Date: 20090925
Docket: A-316-09
Citation: 2009 FCA 275
Present: SHARLOW
J.A.
BETWEEN:
THE COMMISSIONER OF PATENTS
AND THE ATTORNEY GENERAL OF CANADA
Appellants
and
SYDNEY H. BELZBERG
Respondent
REASONS FOR ORDER
SHARLOW
J.A.
[1]
The Commissioner
of Patents and the Attorney General of Canada (collectively, the “Crown”) have
moved for a stay of the order of Justice Simpson dated June 23, 2009 pending
the disposition of this appeal of that order. The respondent Sydney H. Belzberg
opposes the motion. The reasons for Justice Simpson’s order are reported as Belzberg
v. Commissioner of Patents, 2009 FC 657.
[2]
The basic
facts appear to be undisputed. Mr. Belzberg submitted a patent application in
1994. His request for an expedited examination was granted in 1996. The patent
examination process resulted, in 2002, in a “Final Action Report” alleging that
the patent application was defective. A Patent Appeal Board hearing was
convened in 2005 to review the rejection of the application. In January of
2007, the Board concluded that none of the alleged defects was substantiated
and recommended that “the examiner’s rejection of the application be reversed
and that the application be returned to the examiner for further prosecution
consistent with these recommendations”. It is not clear from the material
before me what further prosecution was contemplated by the Board, if any. The
Commissioner issued a decision concurring with the decision of the Board and
returning the application to the Examiner “for further prosecution consistent
with the Board’s recommendation”. The result was that further examinations were
undertaken and further requisitions issued in relation to matters that had
arisen during the prior examination but were not raised in the Final Action
Report or considered by the Board.
[3]
In 2008, Mr.
Belzberg commenced an application for judicial review of the decision of the
Commissioner. In paragraph 2 of Justice Simpson’s reasons, the issue raised by
Mr. Belzberg is stated as follows:
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. . .
whether the Commissioner may restart an examination of a patent application after
disposing of all of the defects alleged in an examiner’s rejection labelled
“Final Action” under section 30 of the Patent Rules, SOR/96-423.
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[4]
Justice
Simpson allowed the application for judicial review, set aside the decision and
granted ancillary relief, including the following order:
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The
Commissioner is to forthwith make a decision granting the Patent Application
under section 27 of the [Patent Act] as it was amended by [Mr.
Belzberg] in the Voluntary Amendment.
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[5]
Section 27
of the Patent Act, R.S. 1985, c. P-4, reads as follows (my emphasis):
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27.
(1) The Commissioner shall grant a patent for an invention to the inventor or the inventor’s
legal representative if an application for the patent in
Canada is filed in accordance with this Act and all other requirements for
the issuance of a patent under this Act are met.
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27.
(1) Le commissaire accorde un brevet d’invention à l’inventeur ou à
son représentant légal si la demande de brevet est déposée conformément à la
présente loi et si les autres conditions de celle-ci sont remplies.
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[6]
At the
risk of oversimplifying, it seems to me from Justice Simpson’s reasons that she
was required to consider whether section 27 of the Patent Act imposes a
mandatory obligation on the Commissioner to issue a patent when the regulatory
process reaches a certain point. Having concluded that there was such a
mandatory obligation, she was required to consider whether the critical point in
the regulatory process had been reached when the Commissioner, rather than
granting the patent, made the decision challenged by Mr. Belzberg which
prolonged the patent examination process. She concluded that the challenged
decision was made after the critical point had been reached, which led her to
make the order under appeal.
[7]
The
Crown’s appeal is based primarily on its position that the relevant provisions
of the Patent Act should be interpreted to preclude a patent applicant from
seeking judicial review of any decision of the Commissioner made before the
decision to grant or refuse to grant a patent.
[8]
The
Supreme Court of Canada has established a three part test to determine whether a stay should be granted (RJR-MacDonald Inc. v. Canada
(Attorney General), [1994] 1 S.C.R. 311). Generally, the applicant for a
stay must show that there is a serious question to be tried, that irreparable
harm will be suffered if the stay
is not granted, and that the balance of inconvenience favours the granting of a
stay.
[9]
The
notice of appeal provides a sufficient basis for concluding that the appeal
raises a question of law that is not frivolous or vexatious. Therefore, the
first test is met.
[10]
The
question of irreparable harm is problematic in this case. Irreparable harm is a
question of fact, but the Crown has submitted no affidavit. To understand why
there is no affidavit, it is necessary to consider part of the procedural
history of this matter.
[11]
The
Crown’s motion record was filed with a request that it be decided after an oral
hearing. In an order dated September 3, 2009, Justice Trudel rejected that
request. Her order goes on to say this:
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The
appellants shall also file an affidavit supporting the motion as required by
Rule 364(2)(c) of the Federal Courts Rules.
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[12]
The
Crown has not complied with this order, which in my view is a sufficient basis
to dismiss the motion. However, I will consider, first, the letter dated
September 9, 2009 to the Court from counsel for the Crown, and second, the
question of whether the absence of an affidavit would in any event be fatal to
the Crown’s motion for a stay.
[13]
The
letter of September 9, 2009 reads in part as follows:
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Please
be advised that the Attorney General of Canada has elected to not file any
affidavit evidence in respect of the motion to stay the Order of Justice
Simpson dated June 23, 2009. As can be seen from the Motion Record and
Written Submissions, the stay of proceedings is based on the public interest
and the only materials relied upon are the applicable legislation and the
Decision under appeal.
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[14]
I
make three observations about this letter. First, counsel for the Crown has
assumed incorrectly that, despite being ordered to file an affidavit, the Crown
need not respect the order but is free to “elect” not to do so. Second, counsel
for the Crown has assumed incorrectly that it is appropriate, upon receiving an
order of this Court to which it objects, to express the objection by way of a
letter rather than a motion to reconsider or vary the order. Third, the Crown
has failed to appreciate that the order of Justice Trudel actually favoured the
Crown, because it provided an opportunity to correct what may be a fatal
deficiency in the Crown’s motion record (see, for example, Attorney General
of Canada v. J.P., 2009 FCA 211).
[15]
I
turn now to the question of whether the Crown’s motion record as it stands provides
any basis upon which I could determine the question of irreparable harm in the
Crown’s favour, assuming the motion is not dismissed summarily for failure to
comply with a court order.
[16]
The
Crown’s written submissions, paragraphs 33 to 37, purport to discuss the question
of irreparable harm, but those paragraphs are directed at the proposition that
Mr. Belzberg cannot claim to have suffered irreparable harm from the decision
of the Commissioner that he successfully challenged in the Federal Court. They
do not address the question of whether any irreparable harm would result to the
Crown or the public interest if the stay is not granted.
[17]
Paragraphs
16 to 22 of the Crown’s submissions, entitled “Public Interest in Granting a
Stay Pending Appeal”, sets out the Crown’s position that where a statutory
authority is seeking a stay of an order pending appeal, there is an overriding
public interest that justifies the Court in finding for the Crown on the
question of irreparable harm. This position is based primarily on the following
excerpt from RJR-MacDonald (paragraph 71):
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In our view, the concept of inconvenience should be widely
construed in Charter cases. In the case of a public authority, the onus of
demonstrating irreparable harm to the public interest is less than that of a
private applicant. This is partly a function of the nature of the public
authority and partly a function of the action sought to be enjoined. The test
will nearly always be satisfied simply upon proof that the authority is
charged with the duty of promoting or protecting the public interest and upon
some indication that the impugned legislation, regulation, or activity was
undertaken pursuant to that responsibility. Once these minimal requirements
have been met, the court should in most cases assume that irreparable harm to
the public interest would result from the restraint of that action.
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[18]
The
quoted statement from RJR–Macdonald was made in the context of a case
involving a challenge to the validity of a statute, where a party affected by a
regulation made under the statute wished to be relieved of an onerous
obligation to comply with the regulation until the challenge was resolved. The
Crown in this case is seeking a stay of an order in which there was no challenge
to the validity of a law, but only a dispute as to its interpretation.
[19]
I
do not read RJR-MacDonald as authority for the proposition that, where
the Crown seeks a stay of an order pending appeal, it is relieved of the burden
of adducing evidence of irreparable harm, if not to the Crown itself, at least
to the orderly administration of the law. That burden may be easily met in some
cases, but I do not accept that the burden is automatically met simply because
the Crown seeks a stay.
[20]
It
may be that the issue of the orderly administration of the Patent Act
was on the mind of counsel for the Crown when writing, in paragraph 22 of the
Crown’s submissions, that “the consequence of not granting a stay pending
appeal will be confusion, additional delay, and inconsistency in the processing
of patent applications in what is already a very litigious area of the law.” In
my view, this is the kind of submission that cannot be assessed without a
factual foundation, because it requires knowledge of the practice of patent
examinations, a topic on which I am not prepared to take judicial notice. The
Crown argues that it is important to preserve the “administrative and
procedural status quo”, without purporting to explain what the
“administrative and procedural status quo” is (apart from its argument
that the order under appeal is wrong in law).
[21]
It
might be helpful to know, for example:
a) whether it is
common and accepted practice for the Commissioner to make decisions like the
one challenged in this case, or whether the facts of this case are unique;
b) whether it is
common and accepted practice for a patent application to be returned for
examination after a Board hearing that appears to favour the applicant on the
merits;
c) whether a
patent examination period of 13 to 15 years is considered normal; and
d) whether it is
possible to determine how many other patent applicants may be in a position to
raise one or more of the issues determined by Justice Simpson in Mr. Belzberg’s
favour, and if so, how many other potential cases there are.
[22]
It
would also be helpful to have a factual basis for the Crown’s submission that
the decision under appeal can be expected to result in confusion, additional
delay, and inconsistency. Who is likely to be confused by the decision? Who is
obliged to act inconsistently because of the decision, and in what way? There
is no evidence on any of these factual questions, and I cannot discern the
answers from the decision under appeal or in the legislation.
[23]
In
the absence of any evidence that irreparable harm will result if the stay is
not granted, I would be compelled to dismiss the Crown’s motion for a stay.
[24]
The
Crown’s motion for a stay will be dismissed for failure to comply with the
order of Justice Trudel dated September 3, 2009.
[25]
The
respondent has sought costs on a solicitor and client basis. I agree that
solicitor and client costs are warranted. An order will be made accordingly.
The Crown has submitted that the Commissioner cannot be compelled to pay costs.
I am not persuaded that this is so, but I need not decide that point. The order
will provide that the costs will be payable by the Attorney General of Canada
in any event of the cause.
“K. Sharlow”
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