Docket: T-1879-13
Citation:
2014 FC 1135
[UNREVISED ENGLISH CERTIFIED TRANSLATION]
Ottawa, Ontario, November 28, 2014
PRESENT: The Honourable Madam Justice St-Louis
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BETWEEN:
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DANIEL CLOUTIER
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Applicant
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and
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JACQUES THIBAULT AND CANADA (COMMISSIONER OF TRADEMARKS)
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Respondents
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JUDGMENT AND REASONS
[1]
Daniel Cloutier is asking the Court to vary the
entry in the Patent Office Register [the Register] in order to recognize him as
the holder of three patent applications, to recognize him as the inventor of
the invention described therein, and to expunge the name of Jacques Thibault,
currently entered in the Register as owner and inventor of this invention. He
is also asking the Court to reinstate these patent applications, given that
they had been abandoned.
[2]
In support of his application to amend the
Register, Mr. Cloutier relies on section 52 of the Patent Act, RSC 1985,
c P-4 [the Act], and his application for reinstatement also relies on this same
section and on the Court’s equitable relief powers.
[3]
One of the respondents, Jacques Thibault, was
duly notified, but did not appear in these proceedings. The other respondent,
the Commissioner of Trademarks [Commissioner], submits that the Court does not
have jurisdiction to grant Mr. Cloutier’s application and is therefore
contesting it.
I.
Brief summary of facts
[4]
It is useful to briefly summarize the facts in
this case. Daniel Cloutier is a plumbing and heating contractor, while Jacques Thibault
is a businessman whose wife is the owner of Les Équipements J.L.Thibault, which
sells used farm equipment.
[5]
In February 2003, Mr. Cloutier drew a first
draft of a new crimping tool that he named the “Sleeve-Lock”. In April 2003, he
asked Mr. Thibault for information on how to proceed with filing a patent
application for his invention, and Mr. Thibault suggested that they become
partners with a view to marketing the product. On June 4, 2003, they signed a
partnership agreement.
[6]
On August 15, 2003, and on June 17, 2004, Mr.
Thibault filed two patent applications in which he named himself as the
inventor of the Sleeve-Lock, without notifying Mr. Cloutier. These applications
were respectively assigned numbers 2,437,612 [612] and 2,470,139 [139] with the
Canadian Intellectual Property Office (CIPO). In addition, on June 21, 2004, Mr.
Thibault filed two trade-mark applications for the Sleeve-Lock and Sleeve-grip
marks, once again without notifying Mr. Cloutier.
[7]
On March 30, 2004, Mr. Cloutier learned that Mr.
Thibault had filed the two above-mentioned patent applications and that he had
filed them solely under his name, when he should have also included Mr.
Cloutier’s name.
[8]
On January 4, 2006, after having entered into
prior discussions with Mr. Thibault in order to be designated as inventor in the
patent applications, Mr. Cloutier served a motion on him for a wind-up order
and a claim for damages commenced before the Quebec Superior Court.
[9]
On July 21, 2006, Mr. Thibault filed a third
patent application, once again naming himself as inventor, without notifying Mr.
Cloutier. This application bears number 2,553,144 [144] with the CIPO.
[10]
On March 13, 2009, Justice Barakett of the
Superior Court heard the motion filed by Mr. Cloutier. During that same period,
Mr. Thibault transferred patent applications 612, 139 and 144 to “Les
Équipements J.L.Thibault”.
[11]
On October 20, 2009, Justice Barakett decreed an
end to the partnership between Mr. Cloutier and Mr. Thibault, ordered the
winding-up of the company, ordered Mr. Thibault to provide an accounting of his
administration of the company and its assets and reserved Mr. Cloutier’s claims
for the profits collected by Mr. Thibault and any other person whom he caused
to profit from the unlawfully appropriated concept. On February 15, 2010, the
inscription in appeal of that decision was dismissed.
[12]
Between 2008 and 2010, each one of the patent
applications was in turn deemed to be abandoned for non-payment of maintenance
fees, in accordance with the provisions of sections 27.1 and 73 of the Act.
Moreover, no action was commenced during the statutory 12-month limitation
period set out in section 98 of the Patent Rules, SOR/96-423, to remedy
the default. Thus, on August 17, 2009 (number 612), June 17, 2011 (number 139)
and July 21, 2011 (number 144), the patent applications were deemed abandoned
beyond reinstatement.
[13]
On September 25, 2012, Mr. Cloutier forwarded
three letters to the CIPO by way of his representatives, asking for the
reinstatement of the three patent applications, for a review of the
applications, and for a correction to be made to the Register by entering Mr.
Cloutier’s name as sole inventor and proprietor. On August 9, 2013, CIPO
responded to Mr. Cloutier’s requests and refused the reinstatement on the
ground that the Commissioner did not have the authority to reinstate an
application where the normal statutory reinstatement period had expired, that Mr.
Cloutier’s patent agents were not “official agents” and
that only the inventor, Mr. Thibault, could intervene in the matter.
II.
Issues
[14]
The Court must determine whether it has
jurisdiction to order the reinstatement of the patent applications and the
amendment of the Register as sought by Mr. Cloutier.
III.
Position of the parties
[15]
The parties do not dispute the Court’s
jurisdiction to hear this matter, although they do hold opposing views as to
the scope of its jurisdiction.
[16]
Thus, Mr. Cloutier submits that section 52 of
the Act confers broad powers upon the Court, including the power to amend the
Register where the Commissioner has lost jurisdiction and the power to
reinstate abandoned applications. Subsidiarily, he submits that the Court has
jurisdiction to grant the amendments under section 20 of the Federal Courts Act,
RSC 1985, c F-7 [Federal Courts Act].
[17]
Mr. Cloutier further argues that where there is
an injustice to be remedied, the Court has equitable jurisdiction to grant
relief against forfeiture. He contends that the Court must, in this case,
exercise its discretion in light of his reasonable conduct and the
disproportionate prejudice he would suffer if his application was to be denied.
[18]
Mr. Cloutier contends that he has always been,
and remains, unable to act to remedy the deficiencies with respect to the
patent applications, and he reiterated the content in his affidavit regarding Mr.
Thibault’s actions.
[19]
For his part, the Commissioner contends that
section 52 of the Act does not grant the Court jurisdiction to reinstate patent
applications deemed to have been abandoned, that section 73 of the Act is mandatory
and that the Court cannot reinstate a patent application deemed abandoned after
the expiration of the 12-mont limitation period, as it cannot substitute for a
mandatory provision, even in equity.
[20]
In addition, the Commissioner maintains that Mr.
Cloutier was not prevented from acting before the patent applications were
declared definitively abandoned, but that, on the contrary, he could have
undertaken legal steps in order to, for example, have the Register amended or obtain
the right to pay the maintenance fees. However, Mr. Cloutier only contacted the
CIPO for the first time in September 2012.
IV.
Analysis and decision
[21]
Mr. Cloutier’s case is certainly compelling and
the Court is sympathetic to the arguments he presents with respect to the
injustice he has suffered. Nonetheless, the Court is in agreement with the
respondent’s position, which is supported by the legislation and by the case
law.
[22]
Thus, it appears settled that section 52 confers
broad powers upon the Court, but these powers are restricted to the jurisdiction
conferred upon it by statute (RLP Machine & Steel Fabrication Inc v
Ditullio, 2001 FCT 245 at para 32). There is nothing that would suggest
that the Court’s jurisdiction to vary entries in the Patent Office Register
extends to the reinstatement of patent applications. Section 52 has always been
interpreted within the limits of the authorities related to varying the entries
of the registers (See for example: Comstock Canada v Electec Ltd, (1991)
45 FTR 241 at para 61) and the reinstatement of a patent application, as sought
by the applicant in this case, exceeds that authority.
[23]
Furthermore, although the Federal Court is a
superior court of record in law and equity under the Federal Courts Act
(Sarnoff Corp v Canada (Attorney General) (FC), 2008 FC 712 at para 35),
it cannot ignore a mandatory provision such as the one set out in section 73 of
the Act. Thus, neither the Commissioner nor the Court have jurisdiction to set
aside this mandatory provision (M-Systems Flash Disk Pioneers Ltd v Canada
(Commissioner of Patents), 2010 FC 441 at para 32);
[24]
Thus, the power conferred upon the courts to
grant relief from penalties does not apply to penalties imposed by statute (R
v CNR, [1923] 3 DLR 719); as a result, the doctrine of equitable relief
from forfeiture does not apply to statutory time limits (Excelsior Medical
Corporation v Canada (Attorney General), 2011 FCA 303 at para 8); Unicrop
Ltd v Canada (Attorney General), 2011 FCA 55 at paras 37-38; F
Hoffmann-La Roche AG v Canada (Commissioner of Patents), 2005 FCA 399 at
paras 7-8);
[25]
In addition, the Court is in agreement with the
Commissioner’s position that Mr. Cloutier was not prevented from acting. Mr.
Cloutier had known about Mr. Thibault’s machinations since 2004 and could have
undertaken steps to have his name entered in the Register, to be able to pay
the maintenance fees and thus, perhaps, avoid having the patent applications
deemed abandoned. The Court obviously cannot speculate as to the nature of the
proceedings that might have been commenced, or as to their possible outcome,
but it does note that Mr. Cloutier made no effort of the sort, and only
contacted the CIPO in September 2012.
[26]
Thus, on the basis of these conclusions, the
Court cannot therefore reinstate the patent applications.
[27]
Mr. Cloutier seeks an amendment to the Register
in order to have his name added as owner of patent applications 612, 139 and
144 and as the inventor of the invention described therein, and in order to
have Mr. Thibault’s name expunged from these two entries. The parties submit
that the effect of such an amendment would be purely cosmetic, while Mr.
Cloutier adds that it would be beneficial to him as it would bring him a
measure of satisfaction. The Court is sensitive to Mr. Cloutier’s feelings, but
cannot find sufficient justification to issue an order imposing unnecessary
procedures on the Patent Office.
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