University of Alberta v Canada (Attorney General), 2017 FC 402

The complexity of the patent process, particularly where deadlines are concerned, is a matter of utmost seriousness. Failing to give it its due attention can even risk an application being abandoned.

In this decision, the Federal Court (“FC”) dismissed the University of Alberta’s (“the University”) application under Section 18.1 of the Federal Courts Act for judicial review of three Canadian Intellectual Property Office (“CIPO”) decisions over Patent Application No. 2,804,560 (“the ‘560 Application”). [1] The dismissal was effectively a refusal to declare the ‘560 Application in good standing following the failure of TEC Edmonton and Alberta Health Services (collectively, “the Original Applicants”) or their agents to reply to a requisition and to apply to reinstate the ‘560 Application within the 12-month grace period.

Background

The ‘560 Application was filed on February 1, 2013, by agents acting for the Original Applicants, and was devoid of a statement that the Original Applicants were the legal representatives of the individual inventors. [2] Two weeks later, CIPO issued a notice to the agents requisitioning the Original Applicants to comply with Section 37 of the Patent Rules 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 ‘560 Application, and a notice advising the Original Applicants that CIPO would use the title of the invention as it appeared in the description rather than the title provided in the Petition for Grant of a Patent. [3] CIPO issued a Notice of Abandonment on March 31, 2014 for the ‘560 Application to the agents stating that that the ‘560 Application was deemed to be abandoned pursuant to Sections 97 or 151 of the Patent Rules for failure to reply in good faith to a requisition by the Commissioner, but that the ‘560 Application could be reinstated within 12 months of the date of abandonment pursuant to Section 73(3) of the Patent Act. [4]

The rights to the ‘560 Application were assigned by the Original Applicants to the University on June 10, 2014. [5] On January 13, 2015 and January 22, 2015, the University paid the Year 2 [6] and Year 3 [7] maintenance fees, respectively. A petition for a correction of the patent records to show that ‘560 Application was in good standing was made on February 1, 2016, but a reply from CIPO two days later indicated that it would not revise the patent records because the University failed to comply with the Requisition within 12 months, rendering the ‘560 Application beyond the possibility of reinstatement. [8] The University was notified another day later that CIPO would not process the Year 3 maintenance fee payment for the same reason. [9] On March 24, 2016 the University requested the Commissioner to advance and examination of the ‘560 Application, but CIPO declined on May 16, 2016, citing again that the ‘560 Application was beyond the period of reinstatement. [10]

Issues

The three key CIPO decisions for which judicial review was sought were the following: Refusing to correct patent records to show the ‘560 Application was in good standing; refusing to apply maintenance fee payment dated January 22, 2016 for the ‘560 Application; and refusing to advance the examination of the ‘560 Application. [1]

In essence, the main issue in this decision was whether CIPO had correctly applied provisions of the Patent Act and the Patent Rules in deeming the ‘560 Application abandoned and not able to be reinstated.

Analysis

The FC began its analysis by considering the standard of review that should apply [16-18] and the applicable provisions from the Patent Act [19] and the Patent Rules. [20] The University presented numerous arguments alleging that CIPO’s actions suggested to the University that the ‘560 Application was still in good standing. [53-73] However, the FC did not find any of these arguments to be effective, stating that CIPO never communicated to the University that the ‘560 Application was in compliance with the Patent Rules. [78] The FC further went on to elaborate that the problem was not the patent regime but instead the fact that the University inherited a situation devoid of any interest remaining in the ‘560 Application. [91]

Conclusion

The FC concluded that the ‘560 Application was dead for all intents and purposes and therefore incapable of being examined or prosecuted any further. [92] Under the Patent Act and the Patent Rules, where an applicant fails to respond to a requisition and the application is not reinstated within the 12 months provided, the patent application is abandoned as a matter of law, leaving the Commissioner no discretion to reinstate it. [92]

Commentary

The patent process is often referred to as being complex because it is chock full of crucial intricacies. Important dates and timelines are just one of these many details. This decision illustrates the significance of managing timelines, deadlines and the tasks that need to be completed in accordance with them. Accurate processes and sound systems must be designed and maintained to ensure a patent application makes it to issuance. The authors also ponder whether electronic and artificial intelligence systems, which can manage complex and sensitive timeline-related tasks with ease, are the direction patent prosecution should be headed in. Programmable task-scheduling that can automatically notify patent professionals of upcoming due dates, multiple times and long before they are realized, can help avoid the perils seen in this case and drastically lessen the risk of patent application abandonment. The future should also include much tighter electronic integration between patent and trademark offices and firm databases; the current approach of generating paper which is received and entered by data entry clerks is antiquated and dangerous to client rights.