Date:
20081209
Docket:
A-280-08
Citation: 2008 FCA 391
CORAM: LINDEN J.A.
SHARLOW
J.A.
TRUDEL
J.A.
BETWEEN:
ANTIBALLISTIC
SECURITY AND PROTECTION INC.
Appellant
and
THE
COMMISSIONER OF PATENTS
Respondent
REASONS FOR
JUDGMENT
TRUDEL J.A.
[1]
This
is an appeal from a decision by Mr. Justice Blanchard (the Applications Judge),
2008 FC 587, who dismissed an application for judicial review of a decision
rendered by the Commissioner of Patents.
[2]
The
Commissioner refused to accept the appellant’s International Patent Application
No. PCT/US2004/020989 for Canadian National Phase entry because the request was
time-barred (see subsection 58(3) of the Patent Rules, SOR/96-423 (the
Rules) and Regulation 90bis.3 of the Regulations under the Patent
Cooperation Treaty (the PCT Regulations).
[3]
The
facts leading to the Commissioner’s decision are as follows.
[4]
The
appellant filed three U.S. patent applications for three inventions
with the filing dates of July 1, 2003 (first invention), April 2, 2004 (second
invention), and May 5, 2004 (third invention).
[5]
On
July 1, 2004, pursuant to the Patent Cooperation Treaty (PCT), the
appellant filed with the World Intellectual Property Organization Bureau (WIPO)
an international patent application claiming priority to the three inventions
assigned number PCT.US2004/020989. The appellant designated Canada as a country
to which protection for the inventions would apply.
[6]
On
May 17, 2007, the appellant informed the WIPO that it wished to “disclaim” the
priority claim to the first invention while retaining the priority claims to
the second and third inventions (AB, Tab 4 at pp. 50-56). On May 23, 2007, WIPO
declined to record the “withdrawal” of the priority claim to the first
invention because the time had expired for a withdrawal under the PCT Regulations).
[7]
On
May
18, 2007,
the appellant applied to the Canadian Intellectual Property Office (CIPO)
claiming priority only to the second and third inventions (ibid. at pp.
37-47). The record also indicates that the appellant applied for, and in 2006
was granted, regional entry in Europe and national entry in Israel: AB, Tab 5A
at pp. 63-96.
[8]
On
June 18, 2007, the Commissioner, as stated above, informed the appellant of the
refusal to accept its application for national phase entry.
[9]
In
Canada, national
phase entry is governed by sections 56-58 of the Rules. Applied to the
appellant’s circumstances, the Rules provide that the appellant had to file its
application “not later than on the expiry of . . . the 42-month period after
the priority date” (Rule 58).
[10]
Pursuant
to section 2(xi)(b) of the PTC, which is incorporated by reference into section
50 of the Rules, where the international application contains several priority
claims, the priority date is deemed to be “the filing date of the earliest
application whose priority is so claimed.”
[11]
The
Commissioner and the Applications Judge applied this definition within the
context of the international application. The Applications Judge wrote:
The relevant
priority date to the Applicant’s entry into the National Phase in Canada is July 1, 2003,
the priority date for the First Invention claimed in the impugned International
Patent Application. (reasons for Judgment at para. 23)
[12]
The
appellant argued that this interpretation is incorrect. The appellant’s
position before the Applications Judge, and in this appeal, is that the phrase
“the filing date of the earliest application whose priority is so claimed” in
section 2(xi)(b) of the PTC, as incorporated into section 50 of the Rules,
should be interpreted to refer to the filing date of the earliest application
whose priority is claimed in Canada.
[13]
I
am unable to accept the interpretation proposed by the appellant. I agree with
the Applications Judge that the appellant, having chosen to file an
international patent application for three related patents, must take the applicable
time limitations as it finds them. The Rules do not contemplate the possibility
that a person filing a three-invention application internationally may choose
to proceed in Canada with only
two of them, without complying with the time limits for the withdrawal of a
claim under the PCT Regulations.
[14]
The
appellant had also relied on a common law right to disclaim “so long as there
was no contradiction with anything in the [Patent] Act which may affect patent
rights” (ibid, at paragraph 21).
[15]
The
Applications Judge rejected the appellant’s arguments. First, the Applications
Judge concluded “that there is no provision for a ‘disclaimer’ of a priority
claim made in the international application in the PCT or in its Regulations” (ibid,
at para. 25). He was not persuaded that “because ‘disclaiming’ is not
prohibited in the legislation, it should therefore be allowed” (ibid.,
at para. 27).
[16]
Ultimately,
he found that “the legislation . . . provided for a comprehensive regulatory
scheme for matters relating to the filing in Canada of
international applications” (para. 29). In his view, the legislative scheme
prevailed over the common law argument advanced by the appellant. I agree with
the Applications judge on this point, substantially for the reasons he gave.
[17]
In
my view, the Applications Judge made no error in law in deciding as he did. I
would dismiss this appeal.
[18]
No
award for costs should be granted as the respondent is not seeking costs.
"Johanne
Trudel"
“I
concur
A.M.
Linden J.A.”
“I
concur
K.
Sharlow J.A.”
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