When the Canadian Commissioner of Patents refuses a patent application on the recommendation of the Patent Appeal Board, the applicant can appeal to the Federal Court where the Court has the power to “arrive at its own conclusions on the evidence presented”. However, the Court must be careful not to overturn a discretionary decision unless the discretion was wrongly exercised. Further appeals to the Federal Court of Appeal are possible as of right.
The Patent Appeal Board (PAB) is an advisory body composed of senior officials in the Canadian Intellectual Property Office (CIPO) with previous experience as patent examiners. A patent applicant whose application was refused by the patent examiner can request that the PAB review that decision. In such a review, the PAB will review the facts, law and evidence adduced by the applicant and prepare a recommendation to the Commissioner of Patents whether to confirm the refusal of the application, or to overturn the examiner’s decision and allow the application. The Commissioner then makes the final decision, typically adopting the recommendation and reasons of the PAB.
In Monsanto Co. v Canada (Commissioner of Patents,  2 S.C.R. 1108, the Supreme Court emphasized that, where the Commissioner refuses a patent application, the refusal must be accompanied by reasons justifying why the applicant is not entitled by law to the patent. The Supreme Court noted that a simple statement without explanation “is insufficient because, if accepted, it makes the right of appeal illusory.” (Monsanto at para. 18) A copy of the Commissioner’s refusal, together with the PAB’s recommendations and reasons, must be sent to the applicant (Patent Act s.40), and the applicant then has six months from that date to appeal the Commissioner’s decision (Patent Act s.41).
Appeals from decisions of the Commissioner are under the jurisdiction of the Federal Court and “shall be had and taken pursuant to the Federal Courts Act and the rules and practice of that Court.” (Patent Act s.17) The Attorney General of Canada is named as respondent in any such appeals.
During the appeal process, the parties must agree on the documents, exhibits and transcripts to be included in the Appeal Book. Typically, the entire file history will be included in the Appeal Book because an appeal under section 41 of the Patent Act, “should ordinarily be conducted on the basis of the record that was before the Commissioner” as there is no automatic right to lead fresh evidence on such an appeal (Blair v. Canada (Attorney General), 2010 FC 227 at paras. 42 and 43). However, if an agreement on the content of the Appeal Book cannot be reached within the time-period, for example where a party wants to include additional material not before the PAB, a motion to determine the content of the Appeal Book may be brought. For example, in a recent motion concerning the contents of the Appeal Book, the Court allowed the inclusion of a Practice Notice published by CIPO after the patent applications at issue were refused in order to avoid the potential for a second appeal in the event the patent applications were referred back to the Commissioner for redetermination (see Order dated March 3, 2021 in Benjamin Moore & Co. v The Attorney General of Canada, Court File No. T-1340-20).
At the hearing of the appeal from a decision of the Commissioner of Patents, the standard of review is the regular appellate standard (Coca-Cola Company v Canada (Attorney General) 2023 FC 424 at 27). Questions of law are assessed on a standard of correctness while questions of fact and mixed fact and law will be assessed on a standard of palpable and overriding error.
Under section 41 of the Patent Act, the Federal Court may dismiss the appeal or give the decision that should have been given by the Commissioner. The Supreme Court clarified that the Federal Court has the power to “arrive at its own conclusions on the evidence presented, not merely to determine whether the Commissioner’s conclusions are correct in law.” (Pioneer Hi-Bred Ltd. v Canada Commissioner of Patents  1 S.C.R. 1623 at para 23). In Hercules Inc. v. Canada (Patent Commissioner), FCA 32 A.C.W.S. (2d) 416 at para. 2, the Federal Court of Appeal noted that the court ought not interfere with any discretion applied by the Commissioner unless it is clear that the discretion was wrongly exercised either because the Commissioner was wrong on a principle of law or there is no evidence to support their manner of exercising their discretion.
Decisions of the Federal Court may be further appealed to the Federal Court of Appeal, and with leave to the Supreme Court of Canada. Upon the final determination of all appeals, the Commissioner must take action in accordance with the Court’s order, including making any amendments to the specification or drawings that may be ordered to be made.
Ridout & Maybee LLP was counsel to Benjamin Moore in the above-noted appeal from two decisions of the Commissioner. The Federal Court allowed the appeals, and further appeals are pending before the Federal Court of Appeal.