MBM Wins Before the Federal Court
REPLIGEN CORPORATION v. ATTORNEY GENERAL OF CANADA
March 2011
The central argument in this judicial review of a patent decision – that was accepted by the Court – is below:
B. The Applicant’s Oral Argument at the Hearing
[24] In oral argument, he argued the Commissioner failed to properly interpret section 46 of the Act resulting in asking herself the wrong question when analyzing Repligen’s correction request. [25] He argues section 46 of the Act is clear. It obliges the owner of a patent i.e. the patentee of a patent; in French “le titulaire d’un brevet” to pay prescribed fees and it is only if and when such fees payable are not paid within the prescribed time that the term of the patent shall be deemed to have expired at the end of the prescribed time for payment.
[26] He argues the Commissioner was wrong to say the maintenance fees were not paid by Repligen on the ‘486 patent. CPA’s payment which the Commission does not deny receiving were specifically made on behalf of the named owner Repligen. Moreover in its request for correction Counsel specifically so stated. In the circumstances of this case there was no discretion for the Commissioner to exercise, Counsel argued.
[27] In addition, he argues there is nothing in section 46 of the Act which requires maintenance fee payments to be made by reference to the number under which the patent was issued nor is that requirement found in section 182 of the Rules. He buttressed this argument by a reference to section 7 of the Rules which provides that communications addressed to the Commissioner in relation to an application shall include the application number, if one has been assigned. He contrasted this requirement with a reference to section 182 of the Rules dealing with Maintenance Fees which does not contain a similar requirement in respect of issued patents.
Decision:
THIS COURT'S JUDGMENT is that this judicial review application is granted with costs, the Commissioner's decision is set aside and the Applicant's correction request shall be reconsidered by a different official in the Patent Office taking into account these reasons.
