Friday, February 23, 2024

The Junk Folder Ate my Patent

Taillefer v Canada (Attorney General) 2024 FC 259 Furlanetto J

2,690,767 / Wide Ice Resurfacing Machine

A patentee must pay annual maintenance fees to maintain its patent in effect: s 46(1). If the annual fee is not paid in time, the patentee has a six month grace period during which it can pay the maintenance fee plus a late fee: s 46(2). If the fees are not paid during the grace period, the patent will lapse: s 46(4). However, the patent can be reinstated on request if the Commissioner determines that the failure occurred in spite of “the due care required by the circumstances having been taken”: s 46(5). This case discusses what “due care” looks like in the context of email communications.

The patentee’s arrangement with its Agent was that the Agent required instructions from the patentee before paying the annual maintenance fee [10]. For many years the fees were paid on time pursuant to those instructions [11]. In 2020 the Agent reminded the patentee that the fees would have to be paid, a full five months before the deadline [12]. The Agent heard nothing from the patentee. The Agent sent many email reminders to the patentee, but never heard anything back, and so did not pay the fee. The Agent sent more email reminders about the possibility of reinstatement, but still did not hear anything. The six month deadline expired, and on October 20, 2020, the Agent sent the patentee an email notifying him of this fact. Finally, nine days later, the patentee found this correspondence in his junk mail folder [16]. The evidence indicates that this was the problem all along – even though the Agent and the patentee had been successfully communicating by email for almost a decade, for some reason, in 2020 the Agent’s email started going to the patentee’s junk mail folder.

The patentee sought to have the patent reinstated pursuant to s 46(5). The Commissioner refused, on the basis that the “due care” standard had not been met. Furlanetto J affirmed.

The take-away is that if an Agent has been relying on email for years to communicate with their client without any problem, and the client stops responding, the Agent needs to double check that the emails are still getting through:

[41] In the circumstances applicable here, on a substantive review, it is my view that it was reasonable for the Commissioner to have looked at steps that could have avoided the communication failure and to have expected that the Agent would have additional communication mechanisms in place to make sure they could always correspond with the Applicant. It was likewise reasonable to have expected that in circumstances where numerous notices from the Agent had gone unanswered and where non-compliance could lead to expiry of patent rights that these alternative measures would have been used to ensure that the patentee was aware of the deadlines at issue. Particularly as there had been a consistent pattern of payment since 2012.

[42] Similarly, in my view it was reasonable for the Commissioner to expect that a reasonably prudent patentee would have a system in place to make sure that their email was operating effectively if they were relying on this as the primary communication means to pay their maintenance fees. This is especially so as the Applicant retained the responsibility to instruct the Agent on a yearly basis to pay the maintenance fee. Having retained this responsibility, it was reasonable for the Commissioner to find that it was incumbent on the Applicant to exercise due care to ensure that his email was properly receiving messages so that he could provide instructions to the Agent in a timely manner.

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