Docket: A-166-17
Citation:
2018 FCA 36
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CORAM:
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WEBB J.A.
NEAR J.A.
LASKIN J.A.
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BETWEEN:
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THE GOVERNORS OF THE UNIVERSITY OF ALBERTA
and ALBERTA HEALTH SERVICES
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Appellants
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and
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ATTORNEY
GENERAL OF CANADA
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Respondent
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REASONS
FOR JUDGMENT
NEAR J.A.
I.
Overview
[1]
The appellants, the Governors of the University
of Alberta and Alberta Health Services, appeal a decision by Justice Russell of
the Federal Court, dated April 24, 2017 (The Governors of the University of
Alberta and Alberta Health Services v. Attorney General of Canada, 2017 FC
402). The Federal Court dismissed the appellants’ application for judicial
review of three decisions from the Canadian Intellectual Property Office (CIPO)
on behalf of the Commissioner of Patents.
II.
Background
[2]
On February 1, 2013, agents filed a patent
application with CIPO. The patent applicants were TEC Edmonton and Alberta
Health Services and three inventors were listed on the patent application. The
patent application did not include a declaration that the patent applicants
were the legal representatives of the inventors as required by paragraph 37(2)(a)
of the Patent Rules, S.O.R./96-423.
[3]
On February 15, 2013, the Commissioner sent a
requisition to the agents requiring the patent application to comply with Rule
37 of the Patent Rules within the prescribed time period, in this case,
12 months from the filing date. This letter explained that failure to do so
would result in abandonment of the patent application under section 73 of the Patent
Act, R.S.C., 1985, c. P-4.
[4]
On March 31, 2014, the Commissioner sent a
Notice of Abandonment to the agents stating that the patent application was
deemed abandoned as of February 3, 2014. The notice explained that the patent
application could be reinstated under subsection 73(3) of the Patent Act
if the patent applicants corrected the error within the 12 months following the
abandonment.
[5]
In June 2014, one of the original rights
holders, TEC Edmonton, assigned its rights in the patent application to the
Governors of the University of Alberta.
[6]
On February 3, 2015, the 12-month period during
which the patent application was eligible for reinstatement expired and the
patent application was listed as “dead”.
[7]
On January 21, 2016, the appellants learned that
the patent application was deemed dead. They asked the Commissioner to correct
her records in a letter dated February 1, 2016.
III.
Letters from the Commissioner
[8]
On February 3, 2016, the Commissioner sent a
letter to the appellants explaining that she could not reinstate the patent
application as the reinstatement period had expired (February 3, 2016 letter). In
a further letter dated February 4, 2016, the Commissioner explained that she
could not process the payment of a maintenance fee which the appellants had
submitted, again explaining that the patent application was beyond the period
of reinstatement (February 4, 2016 letter). Finally, on May 17, 2016, the
Commissioner further explained that she could not conduct an advance
examination of the patent application as the appellants had requested because
the period of reinstatement had passed (May 17, 2016 letter). The appellants
applied to the Federal Court for judicial review on February 18, 2016, seeking
among other things a declaration that the patent application complied with Rule
37 of the Patent Rules, and subsequently amended the Notice of
Application to include the decisions communicated through the February 4, 2016
and May 17, 2016 letters. They also took issue with the February 3, 2016
letter.
IV.
Federal Court Decision
[9]
The Federal Court dismissed the appellants’
application for judicial review. The Federal Court found that the appellants
were really seeking judicial review of the requisition sent on February 15,
2013 (Reasons at para. 54). Consequently, it found that the time period to file
an application for judicial review of that decision had expired and that
decision was not reviewable. Further, the Federal Court found that there was no
decision for the Commissioner to make because, as a matter of law, the Patent
Act does not allow for reinstatement once a patent application is dead.
Thus, there was no discretionary decision of the Commissioner that the Federal
Court could review.
[10]
The appellants filed a Notice of Appeal in this
Court on May 23, 2017.
V.
Issues
[11]
I would characterize the issues on appeal as
follows:
- Did the Federal Court err in concluding that the appellants were
seeking judicial review of the requisition sent by the Commissioner in the
letter of February 15, 2013?
- Did the
Commissioner err in refusing to reinstate the patent application (February
3, 2016 letter), process the maintenance fee (February 4, 2016 letter),
and conduct an advance examination of the patent application (May 17, 2016
letter)?
VI.
Analysis
A.
Did the Federal Court err in concluding that the
appellants were seeking judicial review of the requisition sent by the
Commissioner in the letter of February 15, 2013?
[12]
The standard of review for appeals from decisions
of the Federal Court on preliminary matters in applications for judicial review
is that for appellate review outlined in Housen v. Nikolaisen, 2002 SCC
33, [2002] 2 S.C.R. 235. The preliminary question about whether the Federal
Court erred in concluding that the decision under review was the requisition is
a question of mixed fact and law. Accordingly, I will review the Federal
Court’s determination of the preliminary issue on the standard of palpable and
overriding error.
[13]
The Federal Court found that the appellants’
real purpose was to ask the Federal Court to review the requisition of February
15, 2013 and that the time period to file an application for judicial review of
that decision had expired. Therefore, that decision was not reviewable. I
disagree that the requisition is the decision under review.
[14]
In my view, the requisition was not sent as a
result of a discretionary decision and so was not subject to judicial review.
Rather, the requisition was a notice that the patent application did not meet
the requirements of Rule 37 of the Patent Rules. It was not a decision that
the patent application was abandoned as there was a mechanism for the
appellants to correct the error in the patent application. There was no reason
for the appellants to seek judicial review of the requisition as it informed
them that the patent application would be deemed abandoned in the future if
they did not correct an error but was not itself a decision.
[15]
In my view, the Federal Court made a palpable
and overriding error in finding that the decision under review was the
requisition. Thus, I will review the decisions communicated through the February
3, 2016; February 4, 2016; and May 17, 2016 letters on the merits.
B.
Did the Commissioner err in refusing to
reinstate the patent application (February 3, 2016 letter), process the
maintenance fee (February 4, 2016 letter), and conduct an advance examination
of the patent application (May 17, 2016 letter)?
[16]
The Federal Court found that the standard of
review applicable to the Commissioner’s interpretation of the Patent Act and
the Patent Rules is reasonableness. There is no need to determine, in
this case, whether this is the standard of review that is to be applied to the
Commissioner’s interpretation of the Patent Act and the Patent Rules.
[17]
Rule 97 of the Patent Rules deems a
patent application to be abandoned if the patent applicant does not reply in
good faith to a requisition of the Commissioner under Rule 37 or Rules 23, 35 or
94:
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97 For the purposes of subsection 73(2) of the Act, an application
is deemed to be abandoned if the applicant does not reply in good faith to
any requisition of the Commissioner referred to in section 23, 25, 37 or 94
within the time provided in that section.
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97 Pour l’application du paragraphe 73(2) de
la Loi, la demande est considérée comme abandonnée si le demandeur omet de
répondre de bonne foi à toute exigence du commissaire visée aux articles 23,
25, 37 ou 94 dans les délais qui sont prévus à ces articles.
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Once a patent application is deemed
abandoned, patent applicants can correct the error that led to the abandonment
and seek reinstatement within a prescribed period—in this case, 12 months from
the date that the patent application was deemed abandoned. If the error is not
corrected, the patent application is dead—that is, not capable of reinstatement—by
operation of law.
[18]
Two requirements must be met under Rule 97 in
order for a patent application to be deemed abandoned: (1) the Commissioner must
send a requisition referred to in any one of Rules 23, 25, 37, or 94, and (2)
the patent applicant must not reply in good faith.
[19]
With regard to the first requirement, the patent
application did not meet the requirements of paragraph 37(2)(a) of the Patent
Rules as it lacked the statement that the patent applicants were the legal
representatives of the inventors. Sub Rule 37(2) reads as follows:
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37(2) If the applicant is not the inventor, the application must
contain a statement indicating the name and address of the inventor and,
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37(2)
Lorsque le demandeur n’est pas l’inventeur, la demande doit contenir un
énoncé indiquant le nom et l’adresse de l’inventeur et la déclaration
suivante :
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(a) in respect of an application other than a PCT national phase application,
a declaration that the applicant is the legal representative of the inventor;
and
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a) à l’égard d’une demande autre qu’une
demande PCT à la phase nationale, une déclaration portant que le demandeur
est le représentant légal de l’inventeur;
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Consequently, the Commissioner sent a notice
of requisition that the patent applicants comply with paragraph 37(2)(a)
pursuant to Sub Rule 37(4):
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37(4) If an application does not comply with the requirements of
subsections (1) to (3), the Commissioner shall, by notice to the applicant,
requisition the applicant to comply with those requirements before the later
of the expiry of the 3-month period after the date of the notice and the
expiry of the 12-month period after the filing date of the application.
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37(4) Lorsqu’une demande n’est pas conforme aux
exigences énoncées aux paragraphes (1) à (3), le commissaire exige par avis
que le demandeur se conforme à ces exigences dans les trois mois suivant la
date de l’avis ou dans les douze mois suivant la date du dépôt de la demande,
selon celui de ces délais qui expire le dernier.
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[20]
The appellants argued that the Commissioner was
also required to send a requisition under Rule 94 and that she failed to do so.
Thus, they argued, the decision to deem the patent application abandoned was
invalid. I disagree.
[21]
Rule 97 states that “an
application is deemed to be abandoned if the applicant does not reply to any
requisition of the Commissioner referred to in section 23, 25, 37 or 94”
[emphasis added]. Rule 97 refers to Rules “23, 25, 37
or 94” and as such indicates that there are various ways to found a
deemed abandonment. There is nothing in the text of Rule 97 to suggest that a
requisition under Rule 94 takes precedence over one under Rule 37 or that Rule
97 only applies if the requisitions are sent under both Rules 37 and 94. Further,
there is nothing in the text of Rule 97 to suggest that a requisition under Rule
37 may be disregarded or ceases to have legal consequences if a requisition is
not also sent under Rule 94.
[22]
With regard to the second requirement, the
appellants concede that the patent applicants did nothing to respond to the Rule
37 requisition. They argue, however, that, the Commissioner’s failure to send a
requisition under Rule 94 amounted to a decision that Rule 37 had been complied
with as a matter of law and the requisition of February 15, 2013 was therefore either
unauthorized or responded to in good faith. I disagree.
[23]
Having found that there is no requirement to
send a requisition under Rule 94, it follows that failure to send a requisition
under Rule 94 does not indicate that the patent application has complied with
Rule 37. Indeed, to my mind, inaction is not a basis upon which to show good
faith. As the patent applicants did not respond to a requisition enumerated in Rule
97 within the required timeline, their application was deemed abandoned by
operation of the provisions of the Patent Act.
[24]
There is no mechanism in the Patent Act
or Patent Rules by which the Commissioner can reinstate a patent
application once it is deemed abandoned and the period for reinstatement has
passed. In my view, the Commissioner had no discretion under the Patent Act
to reinstate the patent application once it had been deemed abandoned and was
incapable of reinstatement (February 3, 2016 letter) and the subsequent
explanations that the Commissioner could not process the maintenance fee
(February 4, 2016 letter) or conduct an advance examination of the patent
application (May 17, 2016 letter) also flowed from the deemed abandonment and
impossibility of reinstatement by operation of law. Thus, there is no basis
upon which to intervene with respect to the decisions communicated in the three
letters.
VII.
Conclusion
[25]
For the foregoing reasons, I would dismiss the appeal
with costs.
"David G. Near"
“I
agree.
Wyman W.
Webb J.A.”
“I
agree.
J.B. Laskin”
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