Hoffmann-La Roche AG v. Commissioner of Patents, (2003) 242 F.T.R. 64 (FC)

• Judge: O'Reilly, J.
• Court: Federal Court (Canada)
• Case Date: June 03, 2003
• Jurisdiction: Canada (Federal)
• Citations: (2003), 242 F.T.R. 64 (FC);2003 FC 1381

Hoffmann-La Roche AG v. Commr. of Patents (2003), 242 F.T.R. 64 (FC)

MLB headnote and full text

Temp. Cite: [2003] F.T.R. TBEd. DE.007

F. Hoffmann-La Roche AG (applicant) v. The Commissioner of Patents (respondent)

(T-2289-01; 2003 FC 1381)

Indexed As: Hoffmann-La Roche AG v. Commissioner of Patents

Federal Court

O'Reilly, J.

November 25, 2003.

Summary:

The applicant successfully applied to have a patent re-issued. The applicant failed to pay its annual maintenance fees on the re-issued patent due to its mischaracterization of the patent. The Commissioner of Patents notified the applicant that the re-issued patent had lapsed after it was too late to remedy the situation. The applicant applied for judicial review.

The Federal Court dismissed the application.

Administrative Law - Topic 2267

Natural justice - The duty of fairness - Reasonable expectation or legitimate expectation - The Commissioner of Patents notified a patent holder that its re-issued patent had lapsed for non-payment of maintenance fees (Patent Act, s. 46(2)) - It was too late to remedy the situation - The patent holder sought judicial review, asserting that it had a legitimate expectation that it would be notified when it missed the initial deadline based on the Commissioner's general practice - The Federal Court held that a necessary condition for recognizing the doctrine of legitimate expectations was absent - The Commissioner could not have conveyed the impression that a patent holder's interest would not be impinged without notice and an opportunity to make representation - The Commissioner's limited role did not admit of these elements of the duty of fairness - More importantly, s. 46(2) clearly stated that a patent would lapse if the proper fees were not paid - The Commissioner could not suggest that the strict terms of the Act would not apply where the patent holder had not been given advance warning of a patent's impending demise - The patent holder's reliance on the Commissioner's general practice was insufficient to create a corresponding duty on the Commissioner's part - See paragraphs 34 to 38.

Administrative Law - Topic 2450

Natural justice - Procedure - Notice - Legitimate expectation of notice doctrine - [See Administrative Law - Topic 2267 ].

Courts - Topic 4021.1

Federal Court of Canada - Jurisdiction - Trial Division - Decisions of federal boards, commissions or tribunals - A patent holder failed to pay its annual maintenance fees required by s. 46(1) of the Patent Act due to its mischaracterization of the patent - The Commissioner of Patents notified the applicant that the re-issued patent had lapsed (s. 46(2)) - It was too late to remedy the situation - The patent holder sought judicial review - The Commissioner asserted that it was the passage of time that resulted in the lapsing of the patent and since he had not made any decision or order respecting the patent holder, there was no foundation for a judicial review application - The Federal Court rejected the assertion - Judicial review was available respecting any "decision, order, act or proceedings of a federal board, commission or other tribunal" (Federal Court Act, s. 18.1(3)) - That language was broad enough to encompass the Commissioner's notice to the patent holder that its patent had lapsed - See paragraphs 17 to 20.

Equity - Topic 1063

Equitable relief - Relief from forfeiture - Jurisdiction - A patent holder failed to pay its annual maintenance fees as required by s. 46(1) of the Patent Act due to its mischaracterization of the patent - The Commissioner of Patents notified the applicant that the patent had lapsed pursuant to s. 46(2) - It was too late to remedy the situation - The applicant sought judicial review, asserting that the court could extend the time limit within which to pay the maintenance fees on the ground of equity - The applicant asserted that while judges had to give effect to legislation, the situation should be different where a person loses a property right, in part, because of a government agency's error - The Federal Court stated that this might be true if there were room for discretion or compromise in the language of the governing statute - However, s. 46(2) was clear - The court could not substitute its own deadline for that enacted by Parliament - See paragraphs 39 to 42.

Estoppel - Topic 1156

Estoppel in pais (by conduct) - Representation - By conduct - Silence or standing by - A patent holder had a patent re-issued in 1998 - The patent holder mischaracterized the patent as a new patent and therefore paid no maintenance fee in 1999 and the normal $100 annual fee for a new patent in 2000 and in 2001 - The patent holder should have paid $150 each year - In 2002, the Commissioner of Patents notified the patent holder that the patent had lapsed in 2000 - The deadline for remedying the situation had passed - The patent holder applied for judicial review, asserting that the Commissioner was estopped from declaring that the patent had lapsed because he accepted a lesser amount than that which was owed - The patent holder asserted that the Commissioner's silence in 1999 and 2000 meant that he had already given it an assurance of compliance on which it relied and from the which Commissioner could not resile - The Federal Court rejected the assertion - Where the governing statute was less strict, the courts might recognize an estoppel - Similarly, if the public official had a discretion, the official might be bound by estoppel - The Commissioner had no discretion - See paragraphs 43 to 46.

Estoppel - Topic 1395

Estoppel in pais (by conduct) - Circumstances where doctrine not applicable - Decisions of public officials - Patent Commissioner - [See Estoppel - Topic 1156 ].

Patents of Invention - Topic 406

Registration - General - Fees - [See Administrative Law - Topic 2267 , Equity - Topic 1063 and Estoppel - Topic 1156 ].

Patents of Invention - Topic 406

Registration - General - Fees - A patent holder failed to pay its annual maintenance fees as required by s. 46(1) of the Patent Act due to its mischaracterization of the patent - The Commissioner of Patents notified the patent holder that its patent had lapsed (s. 46(2)) - It was too late to remedy the situation - The patent holder asserted that the duty fairness required the Commissioner to notify it before determining that it had failed to pay the s. 46(1) fees - The Federal Court rejected the assertion - The patent holder was seeking to lighten the burden of complying with s. 46(1), which was at odds with the clear legislative intent to put the burden of compliance squarely on patent holders - Further, the patent holder overstated the Commissioner's role - The Commissioner's role was limited to informing patent holders that the statutory deadline for payment was missed - It would be impossible to provide holders with notice of that fact before the patent expired because the Act provided that the patent expired automatically when the deadline was missed - The Commissioner lacked authority to relieve against the consequence of non-compliance - There was no basis to require ongoing notice of the status of payments or that a patent was soon to lapse - See paragraphs 30 to 33.

Patents of Invention - Topic 8142

Practice - Judicial review - Scope of - [See Courts - Topic 4021.1 ].

Cases Noticed:

Pfizer v. Canada (Commissioner of Patents), [1999] F.C.J. No. 942 (T.D.), revd. [2000] F.C.J. No. 1801 (F.C.A.), refd to. [para. 19].

Markevich v. Minister of National Revenue, [1999] 3 F.C. 28; 163 F.T.R. 209 (T.D.), refd to. [para. 19].

Dutch Industries Ltd. v. Commissioner of Patents et al. (2003), 301 N.R. 152; 2003 FCA 121, refd to. [para. 23].

Free World Trust v. Électro Santé Inc. et al., [2000] 2 S.C.R. 1024; 263 N.R. 150, refd to. [para. 26].

Rodney v. Canada, [1972] F.C. 663 (F.C.A.), dist. [para. 32].

O'Reilly v. Local Board of the Health of Kingston, Frontenac and Lennox and Addington Health Unit (1983), 1 O.A.C. 227; 2 D.L.R.(4th) 262 (Div. Ct.), dist. [para. 32].

Old St. Boniface Residents Association Inc. v. Winnipeg (City) et al., [1990] 3 S.C.R. 1170; 116 N.R. 46; 60 Man.R.(2d) 134, refd to. [para. 35].

Canada (Attorney General) v. Human Rights Tribunal Panel (Can.) et al. (1994), 76 F.T.R. 1; 19 Admin. L.R.(2d) 69 (T.D.), refd to. [para. 36].

Comtab Ventures Ltd. v. Canada, [1984] F.C.J. No. 922 (T.D.), refd to. [para. 40].

Holachten Meadows Mobile Park Ltd. v. Canada (Minister of Indian Affairs and Northern Development) et al., [1986] 1 F.C. 238; 1 F.T.R. 278 (T.D.), refd to. [para. 40].

Canadian Northern Railway Co. v. Canada (1922), 64 S.C.R. 264, refd to. [para. 41].

Martin Mine Ltd. v. British Columbia, [1995] B.C.J. No. 2309, refd to. [para. 41].

Olympia & York Developments Ltd. v. Calgary (City) (1983), 45 A.R. 204 (C.A.), refd to. [para. 41].

R. v. C.N.R. Co., [1923] 3 D.L.R. 719 (P.C.), refd to. [para. 42].

Maritime Electric Co. v. General Dairies Ltd., [1937] 1 D.L.R. 609 (P.C.), refd to. [para. 44].

Kenora (Town) Hydro Electric Commission v. Vacationland Dairy Co-operative Ltd., [1994] 1 S.C.R. 80; 162 N.R. 241; 68 O.A.C. 241, refd to. [para. 45].

Aurchem Exploration Ltd. v. Whitehorse Mining District (Mining Recorder) (1992), 54 F.T.R. 134 (T.D.), refd to. [para. 45].

Saskatchewan (Minister of Environment and Resource Management) v. Kelvington Super Swine Inc. et al. (1997), 161 Sask.R. 111 (Q.B.), refd to. [para. 45].

Saskatchewan (Minister of the Environment) v. Redberry Development Corp. et al. (1992), 100 Sask.R. 36; 18 W.A.C. 36 (C.A.), refd to. [para. 45].

Statutes Noticed:

Federal Court Act, R.S.C. 1985, c. F-7, sect. 18.1(3) [para. 19].

Patent Act, R.S.C. 1985, c. P-4, sect. 46(2) [para. 3].

Counsel:

Kevin L. LaRoche and Jeffrey Jenkins, for the applicant;

Frederick Woyiwada, for the respondent.

Solicitors of Record:

Borden Ladner Gervais, Ottawa, Ontario, for the applicant;

Department of Justice, Ottawa, Ontario, for the respondent.

O'Reilly, J., of the Federal Court, heard this application at Ottawa, Ontario, on June 3, 2003, and delivered the following reasons for judgment on November 25, 2003.