In the Summer 2011 issue of IP Perspectives, the Federal Court decision in Excelsior Medical Corporation v. Attorney General of Canada, 2011 FC 407, was reviewed in detail. Briefly, a Patent Cooperation Treaty application entered the national phase in Canada on December 2, 2002, naming Vasca Inc. ("Vasca") as the applicant. The national phase application was filed by a first Canadian firm, which was appointed as Vasca's patent agent of record in Canada. In September 2006, Vasca assigned the patent application to Excelsior Medical Corporation ("Excelsior"). At the time of the assignment, the patent application was provisionally abandoned for failure to pay an annual maintenance fee, and the deadline for reinstating the provisionally abandoned application was July 10, 2007.
Subsequent to the assignment, in March 2007, Excelsior selected a second law firm ("second firm"), to prosecute its patent application and the file was transferred from the first firm to the second firm. Several months later, on July 9, 2007, the day before the reinstatement deadline, the second firm requested reinstatement of the application and paid the required maintenance fees and reinstatement fee. However, at that time, the second firm had not appointed itself as the patent agent of record despite the fact that the Canadian Patent Rules stipulate that only the patent agent of record can pay a maintenance fee. Initially, the Canadian Intellectual Property Office ("CIPO") took the position that the application had been reinstated. However, CIPO shortly reversed itself and indicated that reinstatement was refused because the reinstatement request and fees had not been paid by the patent agent of record, and that the application was therefore irrevocably abandoned. Subsequently, at the second firm's request, the reinstatement fees were refunded to the second firm.
In considering this scenario, the Federal Court held that the initial acceptance of the reinstatement request by CIPO reinstated the application but that the subsequent refund of the fees nullified the reinstatement, leaving a patent application that was irrevocably abandoned.
On appeal, the Federal Court of Appeal affirmed the conclusion of irrevocable abandonment, albeit for different reasons. The Court followed its own decision in Unicrop Ltd. v. Canada (Attorney General), 2011 FCA 55, which held that CIPO can only deal with the applicant's authorized correspondent, namely the patent agent of record. Contrary to the decision from the Federal Court, the Court of Appeal held that CIPO's initial acceptance of the reinstatement request did not create rights and its subsequent refund of the fees did not extinguish these rights. Rather, the reinstatement request was ineffective from the outset, regardless of CIPO's erroneous initial acceptance of the request. In summary, the Federal Court of Appeal held that this fact scenario was simply another in a line of cases "where the most elemental precautions were not taken when accepting a patent prosecution mandate."
This case highlights the importance of ensuring that transfers of patent files between patent firms includes the filing of the requisite revocation and appointment documentation at the Patent Office.
Jeffrey D. Morton, Vancouver
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.