Actelion Pharmaceuticals Ltd. v. Canada (Attorney General) et al., (2007) 312 F.T.R. 63 (FC)

• Judge: Lagacé, D.J.
• Court: Federal Court (Canada)
• Case Date: Thursday April 12, 2007
• Jurisdiction: Canada (Federal)
• Citations: (2007), 312 F.T.R. 63 (FC);2007 FC 425

Actelion Pharmaceuticals v. Can. (A.G.) (2007), 312 F.T.R. 63 (FC)

MLB headnote and full text

Temp. Cite: [2007] F.T.R. TBEd. MY.002

Actelion Pharmaceuticals Ltd. (applicant) v. Her Majesty in the Right of Canada as represented by The Attorney General and The Commissioner of Patents (respondents)

(T-1561-06; 2007 FC 425)

Indexed As: Actelion Pharmaceuticals Ltd. v. Canada (Attorney General) et al.

Federal Court

Lagacé, D.J.

April 23, 2007.

Summary:

Actelion Pharmaceuticals Ltd. filed an international patent application on July 31, 2002. Actelion's agent erroneously entered the application date as July 31, 2003, shifting the due date for the second anniversary maintenance fee from 2004 to 2005 in the agent's records. After the fee was not received, the application was deemed abandoned on August 2, 2004. The deadline for a request for reinstatement of the application was August 2, 2005. On July 15, 2005, Actelion submitted the maintenance fee. By a letter dated September 7, 2005, the Commissioner refused to accept the fee and informed Actelion that the application was dead as a request for reinstatement had not been received before the deadline. Actelion sought judicial review.

The Federal Court dismissed the application.

Patents of Invention - Topic 442

Registration - Statutory duties of commissioner - Discretion - [See Patents of Invention - Topic 706].

Patents of Invention - Topic 706

Application for grant - General - Reinstatement of application - Actelion Pharmaceuticals Ltd. filed an international patent application on July 31, 2002 - Actelion's agent erroneously entered the application date as July 31, 2003, shifting the due date for the second anniversary maintenance fee from 2004 to 2005 in the agent's records - After the fee was not received, the application was deemed abandoned on August 2, 2004 - The deadline for a request for reinstatement of the application was August 2, 2005 - On July 15, 2005, Actelion submitted the maintenance fee - On September 7, 2005, the Commissioner refused to accept the fee and informed Actelion that the application was dead as a request for reinstatement had not been received before the deadline - Actelion sought judicial review, maintaining that its July 15, 2005, letter was a general authorization which inherently contained a request for reinstatement - The Federal Court dismissed the application - Nothing allowed the Commissioner to accept a general authorization statement in place of a specific request - The Commissioner had not exercised any discretion nor made a decision regarding Actelion's rights but had simply informed Actelion that the conditions for reinstatement had not been met - The refusal to reinstate the application was correct - There were no grounds for intervention.

Cases Noticed:

Dutch Industries Ltd. v. Commissioner of Patents et al., [2003] 4 F.C. 67; 301 N.R. 152; 2003 FCA 121, refd to. [para. 29].

Pfizer Inc. v. Commissioner of Patents (2000), 269 N.R. 373 (F.C.A.), refd to. [para. 30].

Authors and Works Noticed:

Driedger, Elmer A., Construction of Statutes (2nd Ed. 1983), p. 87 [para. 29].

Counsel:

Bruce E. Morgan, for the applicant;

Sharon Johnston, for the respondents.

Solicitors of Record:

Gowling Lafleur Henderson, Ottawa, Ontario, for the applicant;

John H. Sims, Q.C., Deputy Attorney General of Canada, Ottawa, Ontario, for the respondents.

This application was heard at Ottawa, Ontario, on April 12, 2007, by Lagacé, D.J., of the Federal Court, who delivered the following reasons for judgment on April 23, 2007.