February 3, 2016
By Ken Bousfield
Patent Act, s. 8 reads:
“8. – Clerical Errors – 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.”
A long time ago, in a galaxy far, far away, the cheery and helpful Canadian Patent Office used to make clerical corrections as a matter of course and reasonableness.
In more recent times the Office has taken the position that it is not obliged to exercise discretion under s. 8 to aid applicants. The high water mark of arbitrary refusal to exercise discretion is perhaps found in Repligen I1 and Repligen II2, in which the Commissioner twice refused to exercise discretion to correct a clerical error in which two digits of a number had been transposed. Under judicial review, the Commissioner was ultimately instructed by the Federal Court to have the refusal reconsidered by “a different decision-maker”. Costs were awarded against the Commissioner, a rare event.
Despite Repligen I and II, requests under s. 8 for correction of clerical errors have continued to moulder, or have been refused on highly mechanistic grounds that the clerical error did not arise purely in the process of typewriting or transcribing3. This approach is seen in the recent revisions of Ch. 6 of the Manual of Patent Office Practice (MOPOP), particularly in respect of the correction of errors in the names of assignees under sections 6.09.02 and 6.13. Symptomatic of this phenomenon, a recent application under s. 8 received the response:
“The applicant’s attention is drawn to the provisions of section 52 of the Patent Act which states that the Federal Court does have the jurisdiction to order that any entry in the records of the Patent Office relating to the title to a patent be varied or expunged.”
It may be noted that, quite independently of s. 8, the Commissioner is already under a duty to maintain correct records under s. 4 of the Patent Act. Failure to fulfil these obligations renders the Commissioner subject to an order of mandamus.4
The purpose of s. 52 of the Patent Act is to permit correction of records pertaining to title where there is either a bona fide issue of contention as to ownership, or where there has been either a fraudulent conveyance or the recording of a false document of title. These are issues of substantive law far beyond the authority and competence of the administrative recording staff of a specialist government agency, such as the Patent Office.
However, the implication of the policy of MOPOP Ch. 6 is that correction of clerical errors is being abdicated to the Federal Court by the administrative body charged with the duty of maintaining correct records. This clearly cannot have been the intent of s. 8, and it is inconsistent with the Office's duty to correct its records under s. 4. The current CIPO policy is a de facto refusal to follow Federal Court precedent, i.e., a refusal to acknowledge that the rule of law applies to the Patent Office.
Thus the spectacle of Gray Manufacturing Company Inc., v. Canada (A.G.)5.
In 2002 the inventor intended to assign his rights to his employer. However the assignment agreement inadvertently identified “Gray Automotive Products, Inc.”, rather than “Gray Automotive Products, Co.” There is no suggestion that anyone was deceived as to the actual owner, or of the intent of the parties, or that there was any genuine issue of contention as to the true property owner. It was a clerical mistake of the kind eminently suited to correction under s. 8. Yet, in accordance with the CIPO policy of MOPOP Ch. 6, patentees are now obliged to apply to Federal Court to make a correction that ought to have been made at minimal expense by the administrative agency acting reasonably in the normal course of its duties.
This is a squandering of both public and private resources. It was a clerical correction. It was not a matter meriting the engagement of the time, attention, scarce resources and enormously expensive machinery of the Federal Court. The origin of this waste lies in the arbitrary and unreasonable change of policy at CIPO a decade ago.
The Court noted, rather dryly, “The Applicant did not seek costs”.
Perhaps it is time for a return to sunny days and sunny ways in the Patent Office.
1 Repligen Corporation v. Canada (A.G.) 2010 FC 1288
2 Repligen Corporation v. Canada (A.G.) 2012 FC 931
3 Based on narrowly read obiter in Bayer A.G., v. Commr. of Patents (1980) 53 CPR (2d) 70 (FCTD).
4 Procter & Gamble Company et al., v Commr. of Patents 2006 FC 976, at para. . P&G rejects the Commissioner’s reading of Bayer at paras.  and . The reasons conclude “Having regard to s. 25 of the Patent Act, no award of costs will be made.”, an implicit chastisement of the unreasonable conduct of the Office. The Court may not have anticipated that the Office would, notwithstanding, adopt a policy of refusing clerical corrections except when subject to mandamus.
5 2016 FC 55, issued January 18, 2016.
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