Bayer Cropscience LP v Canada (Attorney General), 2017 FC 178
The Patent Act permits the back-dating of a patent application filing date to that of an earlier patent application (referred to as claiming priority) for the purpose of assessing novelty and obviousness. In order to claim priority, the later application must be filed within 12 months of the earlier application and the priority claim must be made within 16 months of the filing date of the earlier application.
Patent applicants should be mindful that errors in claiming priority must be corrected before the 16-month deadline, and that the Commissioner of Patents is under no obligation to amend the priority date where the request for correction is made after the 16-month deadline.
In this decision, the Federal Court (“FC”) dismissed  a request by Bayer Cropscience LP (“Bayer”) for judicial review of a Commissioner’s decision refusing to change the priority filing date for Bayer’s Canadian Patent Application No. 2,907,271 (“the ‘271 Application”) from April 19, 2012 to April 3, 2012.  Bayer submitted that the Commissioner of Patents (“Commissioner”) incorrectly recorded the priority filing date.  However, the FC found that the Commissioner did not err in refusing Bayer’s request,  based on provisions in the Patent Act and Patent Rules relating to priority claims. 
Bayer had filed US Patent Application No. 61/619,691 (“the ‘691 US Application”) with the United States Patent and Trademark Office (“USPTO”) on April 3, 2012. The USPTO did not assign a filing date for the ‘691 US Application until missing patent drawings were filed on April 19, 2012. The filing date that was assigned was also April 19, 2012 and Bayer did not contest this. On March 15, 2013, Bayer filed a Patent Cooperation Treaty (“PCT”) application with the World Intellectual Property Organization (“WIPO”), Patent Application PCT/US2013/031888 (“the ‘888 PCT Application”), which claimed priority from the ‘691 US Application. Bayer requested a filing date of April 3, 2012 for the ‘888 PCT Application, but after WIPO noted the discrepancy with the filing date of the ‘691 US Application, Bayer requested that the same filing date be used as the ‘691 US Application. 
At Bayer’s request in April 2015, the USPTO amended the filing date of the ‘691 US Application to April 3, 2012, admitting that the earlier filing date was correct because the missing drawings were not required to establish the filing date. In mid-2015, Bayer made two requests to the USPTO to amend the priority date for the ‘888 PCT Application, however both were denied. The ‘888 PCT Application entered the national phase in Canada on August 7, 2015 as the ‘271 Application. Bayer requested that the ‘271 Application be given a filing date of April 3, 2012 on the basis that it claimed priority from the ‘691 US Application, but its request was denied by the Commissioner on December 3, 2015. 
Bayer argued that the Commissioner failed to correctly apply Section 88 of the Patent Rules, relating to priority claims, and that the Commissioner failed to discharge her duty to ensure that the Patent Register did not contain errors.  The FC disagreed with Bayer on both points. 
Patent Rules Correctly Interpreted
The FC held that the Commissioner had correctly interpreted the Patent Rules in finding that Bayer’s request to amend the priority date was out of time.  The FC explained that in most cases, the claim date for a Canadian patent application is the date that on which the application was filed in Canada, unless the Canadian application is filed within 12 months of a previously regularly filed application and the applicant requests that the prior date be considered the claim date.  Where a PCT Patent Application has been filed, the applicant can claim priority to a previous application filed no earlier than 12 months before the PCT filing date.  Since the filing date of the ‘271 Application is deemed to be the PCT filing date, March 15, 2013, which was less than 12 months after the priority date of the ‘691 US Application, regardless of whether it was April 3, 2012 or April 19, 2012, Bayer would be entitled to use whichever priority date was correct. 
The FC found that since the filing date of the ‘691 US Application was recorded as April 19, 2012 as at the time of filing the ‘888 PCT Application, March 15, 2013, April 19, 2012 would serve as the correct priority date of the ‘271 Application.  Furthermore, the FC stated that Bayer lacked a basis for its request on March 15, 2013 to a priority date of April 3, 2012, and noted that Bayer had later conceded that the correct date was April 19, 2012.  The filing date for the ‘691 US Application was only amended in April 2015, while the priority date for the ‘888 PCT Application was never amended from April 19 to April 3, 2012.  Finally, the Commissioner was found to have correctly concluded that Section 88(1)(b) of the Patent Rules requires that a request for a priority date be made within 16 months of the filing date for that application.  Bayer would have had until August 19, 2013 to make a request, putting its August 2015 request far outside the given frame.  Effectively, this meant that Bayer was required to have the priority date of the PCT application corrected before entering the national phase in Canada, which it tried unsuccessfully to do.
No Basis for Assertions Against the Commissioner
The FC could find no basis for Bayer’s assertion that the Commissioner failed to discharge her duties to ensure the Patent Register contained no errors.  Bayer relied on another decision of the FC where it was stated that the Commissioner has an implied duty to maintain Patent Office records accurately, however, the FC in this decision did not find the patent records for Bayer’s application as being inaccurate.  Considering the lack of convincing steps taken by Bayer to amend the filing dates and to request amendments within the given timeframes, the FC found no basis for concluding that the Patent Register required correction or that the Commissioner erred in refusing to amend it. 
The Commissioner was found to have correctly deemed Bayer’s request for a priority date of April 3, 2012 too late, and that she was under no obligation to amend the Patent Register to reflect that date.  The application was dismissed with costs. 
While adhering to the deadlines provided in rules and regulations is one element of note in this decision, another aspect of particular importance is the FC’s reasoning that the Commissioner was under no obligation to amend the Patent Register after the deadline had passed. This places the burden of ensuring the accuracy of patent records and taking actions to remedy them in a timely manner on patent agents and/or the patentees themselves. Some may consider this as being in contrast to Section 4(2) of the Patent Act, which places the charge and custody of records on the Commissioner. However, even if an implied duty exists, in the circumstances of this decision, the patent register did not contain any inaccuracies and so there was nothing for the Canadian Intellectual Property Office to correct. In any case, patent applicants and/or their agents should remain cognizant of the relevant deadlines involved in the patent process and the consequences associated with missing them.