Wednesday, May 24, 2017

Dead Application is Dead

University of Alberta v. Canada (Attorney General) 2017 FC 402 Russell J
            Application 2,804,560

S 37 of the Patent Rules provides that a patent application “must contain. . . a declaration that the applicant is the legal representative of the inventor,” if the applicant is not the inventor. The ‘560 application, filed in Feb 2013 by an agent on behalf of TEC Edmonton, had no such declaration. Two weeks after the 560 Application was filed, CIPO issued a requisition to TEC’s agent requiring compliance with s 37 within 12 months [3]. TEC’s agent did not respond. A year later, CIPO issued a Notice of Abandonment, which stated that the application could be reinstated within a further 12 months pursuant to s 73(3) [4]. TEC’s agent did not respond. Two months later, TEC Edmonton assigned its right in the 560 application to the University of Alberta. A new agent was appointed. The new agent did not respond to the original requisition or to the Notice of Abandonment. (You can see where this is going.) In Feb 2015, two years after the requisition was issued, the 560 application was marked as dead, meaning that the time for reinstatement had passed. A year after that, in Feb 2016, the University of Alberta filed a petition for a correction of the patent records to show the ‘560 Application was in good standing [8]. CIPO replied that the 560 application was beyond the period of reinstatement.

On this application for judicial review, the University of Alberta in effect sought to have the 560 application reinstated. Russell J refused. To get around the clear legislative scheme the University advanced “esoteric” arguments [58], [80], more or less to the effect that there was no obligation to respond to the requisition because there was really nothing wrong with the application in the first place. The statutory interpretation argument, which I won’t go into in detail, turned on a distinction between substantive and formal compliance with the requirements of the Act. Russell J pointed out that, whatever the merits of such a distinction in theory, it had no basis in the Act [86]. He also noted that the notion that there was nothing substantively wrong with the application in the first place was a purely after-the-fact rationale, which wasn’t really the reason TEC’s agent had not responded [61], [80]. More importantly, even if the applicant had been of the view that the requisition was improper, the proper recourse would have been an application for judicial review of the decision to send the requisition, in a timely manner [54]. Allowing this collateral attack on that original decision would circumvent those procedures and limitations. Moreover, there was no unfairness in this result in principle, as the statutory scheme provided ample opportunity for the applicants to correct the record by simply replying to the requisition, or rectifying within the generous legislative time-limits [89]. Nor was there any unfairness on the facts, as the record was clear that the requisition was sent and noted on the prosecution register and there was no evidence it was not received or understood by the then patent applicants and/or their then agents [54].

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