Excelsior Medical Corp. v. Canada (Attorney General), (2011) 388 F.T.R. 1 (FC)

• Judge: Hughes, J.
• Court: Federal Court (Canada)
• Case Date: March 29, 2011
• Jurisdiction: Canada (Federal)
• Citations: (2011), 388 F.T.R. 1 (FC);2011 FC 407

Excelsior Medical v. Can. (A.G.) (2011), 388 F.T.R. 1 (FC)

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[French language version follows English language version]

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Temp. Cite: [2011] F.T.R. TBEd. AP.018

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

(T-121-10; 2011 FC 407; 2011 CF 407)

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

Federal Court

Hughes, J.

April 4, 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 application and related patents and patent applications to Excelsior Medical Corporation. At about that time, 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 later the patent office sent a further letter stating that the earlier 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 an appointment of associate agent to the patent office. The covering letter stated that it was intended to reflect a de facto arrangement in place at the time 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 dismissed the application.

Courts - Topic 4021.1

Federal Court of Canada - Jurisdiction - Federal Court - Decisions of federal boards, commissions or tribunals - 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 that application and related patents and patent applications to Excelsior Medical Corporation - At about that time, the deadline for payment of the application's maintenance fees 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 later, 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 an appointment of associate agent to the patent office - The covering letter stated that it was intended to reflect a de facto arrangement in place at the time the fees were originally tendered - The patent office advised 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 - The Crown objected to the court's jurisdiction on the basis that, if the second letter was a nullity, there was nothing upon which the court could make a judicial review - The Federal Court held that judicial review was available - The Crown's assertion presupposed the result - See paragraph 11.

Courts - Topic 4029

Federal Court of Canada - Jurisdiction - Federal Court - Patents of invention - [See Courts - Topic 4021.1 ].

Courts - Topic 4043

Federal Court of Canada - Jurisdiction - Federal Court - Declaratory relief - [See Courts - Topic 4021.1 ].

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 application and related patents and patent applications to Excelsior Medical Corporation - The deadline for payment of the application's maintenance fees was missed - Excelsior retained 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 later 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 - Several months later, at Oyen Wiggs request, the fees were refunded - In December 2009, Oyen Wiggs submitted an appointment of associate agent to the patent office - The covering letter stated that it was intended to reflect a de facto arrangement in place at the time 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 held that, pursuant to Patent Rule 6(1), the Patent Office was entitled to ignore communications respecting an application or maintenance fees which did not come from an authorized representative - However, once the letter and fees were received and accepted by the patent office during the period when the application was alive, the patent office had no authority to undo the situation - However, that did not end the matter - When Oyen Wiggs received a refund in June 2008, there were no maintenance fees paid effective as of that date - The patent application was dead at that time - The patent office rightly rejected Oyen Wiggs' December 2009 request to be appointed as an agent - The court refused to grant equitable relief against forfeiture where there was no evidence that reliance was placed on the patent office's actions - The refund request indicated that Oyen Wiggs acquiesced in what the patent office did - See paragraphs 33 to 51.

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 ].

Patents of Invention - Topic 706

Application for grant - General - Reinstatement of application - At issue was whether rule 6(1) of the Patent Rules was inconsistent with s. 73(3) of the Patent Act such that the Commissioner had to accept payment of maintenance fees from anyone purporting to tender them on the applicant's behalf - Rule 6(1) provided that "Except as provided by the Act or these Rules, for the purpose of prosecuting or maintaining an application the Commissioner shall only communicate with, and shall only have regard to communications from, the authorized correspondent." - Section 73(3) provided for reinstatement of an abandoned application by the applicant - The Federal Court held as follows: "I interpret Rule 6(1), when read harmoniously with section 73(3) d) of the Patent Act, as well as the other provisions of that Act and Rules previously referred to, as creating an orderly scheme for the prosecution of applications and payment of maintenance fees through the applicant; or, where a patent agent has been appointed, through that agent. The numerous cases that have arisen where hardship has resulted largely through inadvertence, speaks to a need to reform the Rules. As they stand, the Rules provide for a generous grace period to seek reinstatement, but do not provide to the Commissioner or the Court a discretion to bend the Rules. In my view, the Rules may be one-sided in protecting only the needs of the Patent Office and not of private practitioners. This may require revision to the Rules, but not by the Court." - See paragraphs 20 to 32.

Patents of Invention - Topic 5512

New Substances Licenses (incl. compulsory licences) - Food and medicine - Patent Act - Interpretation - Section 12(2) of the Patent Act provided that "Any rule or regulation made by the Governor in Council has the same force and effect as if it had been enacted herein." - The Federal Court held that the court was required to interpret the Act and the Patent Rules as working together harmoniously - It was only where there was a clear contradiction that the Act had to prevail - Ambiguities were to be resolved on the basis of a homogeneous working together of the Act and the Rules - See paragraphs 14 to 19.

Patents of Invention - Topic 5513

New Substances Licences (incl. compulsory licences) - Food and medicine - Patent Act Regulations - Interpretation - [See Patents of Invention - Topic 5512 ].

Patents of Invention - Topic 8143

Practice - Judicial review - When available - [See Courts - Topic 4021.1 ].

Statutes - Topic 5357

Operation and effect - Delegated legislation - Regulations - Interpretation - Consistent with empowering statute - [See Patents of Invention - Topic 5512 ].

Statutes - Topic 5364

Operation and effect - Delegated legislation - Regulations - Validity of - Conflict with statute authorizing the regulation - [See Patents of Invention - Topic 5512 ].

Cases Noticed:

Hoffman-La Roche AG v. Commissioner of Patents, [2004] 2 F.C.R. 405; 242 F.T.R. 64; 2003 FC 1381, affd. (2005), 344 N.R. 302; 45 C.P.R.(4th) 1; 2005 FCA 399, refd to. [para. 11].

Bristol-Myers Squibb Co. et al. v. Canada (Attorney General) et al., [2005] 1 S.C.R. 533; 334 N.R. 55; 2005 SCC 26, refd to. [para. 15].

M-Systems Flash Disk Pioneers Ltd. v. Commissioner of Patents (2010), 367 F.T.R. 133; 83 C.P.R.(4th) 423; 2010 FC 441, affd. (2010), 402 N.R. 95; 2010 FCA 112, refd to. [para. 16].

DBC Marine Safety Systems Ltd. v. Commissioner of Patents et al. (2008), 382 N.R. 100; 69 C.P.R. (4th) 189; 2008 FCA 256, refd to. [para. 16].

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

Sarnoff Corp. v. Canada (Attorney General) (2008), 329 F.T.R. 231; 66 C.P.R.(4th) 167; 2008 FC 712, refd to. [para. 32].

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.), dist. [para. 35].

Actelion Pharmaceuticals Ltd. v. Canada (Attorney General) et al. (2008), 374 N.R. 192; 64 C.P.R.(4th) 381; 2008 FCA 90, dist. [para. 39].

Hydro Electric Commission of Kenora (Town) v. Vacationland Dairy Co-operative Ltd., [1994] 1 S.C.R. 80; 162 N.R. 241; 68 O.A.C. 241, refd to. [para. 49].

Statutes Noticed:

Patent Act, R.S.C. 1985, c. P-4, sect. 12(2) [para. 14]; sect. 73(3) [para. 25].

Patent Rules, SOR/96-423, rule 6(1) [paras. 28, 33].

Authors and Works Noticed:

Sullivan, Ruth, Sullivan and Driedger on the Construction of Statutes (4th Ed. 2002), p. 272 [para. 17].

Counsel:

Kevin Sartorio, for the applicant;

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

Solicitors of Record:

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

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

This application was heard at Toronto, Ontario, on March 29, 2011, by Hughes, J., of the Federal Court, who delivered the following reasons for judgment on April 4, 2011.