Tuesday, January 25, 2011

Clarifying the Commissioner’s Discretion under S. 8 of the Patent Act

Tuesday, January 25, 2011
Congratulations to MBM on a successful Judicial Review of the Commissioner of Patent’s refusal to grant a S. 8 Clerical Error remedy on behalf of Repligen Corporation.

The impact of the Repligen decision is such that when the Commissioner of Patents decides to exercise her discretion, the Commissioner will now have to consider the impact of the decision on the applicant and may only consider the evidence and not speculate about the impact the decision may have on others.

Repligen’s patent was issued under Patent Number 1, 341, 486 on July 19, 2005; it is titled “Modified Protein A”. The application for patent was filed on March 4, 1988 and is subject, pursuant to Section 10 of the Act, to the Patent Act as it read before October 1, 1989. It was open for public inspection as of July 19, 2005. When CPA transmitted the required maintenance fees for the second and third anniversary dates of the issued patent, it did so, as instructed by Repligen’s patent attorney in the US, who had received the wrong patent reference number from its former Canadian patent agents; these agents identified Repligen’s patent not as the 1, 341, 486 patent but the 1, 314, 486 by inverting the 314 for the 341.[1]

MBM filed a request for correction of the error and reinstatement of the patent pursuant to Section 8 of the Patent Act, which reads:

Clerical errors in any instrument of record in the Patent Office do not invalidate the instrument, but they may be corrected under the authority of the Commissioner.

The Commissioner of Patents acknowledged that “identifying the patent as the 1, 314, 486 patent rather than of the 1, 341, 486 patent in the “Payment of Maintenance Fees Form” sent by CPA to the CIPO was a clerical error according to the relevant jurisprudence.” [2]
The Commissioner concluded:

Nevertheless, the delay in addressing the errors has resulted in an extensive period of time where third parties may have relied upon publicly available documents and the information contained therein. The Office record reflected that as of July 21, 2008, the exclusive right to make, use, or sell the invention ceased in reference to Canadian patent no. 1,341,486. Therefore, effecting said correction has the potential to negatively affect the rights of others.[3]

Justice Lemieux held that it was an error to rely on speculation of third party harm when there was no evidence on the record to suggest such harm.

Simply invoking possible third party rights without more would, in my view, fundamentally impair the remedial power Parliament conferred upon the Commissioner to remedy clerical errors. The reason is obvious: in the case of every issued patent the disclosure will have been made; in the case of a patent application, it is open to the public inspection after a certain date. Justice Desjardins in Bristol-Myers did not endorse a speculative determination of third party rights. She had hard facts before her which pointed to the likehood third parties would be affected – the nature of the remedy sought which was the addition of a new priority date had the effect in a document, that had been opened in 1994, of permitting the entry in 1997 of a priority date of July 1992.[4]
Justice Lemieux held further that other factors in Repligen’s favour needed to be considered, including:

The impact on Repligen– the loss of its patent; [should the commissioner decline to exercise her S. 8 discretion]

[And that] the remedial scope of section 8 would have the effect that the ‘486 patent never lapsed for non-payment under paragraph 46(2) of the Act because those fees were paid in the appropriate amount and on time, a result which was achieved in Dutch Industries, above, without the recourse to section 8.

Consequently, the judicial review application was granted with costs, the Commissioner’s decision was set aside and the Applicant’s correction request was sent to CIPO for reconsideration pursuant to the judgment.

[1] Lemieux J. at para. 3, Repligen Corporation v. Attorney General of Canada 2010 FC 1288
[2] supra at para. 14
[3] supra at para. 16
[4] supra at para. 40


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