Jurisprudence récente brevets: on ne peut pas utiliser l’art. 8 pour corriger des dessins de brevets

Scannex Technologies, LLC v. Canada (Attorney General), 2009 FC 1068, (October 21, 2009)



Voici les extraits importants:



[1] This is an application pursuant Section 18 of the Federal Courts Act and Rule 300(a) of the Federal Courts Rules, for judicial review of a decision dated January 5, by the Commissioner of Patents refusing to substitute incorrect figures submitted by Scannex Technologies LLC (the “Applicant”) in support of its Canadian Patent application Serial No. 2,373,253 (the “Patent Application”) pursuant to s.8 of the Patent Act, R.S.C. 1985, c. P-4.


[4] The Applicant filed a U.S. patent application, serial number 09/311,442, entitled “Non-Destructive Testing of Hidden Flaws” (the “US Application”) on May 14, 1999. The Applicant filed a set of figures with the US Application. The US Application was successful and a patent was issued.

[5] The Applicant filed a corresponding international patent application (“PCT Application”), PCT/US00/12780 on May 10, 2000. A set of figures was also filed with this application, but the figures were not the same as those filed with the US Application and were thus incorrect.

[6] That PCT Application then entered national phase in Canada, becoming the Patent Application. The figures filed with the Patent Application were thus also incorrect.

[7] On November 28, 2006, a Canadian Examiner’s Report advised the Applicant that figures filed with the Patent Application were incorrect.

[8] In response, the Applicant requested the Commissioner to replace the incorrect figures filed with the Patent Application with correct figures, pursuant to s. 8 of the Patent Act, which provides that:


Clerical errors in any instrument of record in the Patent Office do not invalidate the instrument, but they may be corrected under the authority of the Commissioner.


Un document en dépôt au Bureau des brevets n’est pas invalide en raison d’erreurs d’écriture; elles peuvent être corrigées sous l’autorité du commissaire.

[9] The Applicant submitted an affidavit stating that incorrect figures were filed with the PCT Application and thus the Patent Application due to an unintentional error of a clerk of the Applicant’s agent in the United States. The Applicant also filed a certified copy of the US Application, which contained the correct figures.


[10] In a letter dated January 5, 2009, the Commissioner refused to make the substitution requested by the Applicant. The Commissioner took the position that “the type of error envisaged by section 8 [of the Patent Act] clearly imparts a mistake by a clerk or subordinate in the mechanical process of typewriting or transcribing a document but does not extend to the inherent duties and responsibilities of an agent involved in the prosecution of patent applications.”

[11] According to the Commissioner, the submission of correct figures is one of the “inherent duties and responsibilities” of an applicant, and the Commissioner has no power to rectify a submission of incorrect figures.


[12] This application raises the following issues:1) What is or are the appropriate standard(s) of review?

2) Does the Commissioners’ decision contain a reviewable error?


30] Thus, it is clear that the error that led to the filing of incorrect figures with the Applicant’s Patent Application was not a “clerical error” within the admittedly narrow meaning of the Patent Act. The Commissioner’s determination was not unreasonable.

[31] For these reasons, the application for judicial review of the decision is dismissed. Considering the time and effort put by the Respondent on this judicial review and the fact that the Applicant chose at the last minute not to appear at the oral hearing, the Court exercising its discretion, grants costs to the Respondent payable forthwith, in the amount of $2,159.01, as set out in the Bill of Costs filed by the Respondent.



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