Scott Miller Successfully Sets Aside a Decision of the Commissioner of Patent Office to Irrevocably Lapse a Patent

Scott Miller and the MBM Litigation Team successfully sets aside a decision of the Commissioner of Patents to irrevocably lapse a patent - not once but twice!

Repligen Corporation v. Canada (2012 FC 931) is the second time the Federal Court has told the Commissioner of Patents that it is necessary to consider how a patent applicant will be effected by its decision before the Commissioner exercises its discretion under s.8 of the Patent Act.

The Repligen decision is important for two reasons: (1) It clarifies what a clerical error is under s.8 of the Patent Act and (2) provides direction as to the discretion of the Commissioner of Patents.

In Repligen, the patent holder, through an annuity company made annuity payments but these payments were applied to a different patent. The annuity company submitted sufficient funds and the correct patent owners name but two characters in the patent number were inverted. The Patent Office declared that the Repligen patent had lapsed irrevocably.

In the Federal Court’s original 2010 judicial review of this matter, the Commissioner of Patents was ordered to reconsider the exercise of its discretion under s. 8 of the Patent Act. Justice Lemieux had found that the Commissioner failed to properly exercise her discretion by only considering two factors: the delay in seeking correction of a reversal of two digits in the patent number and any possible third party prejudice. The Commissioner’s decision was set aside and reconsideration of the correction request by a different Patent Office official was ordered.

In sending back the decision to the Patent Office at the time, the Federal Court had offered direction as to what the relevant factors to be considered, in addition to the two previously considered, ought to be:

• the impact on Repligen, the Applicant;
• the fact that Repligen's payment was received by the Commissioner and appropriated to another patent;
• the fact that Repligen's payments were made on the due date;
• the remedial scope of section 8 that would have the effect that the '486 patent never lapsed for non-payment;
• the purpose and object of the maintenance fee provision in the Act;
• the possible prejudice to third party rights ought to be based on actual evidence, not the likelihood that third parties would be affected;
• the necessity to weight and balance all relevant factors before exercising her discretion.

The July 27, 2012 decision by Justice Near set aside a second refusal by the Commissioner to exercise her discretion. The Court determined that the Commissioner had erred in the weighting and balancing of relevant factors, as noted above. In particular, it was determined that too much emphasis was put on the due diligence required of the Applicant and that considering s.8 as an extraordinary remedy put an undue burden on the requesting party. When considering the correction of this clerical error, the Court emphasizes that the proper considerations ought to have accorded significant weight to the possible impact on the Applicant, a balancing of this impact with the possible prejudice to the affected third party patent holder, and in particular a realization that both the Applicant and the affected third party made efforts to comply with maintenance fee provisions and that such payments were made in furtherance of the purpose of the legislation: to defray the costs of the Patent office and avoid deadwood patents.

The Federal Court has sent the Commissioner’s decision back to be reconsidered by a different decision-maker within the Patent Office.

For more information please contact Scott Miller

Supreme Court releases rulings for string of Copyright Law Cases

The Supreme Court of Canada issued rulings on five separate cases dealing with Copyright Law. This fresh jurisprudence should serve to give a refined understanding of one of the more contentious provisions on the Copyright Act, namely s.29 (fair dealing).

The Alberta v. Access Copyright case drew large public interest as it had implications to drastically change the current licensing business model between copyright collectives and educational institutions. In this case a teacher photocopied copyrighted material for a student for “research or private study”. The Copyright Board of Canada ruled that although the purpose was for private study, the actions did not amount to fair dealing with respect to s.29 of the Copyright Act for failing to be “fair” according to the legal test which analyzes six separate factors. The Majority of the Supreme Court came to the alternative outcome ruling copying of copyrighted work for the classroom constitutes fair dealing and no royalty should attach. Consequently, Access Copyright (the copyright collective in this case) stands to lose millions of dollars from royalties it would have collected from schools across the nation.

The SOCAN v. Bell, ESAC v. SOCAN, and Rogers v. SOCAN cases provided discussion and clarification with regards to specific digital services provided and whether royalties should attach. In SOCAN v. Bell, the court ruled that streaming previews of songs constitute fair dealing as it is reasonably necessary to help consumer research what to purchase, and therefore royalties should not attach. Moreover in ESAC v. SOCAN, the court ruled that downloading a game which contains copyrighted musical works does not constitute “communication” to the public and therefore royalties should not attach. In the Rogers v. SOCAN case, the court differentiated the acts of streaming and downloading music. Only the former is subject to royalties collected by copyright collectives.

Finally a reference case of Re: Sound dealt with the issue of whether a “soundtrack” being part of a motion picture constitutes a “sound recording”, and therefore becomes subject to pre-defined tariffs. The Supreme Court ruled a “soundtrack” is a “sound recording” in all situations except when it accompanies a motion picture, as expressly set out in s.2 of the Copyright Act.

Throughout these cases the Supreme Court has added more clarification to the required tests for fair dealing which should help both copyright holders and users understand the legislation with greater accuracy.

If you have any further inquiries please contact Scott Miller or Randy Marusyk.

By Kamaldeep Singh Sembi

This article originally appeared on www.mbm.com on July 12, 2012.