University of Alberta v Canada (Attorney General), 2018 FCA 36

Under rigid rules governing the patent prosecution process in Canada, adhering to strict deadlines is crucial for prospective patentees.

In this case, Canadian Patent Application No. 2,804,560 (“the Patent Application”) was deemed abandoned and could not be reinstated following the failure to respond to a requisition from the Canadian Intellectual Property Office on behalf of the Commissioner of Patents (“the Commissioner”). The Federal Court of Appeal (“FCA”) upheld the Federal Court (“FC”) decision dismissing the application from the Governors of the University of Alberta and Alberta Health Services (collectively, “the University”) for judicial review of the Commissioner’s decisions to refuse reinstatement of the Patent Application.

Background

The Patent Application was initially filed in 2013 by TEC Edmonton and Alberta Health Services (collectively, “the Applicants”) and listed three inventors. [2] The Commissioner promptly requisitioned, by way of a letter (“the Requisition”) a declaration from the patent agents to state that the Applicants were the legal representatives of the inventors, pursuant to Paragraph 37(2)(a) of the Patent Rules, and failure to comply would result in abandonment one year from filing. [3] The Applicants did not respond to Requisition. [22]

A year later, the Commissioner notified the agents that the Patent Application was deemed abandoned but could be reinstated within 12 months. [4] During the reinstatement period, TEC Edmonton assigned its rights in the Patent Application to the Governors of the University of Alberta and a change of patent agents also took place, [5] however no action was taken to reinstate the Patent Application. [22]

The Patent Application became listed as “dead” in 2015. [6] The University requested the Commissioner to correct her records in 2016, [7] in response to which the Commissioner issued three decisions (“the 2016 Letters”) refusing to reinstate the patent application, process the maintenance fee, and conduct an advance examination of the Patent Application. [8] The University applied for judicial review of the 2016 Letters and argued that the Patent Application complied with the Patent Rules. [8]

The FC ruled against the University, finding that the decision to be judicially reviewed was the Requisition from 2013 – not the 2016 Letters; and since the time period to file an application for judicial review had expired, the decision as not reviewable. [9] Further, the FC found that the Commissioner did not have the discretion to reinstate the patent application once it was dead, as a matter of law. [9]

Commissioner was Entitled to Refuse Reinstatement

The FCA held that the FC erred in finding that the Requisition was the subject of judicial review because the Requisition was not sent as a result of a discretionary decision. [14] Thus, the FCA went on to review the 2016 Letters, but nonetheless found that the Commissioner did not err in refusing to reinstate the Patent Application, because the Commissioner had no discretion to do so once the reinstatement period had lapsed. [24]

The FCA stated that for an application to be deemed abandoned under the Patent Rules, two requirements must be met: (1) the Commissioner must have sent a requisition referring to Rule 23, 25, 37, or 94, and (2) the patent applicant must not have replied to the requisition in good faith. [18] The FCA rejected the University’s argument that the Commissioner was also required to send a requisition under Rule 94 but failed do so, which renders her decision of abandonment invalid. [20-21] The FCA found that the Commissioner fulfilled her statutory duty by sending the Requisition asking the Applicants to comply with paragraph 37(2)(a) of the Patent Rules, and that the Applicants failed to reply. [19]

Commentary

In today’s commercial climate, accelerators often assign away their rights in patent applications early on. A clerical error during the transfer can be detrimental to the patent prosecution process. Additionally, the Canadian government has proposed amendments to the Patent Rules, including changes to the abandonment and reinstatement procedures. Patent applicants will no longer have the 12-month reinstatement period to rely on; following abandonment, reinstatement may be possible, but the applicant must show that the abandonment occurred in spite of due care having been applied. This gives the Commissioner the discretion to grant reinstatement, which can be challenged in courts. The new procedures will only apply to abandonments that occur on or after the date these amendments come into force, which is expected in 2019.