A Cautionary Tale – University of Alberta v. Canada (Attorney General), 2018 FCA 36

June 5, 2018
By Robert Storey and Alain Alphonse

At one time a non-inventor applicant for a Canadian patent needed to record an assignment or other evidence to show how it derived its rights in the invention from the inventor. Now, it need only submit an unsigned declaration stating that it is the legal representative of the inventor. The procedure has been made so simple one might expect that nothing could go wrong. Earlier this year the Federal Court of Appeal released a decision showing that, unfortunately, it can.

The present case came before the Federal Court when the University of Alberta sought judicial review in respect of certain actions taken by the Canadian Intellectual Property Office (CIPO) relating to a patent application in which the University had acquired an interest. The original applicants derived their rights in the invention from the named inventors. However, the applicants did not submit a declaration that they were the legal representatives of the inventors, as required by paragraph 37(2)(a) of the Patent Rules.

In accordance with Rule 37(4), the Commissioner of Patents sent a requisition to the applicants requiring compliance with Rule 37(2)(a) within 12 months of the filing date. The letter noted that failure to comply would result in abandonment of the application under section 73 of the Patent Act. (Rule 97 provides that if an applicant does not reply in good faith to a requisition under any one of Rules 23, 25, 37, or 94, the application is deemed abandoned.)

When the applicants did not respond to the requisition under Rule 37(4), the Commissioner sent them a Notice of Abandonment. The notice explained that the application could be reinstated under subsection 73(3) of the Act if the applicants paid the reinstatement fee and corrected the error within 12 months of the abandonment.

During the 12-month reinstatement period, one of the original applicants assigned its rights in the application to the University of Alberta.

The reinstatement period expired with no steps having been taken for reinstatement, so CIPO listed the application in its records as being “dead”. It was not until almost a year later that the University finally realized the status of the application. The University and its co-applicant promptly asked CIPO for rectification, but CIPO replied that it could not revive the patent application because the reinstatement period had expired.

The applicants then applied to the Federal Court for judicial review. The Federal Court dismissed the application, finding that the 30-day time limit under the Federal Courts Act for seeking judicial review of the Commissioner's requisition had expired long before, and further upholding CIPO’s position that the Patent Act does not allow for reinstatement once a patent application is dead.

On appeal to the Federal Court of Appeal two issues were presented:

  1. Did the Federal Court err in calculating the 30-day time limit for judicial review from the Commissioner’s requisition (as opposed to the Commissioner’s most recent refusal to revive the dead application)?
  2. Did the Commissioner err in refusing to reinstate the patent application?

Regarding the first issue, the Court of Appeal disagreed with the lower court that the 30-day period for judicial review was triggered by the Rule 37(4) requisition. However, this finding of error did not help the appellants. The Court of Appeal concluded that the issuance of the requisition was a requirement of the Rules, not resulting from a discretionary decision of the Commissioner; therefore, it was not subject to judicial review. The Court of Appeal also rejected the notion that either the issuance of the Notice of Abandonment or the abandonment itself could be the subject of judicial review.

Regarding the second issue, the Court of Appeal agreed with the lower court that the Commissioner did not err in refusing to reinstate the dead application because there is no mechanism under the Patent Act or the Patent Rules by which the Commissioner can revive an application after it has become abandoned and the period for reinstatement has expired.

In 2019, significant amendments to the Canadian Patent Act and Patent Rules are expected to come into effect, including changes to the provisions relating to abandonment and reinstatement. Click here to see our report.

It is unlikely that the proposed changes would have assisted the appellants in the present case.

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