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Patents - Maintenance Fees. Taillefer v. Canada (Attorney General)
In Taillefer v. Canada (Attorney General) (Fed CA, 2025) the Federal Court of Appeal dismissed an appeal from a JR against "the Commissioner of Patents’ decision [the Decision] to reject the Appellant’s reinstatement request for Canadian Patent No. 2,690,767 [767 Patent]" for failure to pay annual patent maintenance fees:[1] ... The 767 Patent was deemed to have expired in 2020 because the Appellant and his patent agent [Agent] failed to pay a mandatory annual maintenance fee on it, as required by section 46 of the Patent Act, R.S.C. 1985, c. P-4 [Act], following an email communication failure.
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[3] Where a patentee fails to pay the annual maintenance fee by the prescribed deadline, the patent is deemed to have expired pursuant to subsections 46(1) to 46(4) of the Act, unless the patentee pays the maintenance fee and a late fee before the expiry of the prescribed late fee period. To have its patent reinstated, the patentee must meet the requirements of subsection 46(5) of the Act. Notably, under paragraph 46(5)(b), the Commissioner must be satisfied that the patentee’s failure to pay the maintenance and late fees by the prescribed date “"occurred in spite of the due care required by the circumstances having been taken.”" ....
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[7] The Appellant claims that the Commissioner failed to adequately justify its interpretation of the due care standard under the Act. This argument is without merit. At the beginning of their detailed reasons, the Commissioner observed that the Act and Patent Rules, SOR/2019-251 were amended in 2019 in order to implement provisions of the Patent Law Treaty, 21 May 2001, Can TS 2019 No 25 (entered into force 28 April 2005, ratification by Canada 30 July 2019), an agreement administered by the World Intellectual Property Organization [WIPO] and aimed at simplifying and harmonizing the administrative practices of national IP offices.
[8] Consistent with these amendments’ objective of aligning the Canadian regime more closely with international standards, and following the non-binding guidance provided in section 27.03.03 of the Manual of Patent Office Practice [MOPOP], the Commissioner referred to the international guidance set out in paragraph 166M of the WIPO Receiving Office Guidelines [WIPO guidelines] to establish the meaning of the due care standard in paragraph 46(5)(b) of the Act. The WIPO guidelines note that a request for restoration of priority under the Patent Cooperation Treaty, 19 June 1970, Can TS 1990 No 22 (entered into force 24 January 1978, ratification by Canada 02 October 1989) should be approved if the applicant’s failure to file the international application within the priority period occurred "“in spite of due care required by the circumstances having been taken,”" and that this due care standard can only be met if the applicant has taken all measures which a reasonably prudent applicant would have taken in light of the facts and circumstances of each particular case. For the identically worded due care standard in paragraph 46(5)(b) of the Act, the Commissioner adopted an analogous standard which asks whether the patentee took all measures that a reasonable patent holder would have taken, given the particular set of circumstances, to avoid the failure.
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