Appellant’s appeal of a decision of the Federal Court, in which it dismissed the appellants’ application for judicial review of three decisions from the Canadian Intellectual Property Office relating to an application for a patent, dismissed

Administrative law – Appeals – Decisions reviewed – Intellectual Property Office – Intellectual property – Patents – Judicial review – Discretion of delegated authority

Governors of the University of Alberta v. Canada (Attorney General), [2018] F.C.J. No. 160, 2018 FCA 36, Federal Court of Appeal, February 9, 2018, W.W. Webb, D.G. Near and J.B. Laskin JJ.A.

The appellants, the Governors of the University of Alberta and Alberta Health Services, appealed a decision of the Federal Court, in which it dismissed the appellants’ application for judicial review of three decisions from the Canadian Intellectual Property Office (the “CIPO”).

On February 1, 2013, agents filed a patent application with CIPO on behalf of the appellants. The application did not include a declaration that the patent applicants were the legal representatives of the inventors as required by paragraph 37(2)(a) of the Patent Rules, S.O.R./96-423. This fact was not in dispute.

On February 15, 2013, the Commissioner sent a requisition to the agents requiring the patent applicant to amend the application and comply with paragraph 37 of the Patent Rules. The letter indicated that failure to do so would result in the abandonment of the application pursuant to section 73 of the Patent Act, R.S.C. 1985, c. P-4. No steps were taken by the applicants. As such, on March 31, 2014, a Notice of Abandonment was sent to the agents. The notice indicated that the application could be reinstated if the applicants corrected the error within 12 months. Once again, no steps were taken by the applicants in response. The applicant was subsequently listed as “dead”.

On January 21, 2016, the appellants learned that the application had been deemed “dead”. They subsequently asked the Commissioner to rectify the application. The Commissioner refused since the reinstatement period had expired. Two letters were sent explaining this. The appellants then applied to the Federal Court for judicial review of the Commissioner’s decision. The Federal Court dismissed the application for judicial review. The Federal Court found that the appellants were, in effect, seeking judicial review of the original requisition sent on February 15, 2013. Further, the court stated that as a matter of law, the Patent Act did not allow for reinstatement once the application was “dead” so there was no discretionary decision that the court could review.

On appeal, the Federal Court of Appeal considered two issues: (1) whether the Federal Court erred in concluding that the appellants were seeking review of the February 15, 2013 requisition; and (2) whether the Commissioner erred in refusing to reinstate the patent application after it was deemed “dead”.

On the first issue, the Court of Appeal disagreed with the Federal Court. The Court of Appeal held the requisition was not sent as a result of a discretionary decision and so was not subject to judicial review. Rather, the requisition was a notice that the application failed to meet the necessary requirements. It was not a decision. The Federal Court had thus erred in concluding that this was the decision under review. In light of this, the Court of Appeal went on to consider the second issue. The Court of Appeal found the Commissioner’s decision to not reinstate the application was appropriate and in compliance with the legislation. As a matter of statutory interpretation, the Court of Appeal found that there was no mechanism in the Patent Act or the Patent Rules by which the Commissioner could reinstate a patent application once it was deemed abandoned and the period of reinstatement had passed. Since there was no dispute that both of these things happened in this case, the Court of Appeal had little trouble in concluding that the Commissioner lacked any discretion to reinstate the application. Accordingly, the Court of Appeal concluded there was simply no basis on which to intervene with the decision of the Commissioner.

For these reasons, the Federal Court of Appeal dismissed the appeal with costs.

This case was digested by Adam R. Way, and first published in the LexisNexis® Harper Grey Administrative Law Netletter and the Harper Grey Administrative Law Newsletter.  If you would like to discuss this case further, please contact Adam R. Way at away@harpergrey.com.

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