Sarnoff Corp. v. Canada (Attorney General), (2008) 329 F.T.R. 231 (FC)

• Judge: Hughes, J.
• Court: Federal Court (Canada)
• Case Date: June 04, 2008
• Jurisdiction: Canada (Federal)
• Citations: (2008), 329 F.T.R. 231 (FC);2008 FC 712

Sarnoff Corp. v. Can. (A.G.) (2008), 329 F.T.R. 231 (FC)

MLB headnote and full text

Temp. Cite: [2008] F.T.R. TBEd. JN.014

Sarnoff Corporation (applicant) v. The Attorney General of Canada (respondent)

(T-1436-07; 2008 FC 712)

Indexed As: Sarnoff Corp. v. Canada (Attorney General)

Federal Court

Hughes, J.

June 6, 2008.

Summary:

A patent application was filed by Sarnoff Corp. in 1999 and assigned number 2,265,256 (the '256 application). The Gowlings firm was named by Sarnoff as its patent agent. Gowlings paid all maintenance fees up to the fifth anniversary of the '256 application. In 2004, Sarnoff transferred responsibility for the '256 application to another firm, Dimock Stratton. The Dimock Stratton firm paid the 6th and 7th anniversary maintenance fees, which were received, accepted and processed by the Patent Office. After receiving the 7th anniversary maintenance fees, a fee clerk in the Patent Office contacted the Dimock Stratton firm to advise that the Office had no record of a change of agent or appointment of associate agent respecting that firm. The Patent Office subsequently deemed the '256 application to be abandoned because maintenance fees had not been paid by the appropriate person. Sarnoff applied for judicial review.

The Federal Court allowed the application and set aside the decision deeming the '256 application to be abandoned.

Equity - Topic 1068

Equitable relief - Relief from forfeiture - Grounds for relief - [See first Patents of Invention - Topic 708 ].

Patents of Invention - Topic 4.1

Patent agents or authorized correspondents - [See both Patents of Invention - Topic 708 ].

Patents of Invention - Topic 708

Application for grant - General - Fees - A patent application was filed by Sarnoff Corp. in 1999 (the '256 application) - The Gowlings firm was named by Sarnoff as its patent agent - Gowlings paid all maintenance fees up to the fifth anniversary of the '256 application - In 2004, Sarnoff transferred responsibility for the '256 application to another firm, Dimock Stratton - The Dimock Stratton firm paid the 6th and 7th anniversary maintenance fees, which were received, accepted and processed by the Patent Office - After receiving the 7th anniversary maintenance fees, a fee clerk in the Patent Office contacted the Dimock Stratton firm to advise that the Office had no record of a change of agent or appointment of associate agent respecting that firm - The Patent Office subsequently deemed the '256 application to be abandoned because maintenance fees had not been paid by the appropriate person - Sarnoff applied for judicial review - The Federal Court allowed the application and set aside the decision deeming the '256 application to be abandoned - The court stated that "Given the ambiguity in the legislation and regulations as to who can pay maintenance fees and when a notice of an appointment of associate agent can be given, and given the initial acceptance by the Patent Office of the fees and treatment of the Dimock Stratton firm as agent, it would be absurd and lead to dire consequences to interpret the [Patent] Rules as nullifying any correspondence and payment actually accepted by the Patent Office in the circumstances of this case" - The court further stated that if it was wrong in its conclusion that the Patent Office acted improperly in deeming the patent application to be abandoned, then Sarnoff was in an equitable position to obtain relief from forfeiture.

Patents of Invention - Topic 708

Application for grant - General - Fees - Rule 6(1) of the Patent Rules 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" - The Federal Court stated that "an unduly restrictive approach as to Rule 6(1) respecting persons with whom communications should be regarded does not accord with the generally accepted laws of agency. A principal can act directly or through an agent. Patent agents are skilled in matters of technology, patent draftsmanship and dealing with the Patent Office and its procedures. The payment of maintenance fees is a routine clerical matter, requiring no particular skill. A principal should be able to pay those fees, it is, after all, the principal's patent or patent application and the principal should decide whether to keep it alive or not. Similarly, an agent of the principal, whether or not a patent agent, should be able to do so on behalf of the principal. Rule 6(1) should not be read so restrictively so as to prohibit a principal or a principal's agent from engaging in matters so routine and clerical in nature as paying maintenance fees" - See paragraph 27.

Cases Noticed:

New Brunswick (Board of Management) v. Dunsmuir (2008), 372 N.R. 1; 329 N.B.R.(2d) 1; 844 A.P.R. 1; 2008 SCC 9, refd to. [para. 8].

Apotex Inc. and Novopharm Ltd. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153; 296 N.R. 130, refd to. [para. 9].

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; 2005 FCA 399, refd to. [para. 18].

Eiba v. Canada (Attorney General), [2004] 3 F.C.R. 416; 247 F.T.R. 260 (F.C.), refd to. [para. 18].

Dutch Industries Ltd. v. Commissioner of Patents et al., [2003] 4 F.C. 67; 301 N.R. 152 (F.C.A.), refd to. [para. 22].

Rendina v. Canada (Attorney General) et al. (2007), 316 F.T.R. 76; 2007 FC 914, refd to. [para. 23].

DBC Marine Safety Systems Ltd. v. Commissioner of Patents et al. (2007), 319 F.T.R. 170; 2007 FC 1142, refd to. [para. 24].

Saskatchewan River Bungalows Ltd. and Fikowski v. Maritime Life Assurance Co., [1994] 2 S.C.R. 490; 168 N.R. 381; 155 A.R. 321; 73 W.A.C. 321, refd to. [para. 35].

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. 37].

Statutes Noticed:

Patent Act Regulations (Can.), Patent Rules, SOR/96-423, rule 6(1) [para. 10].

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

Authors and Works Noticed:

Fridman, Gerald Henry Louis, The Law of Agency (7th Ed. 1996), c. 1, p. 11 [para. 17].

Counsel:

Kevin Sartorio and John Boadway, for the applicant, Sarnoff Corporation;

Jacqueline Dais-Visca, for the respondent, The Attorney General of Canada.

Solicitors of Record:

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

John H. Sims, Q.C., Deputy Attorney General of Canada, Toronto, Ontario, for the respondent.

This application was heard on June 4, 2008, at Toronto, Ontario, before Hughes, J., of the Federal Court, who delivered the following decision on June 6, 2008.