Actelion Pharmaceuticals Ltd. v. Canada (Attorney General) et al., 2008 FCA 90

• Judge: Nadon, Sexton and Ryer, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: February 14, 2008
• Jurisdiction: Canada (Federal)
• Citations: 2008 FCA 90;(2008), 374 N.R. 192 (FCA)

Actelion Pharmaceuticals v. Can. (A.G.) (2008), 374 N.R. 192 (FCA)

MLB headnote and full text

Temp. Cite: [2008] N.R. TBEd. AP.062

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

(A-249-07; 2008 FCA 90)

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

Federal Court of Appeal

Nadon, Sexton and Ryer, JJ.A.

March 7, 2008.

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 (Patent Act, s. 73). Actelion sought judicial review.

The Federal Court, in a decision reported 312 F.T.R. 63, dismissed the application. Actelion appealed.

The Federal Court of Appeal dismissed the appeal.

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 (Patent Act, s. 73) - 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 - Actelion appealed - The Federal Court of Appeal, reviewing the matter on the standard of correctness, dismissed the appeal.

Patents of Invention - Topic 8163

Practice - Appeals - Questions of law, fact or mixed fact and law (incl. applicable standard of review) - The Commissioner of Patents refused to accept a late filed maintenance fee and informed Actelion Pharmaceuticals that its patent application was dead as a request for reinstatement had not been received before the deadline (Patent Act, s. 73) - Actelion sought judicial review - An applications judge dismissed the application - Actelion appealed - The Federal Court of Appeal held that this case turned exclusively on the proper interpretation of s. 73 and as a result the standard of review was correctness - In the result the court dismissed the appeal where the Commissioner had correctly applied the provision - See paragraph 6.

Cases Noticed:

Eiba v. Canada (Attorney General) (2004), 247 F.T.R. 260; 2004 FC 250, refd to. [para. 6].

Pfizer Inc. v. Commissioner of Patents (2000), 269 N.R. 373; 9 C.P.R.(4th) 13 (F.C.A.), refd to. [para. 8].

Fusion (P.E.), LLC v. Canada (Attorney General) et al. (2004), 254 F.T.R. 284; 2004 FC 645, refd to. [para. 8].

Wicks v. Commissioner of Patents (2007), 309 F.T.R. 135; 59 C.P.R.(4th) 67; 2007 FC 222, refd to. [para. 10].

Hoffman-La Roche (F.) AG v. Commissioner of Patents (2005), 344 N.R. 202; 2005 FCA 399, refd to. [para. 12].

Dutch Industries Ltd. v. Commissioner of Patents et al., [2003] 4 F.C. 67; 301 N.R. 152; 2003 FCA 121, leave to appeal refused (2003), 327 N.R. 392 (S.C.C.), refd to. [para. 13].

Statutes Noticed:

Patent Act, R.S.C. 1985, c. P-4, sect. 73(3) [para. 7].

Patent Act Regulations (Can.), Patent Rules, SOR/96-423, sect. 152 [para. 7].

Patent Rules - see Patent Act Regulations (Can.).

Authors and Works Noticed:

Driedger, Elmer A., Construction of Statutes (2nd Ed. 1983), p. 87 [para. 13].

Counsel:

Timothy M. Lowman, for the appellant/ applicant;

F.B. (Rick) Woyiwada, for the respondents/ respondents.

Solicitors of Record:

Sim, Lowman, Ashton & McKay LLP, Toronto, Ontario, for the appellant/applicant;

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

This appeal was heard in Toronto, Ontario, on February 14, 2008, before Nadon, Sexton and Ryer, JJ.A., of the Federal Court of Appeal. The following decision was delivered for the court, by Sexton, J.A., on March 7, 2008.