DBC Marine Safety Systems Ltd. v. Commissioner of Patents et al., 2007 FC 1142

• Judge: Mosley, J.
• Court: Federal Court (Canada)
• Case Date: September 24, 2007
• Jurisdiction: Canada (Federal)
• Citations: 2007 FC 1142;(2007), 319 F.T.R. 170 (FC)

DBC Marine Safety v. Commr. of Patents (2007), 319 F.T.R. 170 (FC)

MLB headnote and full text

Temp. Cite: [2007] F.T.R. TBEd. NO.014

DBC Marine Safety Systems Ltd (applicant) v. The Commissioner of Patents and The Attorney General of Canada (respondents)

(T-1667-06; 2007 FC 1142)

Indexed As: DBC Marine Safety Systems Ltd. v. Commissioner of Patents et al.

Federal Court

Mosley, J.

November 5, 2007.

Summary:

The applicant applied for judicial review of a notice issued by the Commissioner of Patents declaring the applicant's patent application abandoned for failure to respond to an examiner's requisition by the prescribed deadline.

The Federal Court dismissed the application.

Administrative Law - Topic 2267

Natural justice - The duty of fairness - Reasonable expectation or legitimate expectation - The applicant filed a patent application - A patent examiner sent the applicant requisitions for particulars - Three days before the expiry of the six month limitation period, the applicant's agent filed a response to one of the requisitions - By inadvertence, he failed to respond to the second requisition and gave no reason why the particulars required were not provided - Consequently, the patent application was deemed abandoned under s. 73(1)(a) of the Patent Act and that started the clock on the 12 month period for reinstatement prescribed in the Patent Rules - No notice was forwarded to the applicant and the Patent Office failed to follow their normal practice of providing a timely "courtesy notice" - When the applicant learned of the deemed abandonment, the reinstatement period had already expired - The applicant appealed to the Commissioner of Patents - The Commissioner dismissed the appeal - The applicant applied for judicial review - It submitted that the alteration of the long-standing custom of accepting responses as a sign of good faith even when not all of the requisitions had been answered was unfair - The applicant argued that the Patent Office's failure to follow their normal practice of providing a timely "courtesy notice" was also unfair - The Federal Court dismissed the application - The obligation to reinstate an abandoned application was clearly on the shoulders of the applicant by the legislative scheme - The Commissioner had no duty to provide notice to an applicant that an application had not been properly reinstated - There was no breach of procedural fairness - See paragraphs 37 to 44.

Courts - Topic 4021.1

Federal Court of Canada - Jurisdiction - Federal Court - Decisions of federal boards, commissions or tribunals (incl. ministers) - [See Patents of Invention - Topic 15 ].

Patents of Invention - Topic 15

General - Commissioner of patents - Discretionary powers - The applicant filed a patent application - A patent examiner sent the applicant requisitions for particulars - Three days before the expiry of the six month limitation period, the applicant's agent filed a response to one of the requisitions - By inadvertence, he failed to respond to the second requisition and gave no reason why the particulars required were not provided - Consequently, the patent application was deemed abandoned under s. 73(1)(a) of the Patent Act and that started the clock on the 12 month period for reinstatement prescribed in the Patent Rules - No notice was forwarded to the applicant and the Patent Office failed to follow their normal practice of providing a timely "courtesy notice" - When the applicant learned of the deemed abandonment, the reinstatement period had already expired - The applicant appealed to the Commissioner of Patents - The Commissioner dismissed the appeal - The Commissioner concluded that it had no discretionary power to reinstate an abandoned application after the reinstatement period specified by the Rules - The applicant applied for judicial review - The Federal Court dismissed the application - The Commissioner had only the powers explicitly granted in the Act - A statutory body, such as the Commissioner, had no inherent jurisdiction to relieve against inadvertent errors or omissions such as occurred in this instance - Where an applicant failed to respond to a requisition and the application was not reinstated within the year provided to rectify the situation, the patent application was abandoned as a matter of law - There was no discretionary decision which was reviewable by the court - See paragraphs 22 to 36.

Patents of Invention - Topic 706

Application for grant - General - Reinstatement of application - [See Administrative Law - Topic 2267 and Patents of Invention - Topic 15 ].

Patents of Invention - Topic 710

Application for grant - General - Abandonment - [See Administrative Law - Topic 2267 and Patents of Invention - Topic 15 ].

Patents of Invention - Topic 8143

Practice - Judicial review - When available - [See Patents of Invention - Topic 15 ].

Cases Noticed:

Canadian Union of Public Employees et al. v. Ontario (Minister of Labour), [2003] 1 S.C.R. 539; 304 N.R. 76; 173 O.A.C. 38; 2003 SCC 29, refd to. [para. 21].

Pfizer Inc. v. Commissioner of Patents (1999), 171 F.T.R. 100; 1 C.P.R.(4th) 200 (T.D.), revd. (2000), 269 N.R. 373; 9 C.P.R.(4th) 13 (F.C.A.), refd to. [para. 22].

Hoffman-La Roche (F.) AG v. Commissioner of Patents (2003), 242 F.T.R. 64; 2003 FC 1381, affd. (2005), 344 N.R. 202; 2005 FCA 399, refd to. [para. 22].

Eiba v. Canada (Attorney General) (2004), 247 F.T.R. 260; 2004 FC 250, refd to. [para. 22].

Nunavut Tunngavik Inc. v. Canada (Attorney General) (2004), 245 F.T.R. 42; 2004 FC 85, refd to. [para. 23].

Anheuser-Busch Inc. v. Carling O'Keefe Breweries of Canada Ltd. and Registrar of Trademarks, [1983] 2 F.C. 71; 45 N.R. 126; 142 D.L.R.(3d) 548 (F.C.A.), refd to. [para. 28].

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. 29].

Old St. Boniface Residents Association Inc. v. Winnipeg (City) et al., [1990] 3 S.C.R. 1170; 116 N.R. 46; 69 Man.R.(2d) 134, refd to. [para. 40].

Maple Lodge Farms Ltd. v. Canada (Minister of Economic Development), [1982] 2 S.C.R. 2; 44 N.R. 354, refd to. [para. 43].

Statutes Noticed:

Patent Act, R.S.C. 1985, c. P-4, sect. 73(1)(a) [Schedule A].

Counsel:

Marcus Gallie and Karla Baker, for the applicant;

Rick Woyiwada, for the respondents.

Solicitors of Record:

Rideout & Maybee LLP, Ottawa, Ontario, for the applicant;

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

This application was heard on September 24, 2007, at Ottawa, Ontario, by Mosley, J., of the Federal Court, who delivered the following judgment on November 5, 2007.