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Practice |
P. E. Fusion LLC v. Canada (Attorney General)
T-1683-03
2004 FC 645, Mosley J.
29/4/04
11 pp.
Judicial review of Commissioner of Patents' refusal to revive Canadian patent No. 1283520 (patent) which lapsed for failure to pay required maintenance fees--Lapse due to mistaken belief at law firm representing inventor, original owner of patent subsequent to transfer of ownership, that fee already paid--Applicant arguing Commissioner erred in limiting "clerical error" in Patent Act (Act), s. 8 to errors in instrument of record held in Patent Office--Patent granted on April, 30, 1991 as result of application filed on June 3, 1987--Therefore, pursuant to Act, s. 78.2(2), s. 8, as it read immediately prior to October 1, 1989, applied--S. 8 speaks of "clerical errors in any instrument of record in the Patent Office"--Applicant seeking to have lapsing of patent notation remedied--Such notation not in error, but made in accordance with Act and Regulations--Whether applicant's inadvertent failure to submit prescribed maintenance fee within prescribed time frame due to clerical error or otherwise immaterial to application of s. 8--Actual error which occurred (law firm's mistaken charge to original patent owner's account, rather than to applicant's account) not "a clerical error in any instrument of record" in Patent Office--Applicant also arguing Commissioner erred by failing to acknowledge inherent jurisdiction to correct error which is result of "genuine" mistake by patentee or agent--Argument cannot succeed because Act, s. 46(2) indicates patent "shall" be deemed to have expired if fees payable pursuant to s. 46(1) not paid within time provided in regulations--Such mandatory requirement not indicating discretion on part of Commissioner to modify or grant relief from such provision--Also, Court holding in Pfizer Inc. v. Canada (Commissioner of Patents) (2000), 9 C.P.R. (4th) 13 (F.C.A.) inter alia, Commissioner not having authority to extend deadline for payment of fees or offer relief against consequences of underpaying maintenance fee--Similarly, Commissioner having no express or implied authority to modify or waive requirements with regards to mandatory payment of fees--Finally, concept of inherent jurisdiction of Commissioner to correct "genuine" mistakes made by patentees or their agents fraught with difficulty-- What would be parameters of "genuine" mistake, versus "non-genuine" one?--Legislative scheme for payment of mainte-nance fees not containing relief provisions, beyond one-year reinstatement period, and not vesting Commissioner or Court with any discretion to correct mistakes, even ones by well-intentioned patentees, from strict rules related to payment of prescribed fees when such payment neglected past reinstatement time period--While unfortunate simple mistake resulted in loss of applicant's interest, no basis for Court to provide remedy in these circumstances--Application dismissed--Patent Act, R.S.C., 1985, c. P-4, ss. 8 (as am. by S.C. 1993, c. 15, s. 27), 46 (as am. by R.S.C., 1985 (3rd Supp.), c. 33, s. 16; 1993, c. 15, s. 43), 78.2(2) (as enacted idem, s. 55; 2001, c. 10, s. 3).