Where a maintenance fee was not paid on time, and an application to reinstate was not filed on time, the Commissioner has no jurisdiction to accept a late payment, either on the basis of a clerical error under section 8 of the Patent Act, or on the basis of any inherent jurisdiction to correct inadvertent loss of rights. In this case, the patentee argued that through a clerical error in a solicitor's office resulting in non-payment of the fees, the notation of the patent as "lapsed" on records in the Patent Office constituted a correctable error in an instrument of record. This argument was rejected. The argument on inherent jurisdiction was based on the Parke-Davis case, in which an inadvertent dedication to the public was allowed to be reversed. However, that decision was distinguished on its facts, in view of the clear wording of the Patent Act regarding the deadlines for paying fees and the consequences of non-payment. The Court rejected the general proposition that the Commissioner has any inherent jurisdiction to correct genuine mistakes made by patentees or their agents.
There now appears to be no hope for the revival of patents lapsed for incorrect or missed maintenance and reinstatement fees, unless the Government passes remedial legislation. The Government has in the past stated its intention to do that (as covered in the October 2003 issue of IP Perspectives), but it remains to be seen how this will play out after the Canadian national election.
A. David Morrow and Colin B. Ingram of our firms represented P.E. Fusion in its application.
A. David Morrow, Ottawa
Previous articles on this subject: Federal Court Dismisses Application to Preserve Patent which Lapsed for Failure to Pay Timely Maintenance Fees