In May 2017 I reported on the trial decision of Mr. Justice Russell, in The Governors of the University of Alberta and Alberta Health Services v. Attorney General of Canada (2017 FC 402), see “To err is human but forgiveness is by the rules” http://www.nortonrosefulbright.com/files/ca-to-err-is-human-but-forgiveness-is-controlled-by-the-rules-149101.pdf in which a patent application was irretrievably lost because of the failure to file a simple one sentence statement that “the applicant is the legal representative of the inventor”.

This decision has now been upheld by the Federal Court of Appeal (2018 FCA 36). In so doing the Court of Appeal again reiterated that “there is no mechanism in the Patent Act or Patent Rules by which the Commissioner can reinstate a patent application once it is deemed abandoned and the period for reinstatement has passed. In my view, the Commissioner had no discretion under the Patent Act to reinstate the patent application once it had been deemed abandoned and was incapable of reinstatement.”

Reform needed

Once again an inventor is deprived of the fruits of his invention by the inadvertent or unintentional acts of his agent. Why has this situation not been corrected? Recently Canada adopted new legislation to implement the Patent Law Treaty including new rules but nothing was done to correct the problems created by unintentional innocent non-compliance. As I have pointed out, the time has come for a procedure as in the US where an unintentionally abandoned application can be revived on payment of a suitably large fee (see for example 37 CFR 1.137). Why not take these issues out of the courts and allow these technicalities to be rectified by paying a penalty? The fees could be huge (perhaps thousands of dollars) and in the process collect some money for CIPO. In addition, other penalties such as shortened patent term could be considered. This is also a possible penalty in the United States. Action to avoid invalidation of valuable patents on technicalities is long overdue.