CA: jurisprudence récente: la Cour fédérale accepte un argument pour rétablir une demande abandonnée pour faute de paiement de taxe de maintien

Repligen Corporation v. Canada (Attorney General), 2010 FC 1288, (December 15, 2010)


-Taxe de maintien payée pour la demande 1, 314, 486 au lieu de 1, 341, 486;

-Demande 1, 341, 486 abandonnée pour faute de paiement de taxe de maintien

-Après la date limite pour rétablir la demande, les nouveaux agents tentent de rétablir la demande en invoquant l’article 8 de la Loi sur les brevets pour les erreurs d’écriture.

-Le Bureau des brevets refuse, ainsi que la Commission d’appel, mais la Cour fédérale renverse la décision

-Raisonnement de la Cour fédérale (intéressant potentiellement pour d’autres dossiers car on tente de se distinguer de Dutch Industries)

[57]           The purpose of section 8 of the Act is clear. It is a remedial section which enables the Commissioner in limited cases of clerical errors in any instrument of record to be corrected under the authority of the Commissioner taking into account all relevant considerations which, as the jurisprudence established, includes delay in seeking correction and the impact on third parties.


[58]           Based on the record before me, I find that the Commissioner failed to properly exercise her discretion in this particular case.


[59]           As I see it, the Commissioner took into account only two relevant factors: delay in seeking correction and possible third party prejudice. These two factors were in the Commissioner’s view determinative in refusing to correct what she found to be a clerical error. Her refusal to correct a clerical error had a catastrophic impact on Repligen – it lost its patent rights to its invention.


[60]           In my view, the Commissioner failed to take into account the following relevant factors before deciding in her discretion whether to correct the clerical error:

a)      The impact on Repligen – the loss of its patent;

b)      The fact Repligen’s payment was received by the Commissioner and appropriated to another patent in circumstances which are unknown to Repligen and which were not considered by the Commissioner and, in that context, whether there was a slip at CIPO;

c)      The fact that Repligen’s payments were made on the due date;

d)      Her failure to appreciate, that if she properly exercised her discretion to correct the error, the remedial scope of section 8 would have the effect that the ‘486 patent never lapsed for non-payment under paragraph 46(2) of the Act because those fees were paid in the appropriate amount and on time, a result which was achieved in Dutch Industries, above, without the recourse to section 8. In other words, she erred in her appreciation of the remedial powers available to her under section 8 of the Act;

e)      The Commissioner did not take into account the purpose and object of the maintenance fee provision in the Act. Repligen paid on time and CIPO accepted those payment; Repligen contributed to defraying the costs of the Patent office. The fact that Repligen made those payments and the Commissioner recognized that paying it to the wrong account was an indicator Repligen did not consider its ‘486 issued patent as deadwood;

f)        Simply invoking possible third party rights without more would, in my view, fundamentally impair the remedial power Parliament conferred upon the Commissioner to remedy clerical errors. The reason is obvious: in the case of every issued patent the disclosure will have been made; in the case of a patent application, it is open to the public inspection after a certain date. Justice Desjardins in Bristol-Myers did not endorse a speculative determination of third party rights. She had hard facts before her which pointed to the likehood third parties would be affected – the nature of the remedy sought which was the addition of a new priority date had the effect in a document, that had been opened in 1994, of permitting the entry in 1997 of a priority date of July 1992. Justice Desjardins said that “the retroactive effect of the correction if admitted, clearly preoccupied the Commissioner. She also had evidence that, before the correction was sought, two other companies filed priority claims for similar drugs under foreign patents predating the U.S. patents relied on by Bristol-Myers. Here, as I see it the Commissioner’s assessment of third parties rights being affected was based on pure speculation, without more, such as determination whether patent applications had been filed in Canada by third parties for patents similar to Repligen’s Modified Protein A. The view I take is consistent with what is written in CIPO’s Manual of Patent Office Practice at item 23.04.02 when giving examples of cases where third parties are likely to be affected. See also section 23.04 of that same Manual where the Commissioner indicates she will decide whether or not to correct based on the nature of the error made; and

g)      Finally, the Commissioner failed to weight and balance all relevant factors before exercising her discretion.


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