance with subsection (2) either before or no later
than twelve months after that day, the payment is deemed to have been paid on
the day on which the prescribed fee was paid, regardless of whether an action
or other proceeding relating to the patent or patent application in respect
of which the fee was payable has been commenced or decided.
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78.6 (1) Si, avant l’entrée en vigueur
du présent article, une personne a payé la taxe réglementaire relative à une
petite entité, au sens des Règles sur les brevets dans leur version
applicable à la date du paiement, alors qu’elle aurait dû payer celle
relative à une entité autre qu’une petite entité, et qu’elle verse la
différence au commissaire aux brevets en conformité avec le paragraphe (2),
avant la date d’entrée en vigueur du présent article ou au plus tard douze
mois après cette date, le versement est réputé avoir été fait à la date du
paiement de la taxe réglementaire, indépendamment de toute instance ou autre
procédure engagée à l’égard du brevet ou de la demande de brevet qui fait
l’objet de la taxe ou de toute décision en découlant.
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II. The
Relevant Legislative Provisions
[10]
A number of amendments were made to the Act
after Mr. Wicks filed his patent applications. I will be referring to the
current provisions. In these applications, nothing turns on the former
provisions.
[11]
Paragraph 27.1(2) of the Act imposes a duty on
an applicant for a patent to pay prescribed fees.
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(2) The prescribed
application fee must be paid and the application must be filed in accordance
with the regulations by the inventor or the inventor’s legal representative and
the application must contain a petition and a specification of the invention.
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(2) L’inventeur
ou son représentant légal doit déposer, en la forme réglementaire, une
demande accompagnée d’une pétition et du mémoire descriptif de l’invention et
payer les taxes réglementaires.
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[12]
The prescribed fees and timing are set out in
the Rules and in Schedule II to the Rules. Under Item 30 of Schedule II, an
applicant must generally pay a maintenance fee of a specified amount by the
anniversary date of the application each year.
[13]
The provisions of section 73 of the Act specify
that if an applicant fails to pay the maintenance fees as prescribed, or fails
to request an examination and pay the prescribed fee, the application shall be
deemed to be abandoned.
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73. (1) An
application for a patent in Canada shall be deemed to be abandoned if the
applicant does not
(a) …
(b) …
(c) pay the fees payable under section 27.1, within the
time provided by the regulations;
(d) make a request for examination or pay the prescribed fee
under subsection 35(1) within the time provided by the regulations;
(e) …; or
(f) …
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73. (1)
La demande de brevet est considérée comme abandonnée si le demandeur omet,
selon le cas :
a) …
b) …
c) de payer,
dans le délai réglementaire, les taxes visées à l’article 27.1;
d) de présenter
la requête visée au paragraphe 35(1) ou de payer la taxe réglementaire dans
le délai réglementaire;
e) …
f) …
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[14]
Thus, if an applicant fails to pay a maintenance fee that is due,
the application is deemed abandoned. However, the application may be reinstated if, within one year of the default, certain
actions are taken. Specifically, the applicant must make a request for
reinstatement, pay the defaulted maintenance fee and pay a prescribed
reinstatement fee. This mechanism for reinstatement is found in subsection
73(3) of the Act.
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(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.
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(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.
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[15]
The prescribed fee and the prescribed period are
specified in section 152 of the Rules.
|
152. In order for an
application deemed to be abandoned under section 73 of the Act to be
reinstated, the applicant must, in respect of each failure to take an action
referred to in subsection 73(1) of the Act or section 151, make a request for
reinstatement to the Commissioner, take the action that should have been
taken in order to avoid the deemed abandonment and pay the fee set out in
item 7 of Schedule II before the expiry of the twelve-month period after the
date on which the application is deemed to be abandoned as a result of that
failure.
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152. Pour que
la demande considérée comme abandonnée en application de l’article 73 de la
Loi soit rétablie, le demandeur, à l’égard de chaque omission mentionnée au
paragraphe 73(1) de la Loi ou visée à l’article 151, présente au commissaire
une requête à cet effet, prend les mesures qui s’imposaient pour éviter la
présomption d’abandon et paie la taxe prévue à l’article 7 de l’annexe II,
dans les douze mois suivant la date de prise d’effet de la présomption
d’abandon.
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III. The
Applicant's Crystallized Position
[16]
The applicant’s record contains an exhaustive
documentary history that appears to include everything touching upon the '102
and '707 patent applications. The memoranda of fact and law comprises argument
based on administrative law principles, reliance on Canadian Intellectual
Property Office (CIPO) Policy Statements, infringement of rights under
subsection 27(1) and section 78.6 of the Act, infringement of rights under the Canadian
Bill of Rights and reliance on the doctrines of legitimate expectations and
mistake.
[17]
At the hearing, the applicant’s counsel
abandoned all arguments, save one. Additionally, counsel stated that most of
the documentation contained in the record could be ignored because it was not
probative. The content of the record, therefore, was substantially reduced and
the applicant’s argument was crystallized into a single issue, that is, whether
subsection 78.6(1) applies to the applicant’s patent applications. That is the
only issue that was argued and it is the only issue that will be addressed in
these reasons.
[18]
Next, counsel spoke to the six applications for
judicial review (three in relation to each of the impugned patent
applications). The '102 patent application entails file numbers T-1836-05,
T-526-06 and T-527-06. The '707 patent application involves file numbers
T-1837-05, T-569-06 and T-570-06. The applicant’s counsel formally requested
that I address only T-527-06 in relation to the '102 patent application and
only T-569-06 in relation to the '707 patent application. The applicant’s
counsel stated (and counsel for the Commissioner agreed) that a determination
on T-527-06 would be dispositive of all applications for judicial review in
relation to the '102 patent application and a determination on T-569 would be
dispositive of all applications for judicial review in relation to the '707
patent application. Although I invited counsel to simply discontinue the four
extraneous applications, his reasons for declining to do so remain a mystery to
me. Accordingly, my analysis will be directed to file numbers T-527-06 and
T-569-06. However, since there was no formal discontinuance of the remaining
applications for judicial review, a copy of these reasons will be placed in
each of the other files as well.
[19]
Additionally, the applicant’s counsel formally
adopted the factual chronology of the Commissioner as accurate. Because the
factual matrix for each of the patent applications is distinct, I will deal
with each of the patent applications separately.
IV. Issue
[20]
The only issue is whether the applicant comes
within subsection 78.6(1) of the Act.
V. Standard
of Review
[21]
The issue necessitates an interpretation of
subsection 78.6(1) of the Act. Questions of statutory interpretation are pure
questions of law and the standard of review is that of correctness. The
Commissioner’s position with respect to the '102 and '707 patent applications
must be correct.
VI. The '102
Patent Application
[22]
The factual background in relation to the '102
patent application is as follows:
September 25, 1995 The '102 patent application
entered the Canadian National Phase. On behalf of the applicant, as a large
entity, the application fee, the examination fee, and the second annuity fee
were paid to CIPO, representing the Commissioner.
March 1, 1997 The applicant failed to pay
the 3rd annuity fee on its due date. The patent application was
deemed abandoned.
April 9, 1997 CIPO
issued a notice of abandonment.
February 25, 1998 The applicant submitted a form
claiming small entity status since January 1, 1997. (The Rules in force had a
more complex definition of small entity but the maintenance fee structure was
substantially the same).
February 27, 1998 The applicant requested
reinstatement submitting the appropriate fee. The applicant, as a small entity,
paid the 3rd annuity (in arrears) and paid the 4th
annuity.
March 11, 1998 CIPO issued a notice of
reinstatement.
1990-2000
The applicant paid the 5th and 6th
annuities.
March 1, 2001 The applicant failed to pay the
7th annuity fee on its due date. The application was deemed
abandoned.
March 29, 2001 CIPO
issued a notice of abandonment.
March 1, 2002 The statutory 12-month period
within which the application could have been reinstated elapsed. No request for
reinstatement and no payment was made during the 12-month period.
November 16, 2004 The applicant forwarded payments
of the 7th through 10th annuities, with associated late
fees.
December 14, 2004 CIPO informed the applicant that
the patent application “became dead on March 1, 2002 for non-payment of the maintenance
fee”.
January 31, 2005 The applicant forwarded a
payment for the 11th annuity fee.
March 8, 2005 CIPO reminded the applicant
that the application had been deemed abandoned and that the reinstatement
period had expired. CIPO informed the applicant that the purported 11th
annuity payment would be returned on request.
April 6, 2005 CIPO returned the payments
that the applicant had forwarded regarding the 7th through the 10th
annuities to the applicant.
July 5, 2005 The applicant requested
reinstatement. The applicant again submitted payments for the 7th
through 10th annuities, with associated late fees.
September 19, 2005 CIPO again reminded the applicant
that the application had been deemed abandoned and that the reinstatement
period had expired. CIPO informed the applicant that the purported payments
would be returned on request.
October 19, 2005 The applicant initiated the
application for judicial review in T-1836-05 challenging the “decision” contained
in CIPO’s letter of September 19, 2005.
January 31, 2006 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”.
February 1, 2006 The applicant forwarded the 12th
annuity along with the difference between the amount payable by a small entity
and the amount payable by a large entity.
February 21, 2006 CIPO again reminded the applicant
that the application was beyond the period of reinstatement. It indicated that
the purported payment of January 31 would be returned on request.
February 27, 2006 In reference to the purported
payment of February 1, 2006, CIPO again reminded the applicant that the
application was dead.
March 23, 2006 The applicant initiated the
application for judicial review in T-526-06, challenging the “decision”
contained in CIPO’s letter of February 21, 2006.
The applicant
initiated the application for judicial review in T-527-06 challenging the
“decision” contained in CIPO’s letter of February 27, 2006.
[23]
The applicant argues that section 78.6 applies
to his patent applications. He concedes that but for subsection 78.6(1),
the patent applications have expired and the Commissioner’s position is
correct. In short, if the applicant’s argument regarding subsection 78.6(1) is
accepted, he will succeed. However, if his argument is rejected, the
applications for judicial review must fail.
[24]
The submission is that the Commissioner
identified the incorrect expiration date for both patent applications and
misapprehended the legal consequences of Dutch Industries 2 and
subsection 78.6(1). In argument, the applicant referred only to the Court of
Appeal’s decision in Dutch Industries. Therefore, all further references
to Dutch Industries are to Dutch Industries 2.
[25]
According to the applicant, the correct
expiration date regarding both patent applications is the date upon which the
applicant submitted the incorrect maintenance payment (the date upon which the
applicant paid fees as a small entity rather than a large entity). Dutch
Industries mandates this result because the court held that whatever status
the applicant for a patent held at the time of the application is to be
retained throughout the duration of the patent application. Status, whether as
a large entity or a small entity, is determined only once – when the patent
regime is first engaged. In this respect, Dutch Industries operates
retroactively. Dutch Industries interpreted the provisions of the Act
and the interpretation is good for all time.
[26]
The applicant asserts that the enactment of
subsection 78.6(1) provided a remedial effect for the harshness of Dutch
Industries. It allowed a one-year window of opportunity for patent holders
and applicants to “fix” their applications by topping up their payments thereby
allowing for the reincarnation of dead patent applications. In support of this
contention, the applicant points to the Interpretation Act, R.S.C. 1985,
c.I-21, and specifically section 12, which provides that every enactment is
deemed remedial and is to be given such fair, large and liberal construction
and interpretation as best ensures the attainment of its objectives. He also
relies on various Hansard excerpts for the House of Commons and Senate,
specifically the comments of the Honourable Senator Joseph A. Day as contained
in Volume 142, Issue 37 (February 17, 2005).
[27]
The applicant claims that Johnson &
Johnson Inc. et al. v. Arterial Vascular Engineering Canada Inc. et al.
(2006), 351 N.R. 87 (F.C.A.) (Johnson) provides further support for his
position. He points to the comments at paragraphs 5, 6, 8 and 10 and claims
that the court’s reasoning establishes that subsection 78.6(1) operates
retroactively to establish a deemed date of payment with retroactive effect.
[28]
The projected result of the applicant’s
submissions is that the '102 patent application “died” on February 27, 1998. On
that date, the reinstatement and maintenance fees in relation to the patent
application were paid as a small entity. However, because the applicant filed
initially (on September 25, 1995) as a large entity, the fees ought to have
been paid as a large entity throughout. Dutch Industries applies
retrospectively and, by operation of law, the patent application died on
February 27, 1998 as a result of Dutch Industries. Subsection 78.6 was
enacted specifically for the purpose of remedying the effect of Dutch
Industries. Therefore, when the applicant tendered the payment of fees,
subsection 78.6 was activated and the Commissioner was wrong not to reinstate
the patent application.
[29]
With respect, the applicant’s argument is not
sustainable because he cannot bring himself within the purview of subsection
78.6(1). The real question to be answered is whether section 78.6 permits a
remedy for non-payment of fees. I conclude that, properly construed, subsection
78.6, a transitional provision, does not provide a remedy for non-payment of
fees. It follows that the applicant cannot benefit from it.
[30]
The Supreme Court of Canada has repeatedly
articulated the proper approach to statutory interpretation. In R. v. Jarvis,
[2002] 3 S.C.R. 757, at paragraph 77, the court directed that “one is to 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 the object of the statute”. The stated principle was supported by specific
reference to the Interpretation Act, Bell ExpressVu Limited
Partnership v. Rex, [2002] 2 S.C.R. 559; Rizzo & Rizzo Shoes Ltd.
(Re.), [1998] 1 S.C.R. 27; R. v. Gladue, [1999] 1 S.C.R. 688; E.A.
Driedger, Construction of Statutes (2nd ed. 1983) at p. 87.
The approach was confirmed again in Medovarski v. Canada (Minister of
Citizenship and Immigration), [2005] 2 S.C.R. 539 where, at paragraph 15,
the Chief Justice cautioned that because statutory interpretation always
entails a search for the intention of the legislator, where statutory purpose
is relevant to a transitional provision, it should be considered.
[31]
This search for parliamentary intent constitutes
an exercise in ascertaining, in accordance with the noted principle, what
Parliament set out to accomplish. It is not an exercise in adopting a
construction that the parties, or the court, might prefer when the intent of
Parliament is obvious.
[32]
It is evident that section 78.6, on its face and
in accordance with Parliament’s intent, was enacted to remedy the harsh effects
of the Dutch Industries decision. As noted, the applicant claims that Dutch
Industries applies to him retrospectively because on February 27, 1998, he
began making payments as a small entity. The application died on that date
because it was initially filed in September of 1995 as a large entity. I do not
disagree with that statement. However, if the applicant had continued to pay
small entity maintenance fees, albeit in error (as a result of Dutch
Industries), the applicant would come within the purview of section 78.6.
The applicant did not make payments. When maintenance fees were due in March of
2001, no fees were paid and no request for reinstatement was made within the
prescribed 12-month period. In fact, the applicant did not attempt to pay any
fees with respect to the '102 patent application until November 16, 2004.
[33]
Dutch Industries
speaks to the date upon which entity status is determined. It does not address,
nor does it purport to address, patent applications that were abandoned for
non-payment of fees.
[34]
The wording of subsection 78.6(1) is not
ambiguous. It, as well as the Hansard excerpts referred to by the applicant,
demonstrate that Parliament intended to provide relief to patent holders and
applicants who had unknowingly, but in good faith, made deficient payments on
maintenance fees in error. Those individuals were caught by the “harsh effects”
of the Dutch Industries decision. The transitional provision was
enacted to allow those individuals a window (one year) to “top-up” their
payments in order to bring their patents and applications into good standing.
For ease of reference, section 78.6 is reproduced again.
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78.6 (1)
If, before the day on which this section comes into force, a person has
paid a prescribed fee applicable to a small entity, within the meaning of the
Patent Rules as they read at the time of payment, but should have
paid the prescribed fee applicable to an entity other than a small entity and
a payment equivalent to the difference between the two amounts is submitted
to the Commissioner in accordance with subsection (2) either before or no
later than twelve months after that day, the payment is deemed to have been
paid on the day on which the prescribed fee was paid, regardless of
whether an action or other proceeding relating to the patent or patent
application in respect of which the fee was payable has been commenced or
decided.
[Emphasis
mine]
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78.6 (1) Si, avant l’entrée en vigueur
du présent article, une personne a payé la taxe réglementaire relative à une
petite entité, au sens des Règles sur les brevets dans leur version
applicable à la date du paiement, alors qu’elle aurait dû payer celle
relative à une entité autre qu’une petite entité, et qu’elle verse la
différence au commissaire aux brevets en conformité avec le paragraphe (2),
avant la date d’entrée en vigueur du présent article ou au plus tard douze
mois après cette date, le versement est réputé avoir été fait à la date du
paiement de la taxe réglementaire, indépendamment de toute instance ou autre
procédure engagée à l’égard du brevet ou de la demande de brevet qui fait
l’objet de la taxe ou de toute décision en découlant.
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[35]
The applicant claims to have submitted the
payments before the day on which the section came into force. That may well be
so. However, the fact remains that the payment must have been in accordance
with the Patent Rules, specifically those relating to the timing of the
payments.
[36]
The Hansard excerpt of Senator Day’s comments is
equally telling. After providing the background regarding Dutch Industries,
Senator Day stated:
In other words,
if an application for a patent is filed as a small entity, the owner of the
patent will continue to pay the fees payable by a small entity as long
as the patent remains in effect.
Honourable
senators, it is estimated that about 7,000 patents and applications for patents
are threatened by this decision. These patents could be declared invalid on
the grounds that the amount of some fees paid do not correspond to the
appropriate status of the entity.
Without the
technical amendments in this bill, honourable senators, there is no possibility
for applicants or owners of patents to correct this situation. Without this
bill, they cannot maintain their patent rights by means of a corrective
payment.
Bill C-29
provides for a period of 12 months during which applicants and owner of patents
affected by the Dutch Industries decision could legally make any
corrective payments and thus maintain their rights.
[Emphasis mine]
[37]
Similarly, in Johnson, the Federal Court
of Appeal, at paragraph 5, stated that the “legal effect of subsection 78.6(1)
is that the top-up payments made for the patents in issue…must be
treated for the purposes of the Patent Act as though they had been made
on the date of the original deficient payments."
[38]
If I am wrong in this respect and the language
of subsection 78.6(1) can be seen to be ambiguous, then the clear intent of
Parliament removes any doubt as to its meaning. In short, the relief afforded
by section 78.6 is premised upon the payment of fees. The applicant seeks to
apply the section to forgive his non-payment of fees. Section 78.6 does not
provide a remedy for the failure to make payments.
[39]
Regarding the applicant’s argument that, in the
face of Dutch Industries, a person would not make payments knowing that
they were “illegal” and to do so would be akin to a fraud, I fail to see the
wisdom of that logic. Dutch Industries had not been decided when the
applicant failed to pay the maintenance fees.
[40]
For the foregoing reasons, the application for
judicial review with respect to T-527-06 must be dismissed as will the
applications for judicial review with respect to T-1836-06 and T-526-06.
VII. The '707
Patent
[41]
The legal arguments regarding the '707 patent
application are identical to those with respect to the '102 patent application.
It necessarily follows that the applications for judicial review in relation to
the '707 patent application must also be dismissed. However, in my view, the
applicant could not get to the stage where those arguments could even be
considered with respect to the '707 patent application. For completeness, I
will briefly address the inherent frailty in the applicant's submission.
[42]
The relevant part of the chronological history
of the '707 patent application is set out below. Events subsequent to the
expiration date for requesting reinstatement are substantially, although not
identically, the same as those for the '102 patent application. Therefore,
because nothing turns on them, they have not been listed here.
February 4, 1998 The '707 patent application was
filed as a small entity. The application fee was paid to CIPO, representing the
Commissioner.
February 4,
2000 The second annuity due was paid.
February 4, 2001 The applicant failed to pay the
3rd annuity fee on its due date and the application was deemed
abandoned.
March 5, 2001 CIPO issued a notice of
abandonment.
February 4, 2002 The 12-month period within
which the application could have been reinstated elapsed. No request for
reinstatement and no payment was made during the 12-month period.
[43]
The applicant urged me to conclude that the '707
patent application “died” (because of Dutch Industries) on the day that
it was filed. Ostensibly, this was because the applicant submitted the
application as a small entity when he should have submitted it as a large
entity in the first instance.
[44]
As I informed counsel at the hearing, there is
nothing in the record to support the submission that the application should
have been submitted as a large entity. There is a document (applicant’s record,
volume 1, tab 1) indicating that the application was submitted by “RailRunner
Systems Inc." (RailRunner). However, that is the extent of the
information. There is no evidence regarding the nature of RailRunner. I do not
know, nor do I have any way of knowing, whether it was a small entity or a
large entity. Counsel could not point to anything in the record to enlighten
me.
[45]
The applicant suggests that I can infer from the
correspondence to the Commissioner on February 1, 2006 (authorizing the
Commissioner to obtain payment in relation to the '707 patent application as an
entity other than a small entity) that the applicant is a large entity and
therefore must have been at the date of the initial application. As I informed
counsel, it would be totally inappropriate and improper to draw such an inference
in the absence of any evidence to support it. Moreover, there is evidence to
the contrary in the record in the form of the applicant’s request dated
February 25, 1998, claiming small entity status since January 1, 1997.
[46]
There was no further submission regarding the
death of the '707 patent application because of the retrospective effect of Dutch
Industries. Since the legal arguments advanced with respect to the '707
patent application require a foundation upon which to rest, I regard this
omission as fatal. However, as I have already noted, the arguments regarding
section 78.6 of the Act were to be the same for both patent applications. Those
arguments have been rejected. Accordingly, for the foregoing reasons, the
application for judicial review with respect to T-569-06 must be dismissed as
will the applications for judicial review with respect to T-1837-05 and
T-570-06.
[47]
The respondent did not request costs and none
are awarded.
ORDER
THIS COURT ORDERS THAT the applications for
judicial review are dismissed.
"Carolyn
Layden-Stevenson"
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