Missing Appointment of Agent Proves Fatal To Patent Application

Missing Appointment of Agent Proves Fatal To Patent Application

Matt Lonsdale is a JD candidate at Dalhousie University.

The Federal Court of Appeal has upheld a decision of the Commissioner of Patents to refuse to accept maintenance fees and reinstate an application because the fees were not paid by the agent of record.  The agent's mistake of omitting an Appointment of Agent proved fatal.

Unicrop Ltd. submitted an application for a patent via Bereskin & Parr, their registered patent agent at the time. Under s. 27.1(1) of the Patent Act they were required to pay annual maintenance fees of $100, due each year on July 5th, or their application would be considered abandoned. The fees for 2005 and 2006 were paid in full and on time by Beresekin & Parr. When July 5th 2007 passed without payment being received, the Canadian Intellectual Property Office (CIPO) considered their application abandoned. Pursuant to s. 73(3) of the Act and s. 98(1) of the Patent Rules, Unicrop had until July 5th 2008 to apply for reinstatement of their application and to pay the required fees. On June 23rd 2008 Unicrop signed an Appointment of Agent, identifying Furman & Kallio as their new patent agent. Furman & Kallio submitted the reinstatement application as well the necessary fees to CIPO that same day. They did not include a copy of the Appointment of Agent.

On July 23rd 2008, the Commissioner of Patents acknowledged receipt of the application and the fees, but indicated that the fees could only be paid by the applicant or an authorized agent. As far as CIPO was concerned, Bereskin & Parr was still the registered patent agent for Unicrop. Since Furman & Kallio had not included a copy of the Appointment of Agent with the application, the payment would not be accepted. Furman & Kallio subsequently submitted a copy of the Appointment of Agent together with a request to reconsider the rejection of the fees, but it was too late. In a letter dated October 17th, 2008, the Commissioner advised Furman & Kallio that the fees would not be accepted, and as the reinstatement period had lapsed as of July 5th, 2008, the application could not be reinstated. Furman & Kallio sought a judicial review of the Commissioner's decision in Federal Court, where it was held that the Commissioner's decision not to accept the fees and reinstate the application was the correct one. On February 11th, 2011, this decision was upheld by the Federal Court of Appeal.

Judges at both levels of court found that s. 73(3) of the Act and s. 6(1) of the Rules are clear and unambiguous: applications can only be reinstated within the “prescribed period”, and applications can only be maintained by “authorized correspondents”, including applicants or their registered agents. When the reinstatement period lapsed on July 5th 2008, Furman & Kallio was not an authorized correspondent, and so their payment of the fees could not be accepted. To hold otherwise would be to create confusion and uncertainty in the patent application process: each time CIPO received communication from someone other than an authorized correspondent, they would be required to decide whether or not to give effect to the communication. Previous cases had already decided that the Commissioner had no power to extend the reinstatement period, as this would run directly counter to the express statutory requirements.

The case reveals a lack of flexibility within the provisions regarding the reinstatement of abandoned patent applications. While Unicrop did not file the required fees within the prescribed period via an authorized correspondent, it was not for lack of trying. If the failure to include the Appointment of Agent with the application for reinstatement was a clerical error as Furman & Kallio submit, then it is unfortunate that the error had such severe consequences for Unicrop's patent application.