Excelsior Medical Corp. v. Canada (Attorney General), (2011) 428 N.R. 197 (FCA)

• Judge: Noël, Pelletier and Layden-Stevenson, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: November 03, 2011
• Jurisdiction: Canada (Federal)
• Citations: (2011), 428 N.R. 197 (FCA);2011 FCA 303

Excelsior Medical Corp. v. Can. (A.G.) (2011), 428 N.R. 197 (FCA)

MLB headnote and full text

Temp. Cite: [2011] N.R. TBEd. NO.043

Excelsior Medical Corporation (appellant) v. Attorney General of Canada (respondent)

(A-175-11; 2011 FCA 303)

Indexed As: Excelsior Medical Corp. v. Canada (Attorney General)

Federal Court of Appeal

Noël, Pelletier and Layden-Stevenson, JJ.A.

November 3, 2011.

Summary:

Vasca Inc. filed a patent application outside of Canada under the international Patent Co-Operation Treaty. Based on that application, Vasca filed a patent application in Canada. Vasca assigned the patent application and related patents and patent applications to Excelsior Medical Corporation. The deadline for payment of the maintenance fees for the Canadian patent application was missed. Excelsior selected a new patent agent (Oyen Wiggs). On July 9, 2007, Oyen Wiggs filed a letter with the Canadian Patent Office requesting reinstatement and providing payment of the relevant fees. The deadline for reinstatement was July 10, 2007. The Patent Office accepted the fees and sent a notice stating that the application had been reinstated. A few days late the Patent Office sent a further letter stating that the first letter should be disregarded because the fees had not been tendered by the agent of record. The Patent Office offered to refund the fees. Several months later, Oyen Wiggs requested a refund. The fees were refunded. Two years later, Oyen Wiggs submitted to the Patent Office an appointment of associate agent. The covering letter stated that it was intended to reflect a de facto arrangement in place when the fees were originally tendered. The Patent Office advised Oyen Wiggs and the patent agent of record that the application was dead and could not be reinstated. Excelsior applied for judicial review, seeking a declaration that the Patent Office's second letter was a nullity or, alternatively, to have the second letter quashed and a direction that the Patent Office process the application .

The Federal Court, in a decision reported at 388 F.T.R. 1, dismissed the application. Excelsior appealed.

The Federal Court of Appeal dismissed the appeal, albeit for different reasons.

Equity - Topic 1003

Equitable relief - General - When refused - Vasca Inc. filed a patent application outside of Canada under the international Patent Co-Operation Treaty - Based on that application, Vasca filed a patent application in Canada - Vasca assigned the patent application and related patents and patent applications to Excelsior Medical Corporation - The deadline for payment of the maintenance fees for the Canadian patent application was missed - Excelsior selected a new patent agent (Oyen Wiggs) - On July 9, 2007, Oyen Wiggs filed a letter with the Canadian Patent Office requesting reinstatement and providing payment of the relevant fees - The deadline for reinstatement was July 10, 2007 - The Patent Office accepted the fees and sent a notice stating that the application had been reinstated. - A few days late the Patent Office sent a second letter stating that the first letter should be disregarded because the fees had not been tendered by the agent of record - The Patent Office offered to refund the fees - Several months later, Oyen Wiggs requested a refund - The fees were refunded - Two years later, Oyen Wiggs submitted to the Patent Office an appointment of associate agent - The covering letter stated that it was intended to reflect a de facto arrangement in place when the fees were originally tendered - The Patent Office advised that the application was dead and could not be reinstated - Excelsior applied for judicial review - The Federal Court of Appeal affirmed the application's dismissal - Unicrop Ltd. v. Canada (Attorney General) (F.C.A.) held that the Patent Office could only deal with the applicant's authorized correspondent and that an authorized correspondent only became so when the required documents were filed in the Patent Office - The acceptance of maintenance fees, whether within or outside the reinstatement period, by someone other than the authorized correspondent did not reinstate a patent application - Contrary to the application judge's view, the Patent Office's acceptance of those fees did not create rights and its returns of those of fees did not extinguish rights - To hold otherwise would create a situation in which the Patent Office's administrative errors created or extinguished rights independently of the statutory scheme - Contrary to Excelsior's assertion, the appointment of an authorized correspondent for prosecution purposes extended to both prosecution and maintenance matters - There was no basis for invoking the court's equitable jurisdiction to grant relief from forfeiture - This was simply another in a line of cases where the most elemental precautions were not taken when accepting a patent prosecution mandate - In any event, the relief from forfeiture doctrine did not apply to statutory time limits.

Equity - Topic 1061

Equitable relief - Relief from forfeiture - General - [See Equity - Topic 1003 ].

Patents of Invention - Topic 706

Application for grant - General - Reinstatement of application - [See Equity - Topic 1003 ].

Cases Noticed:

Sarnoff Corp. v. Canada (Attorney General) (2008), 329 F.T.R. 231; 66 C.P.R.(4th) 167; 2008 FC 712, dist [para. 4].

Unicrop Ltd. v. Canada (Attorney General) (2011), 414 N.R. 381; 2011 FCA 55, folld. [para. 30].

Hoffman-La Roche AG v. Commissioner of Patents (2005), 344 N.R. 302; 2005 FCA 399, refd to. [para. 8].

Statutes Noticed:

Patent Rules, SOR/96-423, rule 20, rule 6(1) [para. 7].

Counsel:

Kevin Sartorio and James Blonde, for the appellant;

Jacqueline Dais-Visca and Abigail Browne, for the respondent.

Solicitors of Record:

Gowling Lafleur Henderson LLP, Toronto, Ontario, for the appellant;

Myles J. Kirvan, Deputy Attorney General of Canada, Ottawa, Ontario, for the respondent.

This appeal was heard at Toronto, Ontario, on November 3, 2011, by Noël, Pelletier and Layden-Stevenson, JJ.A., of the Federal Court of Appeal. Pelletier, J.A., delivered the following reasons for judgment for the court orally on the same date.