Date: 20000405
Docket: A-770-98
CORAM: NOËL J.A.
SHARLOW J.A.
MALONE J.A.
BETWEEN:
PHARMASCIENCE INC.
Appellant
(Applicant)
- and -
THE COMMISSIONER OF PATENTS
Respondent
(Responding Party)
- and -
G.D. SEARLE & CO.
Respondent
(Responding Party)
REASONS FOR JUDGMENT
MALONE J.A.
[1] This is an appeal from an order of The Honourable Mr. Justice Pinard dated November 26, 1998 refusing the application of Pharmascience Inc. ("Pharmascience" or "the appellant") for judicial review of two decisions of the Commissioner of Patents ("Commissioner"). These decisions related to Canadian patent application No. 2,082,944 made by G.D. Searle & Co. ("Searle"). One related to a determination by the Commissioner to allow the reinstatement of Searle's application under subsection 15(3) of the Patent Co-operation Treaty Regulations SOR/89-453. The other was to permit an amendment under section 38.2 of the Patent Act.
[2] On July 15, 1998 the Searle application, as amended, was allowed by the Commissioner pursuant to subsection 30(1) of the Patent Rules SOR /96-423. That event triggered this application for judicial review which was commenced on August 13, 1998. The patent was subsequently issued on November 24, 1998.
[3] In his judicial review, the Trial Judge held that Pharmascience lacked standing as a third party to obtain judicial review of a decision of the Commissioner, that Pharmascience had delayed too long in applying for judicial review and that alternative remedies were open to Pharmascience.
[4] On the issue of delay, we agree with the Trial Judge that the appellant's delay in bringing this application for judicial review of these two decisions of the Commissioner has not been satisfactorily explained.1 Subsection 18.1(2) requires an application for judicial review of a decision to be made within 30 days of that decision or within such later time as a judge of the Trial Division may allow.
[5] Canadian patent applications are a matter of public record. By virtue of subsection 10(2) of the Patent Act, patent applications and related documents are open to public inspection after eighteen months. At all times material to this case the Searle patent application was open to public inspection.
[6] The unchallenged evidence of Peter J. Davies, Chairman of the Patent Appeal Board, clearly demonstrates that while Searle missed a November 3, 1992 deadline in connection with its Canadian patent application # 2 082 944, it followed the reinstatement procedures in subsection 15(3) the Patent Co-operation Treaty Regulations SOR 89-453.2
[7] According to Mr. Davies, based on materials filed by the respondent, the Commissioner conducted a review and placed a Notice of Reinstatement of Application in the relevant file on or about December 16, 1992.
[8] David Goodman, a Pharmascience Vice-President, deposed that his company knew of the Searle's application in June 1997 but did not challenge the reinstatement decision until it launched its application for judicial review on August 13, 1998.3 The reason given was that the appellant did not think that the Commissioner was going to grant the patent.4
[9] Similar reasoning surrounded the delay in challenging a voluntary amendment submitted by Searle on December 16, 1997 to change part of the description contained in the original Searle application and to replace certain claims. Again, the unchallenged evidence of Mr. Davies was that the voluntary amendment was received by the patent examiner assigned to examine the Searle application on December 16, 1997 and the examiner made the decision to accept the amendment on this date. The amendment is noted on the front cover of the file wrapper, exhibited in the affidavit of Denise West, a deponent for Pharmascience. No evidence was adduced before the Trial Judge as to the date on which the notation was made to the file wrapper or the date on which that Pharmascience actually became aware of the notation. In those circumstances the Trial Judge inferred that the notation was made on December 16, 1997 and that Pharmascience should have been aware of it at that time or shortly thereafter. We are not persuaded that he erred in drawing those inferences.
[10] Our review of the record below has satisfied us that the Trial Judge properly exercised his discretion in denying judicial review based on subsection 18.1(2) of the Federal Court Act and inexplicable delay and we are satisfied that proper weight was given to all relevant surrounding considerations.5
[11] In light of our conclusion regarding delay, the issues of standing and alternative remedies need not be canvassed.
[12] The appeal will be dismissed with costs to both respondents.
(Brian Malone)
I agree
Marc Noël
J.A.
I agree
Karen R. Sharlow
J.A.
Date: 20000405
Docket: A-770-98
CORAM: NOËL J.A.
SHARLOW J.A.
MALONE J.A.
BETWEEN:
PHARMASCIENCE INC.
Appellant
(Applicant)
- and -
THE COMMISSIONER OF PATENTS
Respondent
(Responding Party)
- and -
G.D. SEARLE & CO.
Respondent
(Responding Party)
Heard at Ottawa, Ontario, on Wednesday, March 22, 2000.
Judgment rendered at Ottawa, Ontario, on Wednesday, April 5, 2000.
REASONS FOR JUDGMENT BY: MALONE J.A.
CONCURRED IN BY: NOËL J.A.
SHARLOW J.A.
Date: 20000405
Docket: A-770-98
DATED AT OTTAWA, ONTARIO, ON WEDNESDAY, APRIL 5, 2000
CORAM: NOËL J.A.
SHARLOW J.A.
MALONE J.A.
BETWEEN:
PHARMASCIENCE INC.
Appellant
(Applicant)
- and -
THE COMMISSIONER OF PATENTS
Respondent
(Responding Party)
- and -
G.D. SEARLE & CO.
Respondent
(Responding Party)
JUDGMENT
The appeal is dismissed with costs to both respondents.
(Marc Noël)
J.A.
__________________
1 Grewal v. Canada (Min. of Employment and Immigration) [1985] 2 F.C. 263 (FCA).
2 Appeal Book , Vol II, pp. 370-371.
3 Appeal Book, vol. I at 289-90.
4 Cross-examination of David Goodman, Appeal Book at 319.
5 Minister of National Revenue v. Canderel [1994] 1 F.C. 3 at 9 (F.C.A.).
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