2011 FCA 303, 2011 FCA 303

[2013] 1 F.C.R. 81 A-175-11 2011 FCA 303 Excelsior Medical Corporation ( Appellant ) v . Attorney General of Canada ( Respondent ) Indexed as: Excelsior Medical Corporation v. Canada (Attorney General) Federal Court of Appeal, Noël, Pelletier and Layden-Stevenson JJ.A.—Toronto, November 3, 2011.

Patents — Practice — “Maintenance fees” — Appeal from Federal Court decision dismissing judicial review of Canadian Patent Office determination that patent application dead by reason of failure of appellant’s authorized correspondent to pay maintenance fees before end of grace period — Although maintenance fees paid within grace period, paid by non-authorized patent agent — Patent application reinstated by Patent Office but later considered dead after fees refunded to non-authorized patent agent — Federal Court finding that patent application reinstated after fees accepted by Office but that subsequent refund thereof nullifying reinstatement — Federal Court correctly dismissing judicial review but for wrong reasons — Acceptance of maintenance fees, whether within or outside reinstatement period, from someone other than applicant’s authorized correspondent not reinstating patent application — Patent Office’s acceptance or refund of maintenance fees not creating or extinguishing rights — Appeal dismissed.

This was an appeal from a Federal Court decision dismissing an application for judicial review of a Canadian Patent Office determination that Patent Application No. 2414481 is dead by reason of the failure of the appellant’s authorized correspondent to pay the maintenance fees before the end of the grace period. The maintenance fees were in fact paid within the grace period but were paid by a patent agent which was not the authorized correspondent of record in the Patent Office.

While the maintenance fees were accepted and the reinstatement of the patent application was communicated to the authorized correspondent of record, the Patent Office notified the non- authorized agent outside the reinstatement period that the patent had not been reinstated and was considered dead. The non-authorized agent requested and received a refund of the fees as was offered by the Patent Office. The non-authorized agent’s belated request to be placed on the record as agents of the applicant was refused.

On judicial review, the Federal Court found that the acceptance of the maintenance fees by the Patent Office within the reinstatement period reinstated the application but that the subsequent refund to the non-authorized agent nullified the reinstatement, thereby rendering the patent application dead. The issue was whether the Federal Court erred in dismissing the application for judicial review for the reasons that it did. Held , the appeal should be dismissed. While the Federal Court correctly dismissed the application for judicial review, it did not do so for the right reasons.

The acceptance of maintenance fees, whether within or outside the reinstatement period, from someone other than the applicant’s authorized correspondent does not reinstate a patent application. Contrary to the Federal Court’s view, the Patent Office’s acceptance of the maintenance fees did not create rights and the refund thereof did not extinguish rights. STATUTES AND REGULATIONS CITED Patent Act , R.S.C., 1985, c. P-4. Patent Rules , SOR/96-423, ss. 2 “authorized correspondent”, 6(1), 20. CASES CITED applied: Unicrop Ltd. v.

Canada (Attorney General) , 2011 FCA 55 , 91 C.P.R. (4th) 289, 414 N.R. 381. considered: Sarnoff Corp. v. Canada (Attorney General) , 2008 FC 712 , [2009] 2 F.C.R. 3, 294 D.L.R. (4th) 119, 329 F.T.R. 231, affd 2009 FCA 142 , 315 D.L.R. (4th) 575, 81 C.R.P. (4th) 117, 393 N.R. 325. referred to: F. Hoffmann-La Roche AG v. Canada (Commissioner of Patents) , 2005 FCA 399 , 44 Admin. L.R. (4th) 1, 45 C.P.R. (4th) 1, 344 N.R. 202.

APPEAL from a Federal Court decision ( 2011 FC 407 , [2013] 1 F.C.R. 52, 92 C.P.R. (4th) 220, 388 F.T.R. 1) dismissing an application for judicial review of a Canadian Patent Office determination that the appellant’s patent application is dead by reason of the failure of the appellant’s authorized correspondent to pay the maintenance fees before the end of the grace period. Appeal dismissed. APPEARANCES Kevin Sartorio and James Blonde for appellant.

Jacqueline Dais-Visca and Abigail Browne for respondent. SOLICITORS OF RECORD Gowling Lafleur Henderson LLP , Toronto, for appellant. Deputy Attorney General of Canada for respondent.

The following are the reasons for judgment rendered in English by [ 1 ] Pelletier J.A.: This is an appeal by Excelsior Medical Corporation (Excelsior or the applicant) from a decision of the Federal Court [2011 FC 407 , [2013] 1 F.C.R. 52] in which Hughes J. (the applications judge) dismissed its application for judicial review of a determination made by the Canadian Patent Office (the Patent Office) that Patent Application No. 2414481 (the application) is dead by reason of the failure by Excelsior’s authorized correspondent to pay the maintenance fees before the end of the grace period. [ 2 ] The difficulty in this case is that the maintenance fees were, in fact, paid within the grace period, but they were paid by Oyen Wiggs, who were not, at the time, the authorized correspondent of record in the Patent Office.

A further complication arises from the fact that, having accepted the maintenance fees and communicated the reinstatement of the patent application to the authorized correspondent of record, Fetherstonhaugh & Co., the Patent Office wrote Oyen Wiggs, outside the reinstatement period, to advise that the patent had not been reinstated and was considered dead. In the same letter, the Patent Office offered to refund, upon request, the maintenance fees which it had previously accepted. The request was made and the fees were reimbursed.

One year after requesting the refund of the fees, Oyen Wiggs belatedly took steps to be placed on the record as agents of the applicant as of the date of payment of the fees, an application which was refused. [ 3 ] An application for judicial review followed. The applications Judge found that the acceptance of the maintenance fees by the Patent Office within the reinstatement period reinstated the application but that the refund of the fees to Oyen Wiggs nullified the reinstatement, leaving only a patent application which was considered to be dead.

The application for judicial review was dismissed. [ 4 ] An appeal is now taken to this Court, largely on the basis of the decision of the Federal Court in Sarnoff Corp. v. Canada (Attorney General) , 2008 FC 712 , [2009] 2 F.C.R. 3, affirmed by this Court at 2009 FCA 142 , 315 D.L.R. (4th) 575. We are of the view that the appeal should be dismissed, though not for the reasons given by the applications Judge. [ 5 ] This case falls to be decided by the decision of this Court in Unicrop Ltd. v.

Canada (Attorney General) , 2011 FCA 55 , 91 C.P.R. (4th) 289 ( Unicrop ) in which it was held that the Patent Office can only deal with the applicant’s authorized correspondent, and that an authorized correspondent only becomes so when the required documents are filed in the Patent Office. The acceptance of maintenance fees, whether within or outside the reinstatement period, from someone other than the applicant’s authorized correspondent does not reinstate a patent application.

Contrary to the applications Judge’s view, the Patent Office’s acceptance of those fees did not create rights and its return of those fees did not extinguish rights. To hold otherwise would be to create a situation in which the Patent Office’s administrative errors created or extinguished rights independently of the statutory scheme. [ 6 ] Excelsior’s reliance upon the Federal Court’s decision in Sarnoff is misplaced.

In dismissing the appeal from the Federal Court’s decision in that case, this Court said [at paragraph 1]: “we have not been persuaded that the applications judge’s findings of fact that the Patent Office ‘had to have had an appointment of associate agent’ was manifestly or palpably wrong”. The basis of the Federal Court’s decision in that case was that the Patent Office had in its possession an appointment of an associate agent when it accepted maintenance fees from the associate agent.

The balance of the Court’s comments were obiter dicta , and while no doubt reflective of an experienced judge’s informed views, they are not a statement of the law. [ 7 ] Excelsior also argues that the prosecution of a patent application is distinct from its maintenance and that they are treated as such in the Patent Act , R.S.C., 1985, c. P-4 and the Patent Rules , SOR/96-423. However, when the definition of “authorized correspondent” in

section 2 [of the Rules] is read in conjunction with

section 20 and subsection 6(1) [of the Rules], it is clear that the appointment of an authorized correspondent for prosecution purposes extends to both prosecution and maintenance matters. [ 8 ] Finally, there is no basis for invoking the Federal Court’s equitable jurisdiction on the facts of this case. This is simply another in a line of cases where the most elemental precautions were not taken when accepting a patent prosecution mandate. The results, while unfortunate, do not call for the application of the doctrine of relief from forfeiture which, in any event, does not apply to statutory time limits: see F.

Hoffmann-La Roche AG v. Canada (Commissioner of Patents) , 2005 FCA 399 , 44 Admin. L.R. (4th) 1. [ 9 ] The appeal will be dismissed with costs.