Thursday, April 13, 2017

Late Request to Amend Priority Date

Bayer Cropscience LP v. Canada (Attorney General) 2017 FC 178 O'Reilly J

In this case O'Reilly J affirmed the Commissioner’s decision to refuse Bayer’s request to amend the priority date, on the basis that the request was outside the sixteen month window for such a request under Rule 88(1)(b). This case turned on a straightforward reading of the Rules in the context of unusual facts.

Bayer filed a US patent application on 3 April 2012. The USPTO refused to assign a filing date on the basis that Bayer had failed to file accompanying drawings. Bayer filed the drawings on 19 April 2012, and the USPTO assigned that as the filing date. The following year, on 15 March 2013, Bayer filed a PCT application claiming priority from the US application. Bayer asked for a filing date of 3 April 2012, but WIPO pointed out that the US application had a filing date of 19 April. Therefore Bayer requested, and was given, a filing date of 19 April 2012. Two years later (April 2015), on Bayer’s request, the USPTO conceded that the drawings were not required after all, and it amended the filing date for the US application to 3 April 2012. However, the USPTO, which acted as the international receiving office for the PCT application, refused to amend the PCT filing date. On 7 August 2015, the PCT application entered the national phase in Canada as Canadian Patent Application No 2,907,271. Bayer requested that the ‘271 application be given a filing date of 3 April 2012 on the basis that it was claiming priority from the ‘691 US application, which had an amended filing date of 3 April 2012 [4].

The problem was that under Rule 88(1)(b), a request for priority must be made with sixteen months of the filing from which priority is claimed [15]. Bayer had made a request within that period, namely on 15 March 2013, but there was no basis for it at that time, as the US application was still dated 19 April 2012 [14]. The US application had been amended by the time of Bayer’s August 2015 request to CIPO, but that second request was well out of time [15].

Bayer also argued that the priority date should be amended pursuant to the Commissioner’s duty to ensure the Register is correct. O’Reilly J dismissed this argument, noting that the failure to request an amendment in a timely manner does not create an inaccuracy in the Register [16]. That conclusion must be right, or the time limits would be nugatory.

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