First Green Park Pty. Ltd. v. Canada (Attorney General), (1997) 127 F.T.R. 189 (TD)

• Judge: Richard, J.
• Court: Federal Court (Canada)
• Case Date: October 21, 1996
• Jurisdiction: Canada (Federal)
• Citations: (1997), 127 F.T.R. 189 (TD)

First Green Park Pty. v. Can. (A.G.) (1997), 127 F.T.R. 189 (TD)

MLB headnote and full text

First Green Park Pty. Ltd. (applicant) v. The Attorney General of Canada

(respondent)

(T-868-95)

Indexed As: First Green Park Pty. Ltd. v. Canada (Attorney General)

Federal Court of Canada

Trial Division

Richard, J.

March 5, 1997.

Summary:

In 1990, First Green Park Pty. Ltd. (First Green) applied for a domestic patent in Australia. In 1991, First Green filed an international patent application in Australia pursuant to the Patent Cooperation Treaty (PCT). Canada was the designated country in the international application. The International Bureau of the World Intellectual Property Organisation (WIPO) notified the Canadian Intellectual Property Office (CIPO) of the application. In 1992, Canada became an elected state pursuant to a filed election. WIPO gave notice of the election to CIPO. February of 1993 was the deadline that First Green had to meet to enter into the national phase of the process in Canada (i.e., 30 months after the filing of the original domestic application in Australia). The application would be deemed to have been abandoned if the deadline was not met. February of 1994 was the deadline (12 months) for an application for reinstatement following a deemed abandonment. In June of 1994, First Green discovered the failure to enter the national phase in Canada. In November of 1994, the Head of the PCT section at the CIPO denied a request for an extension of the reinstatement period under rule 139 of the Canadian Patent Regulations. The decision to deny the extension was affirmed by the Commissioner. First Green applied for judicial review.

The Federal Court of Canada, Trial Division, allowed the application.

Administrative Law - Topic 8264

Administrative powers - Discretionary powers - Fettering of discretion - Unlike domestic applications, the Commissioner of Patents did not issue notices of abandonment for international applications for patents filed under the Patent Cooperation Treaty (PCT) - Also, the Commissioner's policy was to apply the same 12 month reinstatement period to international applications that was applied to domestic applications - However, Article 48(2)(b) of the PCT and Rule 82bis.1 granted the Commissioner discretion to revive an international application beyond the 12 month deadline for reinstatement - The Federal Court of Canada, Trial Division, held that the Commissioner had improperly fettered his discretion by refusing to exercise it in all cases where the international request was beyond the 12 month period - See paragraphs 77 to 89.

Patents of Invention - Topic 523

Registration - International patents - Designation of states - First Green (FG) applied for a domestic patent in Australia - Subsequently, it filed an international patent application under the Patent Cooperation Treaty - Canada was the designated country - FG failed to meet the deadline for entering into the national phase of the application in Canada - FG also failed to seek reinstatement within the 12 month period allowed pursuant to the PCT and the Patent Act - Eight months beyond the reinstatement period, FG applied for an extension - The Commissioner of Patents affirmed the decision not to grant an extension - FG applied for judicial review on the ground, inter alia, that the Commissioner should have given notice of the deemed abandonment - The Federal Court of Canada, Trial Division, granted judicial review on other grounds - See paragraphs 48 to 67 and 76.

Patents of Invention - Topic 523

Registration - International patents - Designation of states - First Green (FG) filed an international patent application in Australia under the Patent Cooperation Treaty (PCT) - Canada was the designated country - FG failed to meet the deadline for entering into the national phase of the application in Canada - FG also failed to seek reinstatement within the 12 month period allowed pursuant to the PCT and the Patent Act - Eight months later, FG applied for an extension of the reinstatement period - The Commissioner of Patents declined to grant an extension - FG applied for judicial review on the ground that the Commissioner should have considered the request under Art. 48(2)(b) of the PCT and s. 82bis.1 of the Rules which provided a longer reinstatement period - The Federal Court of Canada, Trial Division, granted judicial review - See paragraphs 68 to 89.

Cases Noticed:

Celltech Ltd. v. Commissioner of Patents (1993), 60 F.T.R. 128; 46 C.P.R.(3d) 424 (T.D.), affd. (1994), 166 N.R. 69; 55 C.P.R.(3d) 59 (F.C.A.), consd. [paras. 24, 57].

Parke, Davis & Co. v. Fine Chemicals of Canada Ltd. (1959), 32 C.P.R. 43 (Ex. Ct.), refd to. [para. 52, footnote 12].

Hercules Inc. v. Canada (Commissioner of Patents) (1985), 4 C.P.R.(3d) 289 (F.C.A.), refd to. [para. 63, footnote 17].

American Home Products Corp. v. I.C.N. Canada (1985), 61 N.R. 141; 5 C.P.R.(3d) 1 (F.C.A.), refd to. [para. 67, footnote 21].

American Home Products Corp. v. Canada (Commissioner of Patents) (1983), 71 C.P.R.(2d) 9 (F.C.A.), refd to. [para. 67, footnote 21].

Ainsley Financial Corp. et al. v. Ontario Securities Commission et al. (1994), 77 O.A.C. 155; 21 O.R.(3d) 104 (C.A.), consd. [para. 70].

Maple Lodge Farms Ltd. v. Canada (Minister of Economic Development), [1982] 2 S.C.R. 2; 44 N.R. 354, consd. [para. 72].

Capital Cities Communications Inc. et al. v. Canadian Radio-Television Commission et al., [1978] 2 S.C.R. 141; 18 N.R. 181, consd. [para. 73].

Pezim v. British Columbia Securities Commission et al., [1994] 2 S.C.R. 557; 168 N.R. 321; 46 B.C.A.C. 1; 75 W.A.C. 1; [1994] 7 W.W.R. 1; 92 B.C.L.R.(2d) 145; 14 B.C.R.(2d) 217; 22 Admin. L.R.(2d) 1; 114 D.L.R.(4th) 385, consd. [para. 74].

Superintendent of Brokers v. Pezim - see Pezim v. British Columbia Securities Commission et al.

Application des Gaz's Application, Re, [1987] R.P.C. 279 (Pat. Ct.), refd to. [para. 82].

Energy Conversion Devices Inc.'s Application, Re, [1983] R.P.C. 231 (H.L.), refd to. [para. 82].

E's Applications - see Energy Conversion Devices Inc.'s Application.

Maple Lodge Farms Ltd. v. Canada, [1981] 1 F.C. 500; 42 N.R. 312 (F.C.A.), refd to. [para. 88].

Statutes Noticed:

Patent Act, R.S.C. 1985, c. P-4, sect. 12(1)(h), sect. 12(1)(i) [para. 39]; sect. 30(1), sect. 30(2) [para. 40]; sect. 40(2) [para. 41].

Patent Act Regulations (Can.), Patent Rules, sect. 61(1), sect. 61(2), sect. 134, sect. 138, sect. 139, sect. 140 [para. 42].

Patent Cooperation Treaty, C.T.S. 1990, No. 22, sect. 48(1), sect. 48(2)(a), sect. 48(2)(b) [para. 36].

Patent Cooperation Treaty Regulations (Can.), SOR/89-453, sect. 6, sect. 7, sect. 14, sect. 15 [para. 37].

Patent Cooperation Treaty Rules, art. 82bis.1, art. 82bis.2 [para. 38].

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

Authors and Works Noticed:

Canada, Law Reform Commission Report, Independent Administrative Agencies, Report No. 26 (1985), p. 31 [para. 71, footnote 23].

Craig, P.P. Administrative Law (3rd Ed. 1994), pp. 391 to 400 [para. 69, footnote 22].

de Smith, Woolf and Jowell, Judicial Review of Administrative Action (5th Ed. 1995), pp. 505 to 519 [para. 69, footnote 22].

Garant, Patrice, Droit administratif (4th Ed. 1996), vol. 2, p. 386 [para. 69, footnote 22].

Gordon, Richard, Judicial Review: Law and Procedure (1996), pp. 210 to 216 [para. 69, footnote 22].

Henderson, Gordon F., Patent Law of Canada (1994), pp. 83 to 99 [para. 18, footnote 6].

Hughes, Roger T., and Woodley, John H., Patents, p. 915 [para. 18, footnote 6].

Takach, George Francis, A Canadian Compendium of Law and Practice (1993), pp. 192 to 205 [para. 18, footnote 6].

World Intellectual Property Organisation (WIPO), Patent Cooperation Treaty (PCT) Applicant's Guide, Vol. I, p. 3, para. 15, Vol. II, pp. 2-3, para. 12; p. 4, para. 18 [para. 22].

Counsel:

Peter F. Kappel, for the applicant;

Gail Sinclair, for the respondent.

Solicitors of Record:

Kappel Ludlow, Toronto, Ontario, for the applicant;

George Thomson, Deputy Attorney General of Canada, Ottawa, Ontario, for the respondent.

This application was heard in Toronto, Ontario, on October 21, 1996, before Richard, J., of the Federal Court of Canada, Trial Division, who delivered the following judgment on March 5, 1997, in Ottawa, Ontario.