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Newsflash | January 27, 2010
Form Triumphs Over Substance
Strict
compliance with the formal requirements specified under
Canadian Patent legislation has been confirmed.
In Unicrop Ltd. v. Canada
(Attorney General) 2010 FC 61, a decision of the Federal
Court released
January 20, 2010,
the Court once again emphasized the importance of having only
the authorized correspondent (usually the Canadian patent
agent) pay maintenance fees for a patent application.
The Courts have confirmed
that there is no discretion to vary or grant equitable relief
for failure to meet the formal requirements specified under
the Patent Act. Any failure to comply with these mandatory
requirements will lead to deemed abandonment of the patent
application.
This follows on an earlier decision by the Federal Court
in Rendina v. Canada
(Attorney General), 2007 FC 914, [2008] 3 F.C.R. 3. In
Redina, the Canadian Intellectual Property Office refused
to accept a fee payment by the patentee/owner as a patent
agent had been appointed.
In Unicrop the application was initially prosecuted by
one law firm, but the file was subsequently transferred to a
second without notice to the Canadian Intellectual Property
Office. The second firm submitted the maintenance payments
but did not file their appointment as agent and revocation of
the previous agent until after the payments had been made.
The Commissioner of Patents initially accepted the payment,
but ultimately, after the time limit to make the payment had
lapsed, advised the patentee that the fees were rejected. The
Commissioner held that the fees were not made by an authorized
correspondent as defined by the Patent Act. The Patent
was subsequently declared irrevocably abandoned for failing to
pay the maintenance fee within the time required.
On appeal to the Federal Court Justice Boivin upheld the
Commissioner’s decision, and also rejected the patentee’s
appeal for equitable relief:
[27] Since subsection 6(1) of the Rules requires that all
communication with the Commissioner be conducted by the
authorized correspondent, the Commissioner did not err in
refusing payment of the fees by Furman & Kallio, as they were
not the authorized correspondent for the Application at the
time the payments were made. The Applicant does not contest
that the Notice of Appointment of Agent was not received by
CIPO by
July 5, 2008 [after the fees had been paid] and, as such, it
was reasonable for the Commissioner to refuse the payment of
the fees and the reinstatement of the Application.
[38] In the case at bar, although the required fees were paid,
they were not paid by the authorized correspondent as required
by the legislation and thus, Furman & Kallio was not
recognized as the appropriate agent by CIPO. The Court cannot
find that the decision by the Commissioner not to reinstate
the Application is contrary to equity (…)
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