• Federal Court Holds That a Request to Find a Dead Patent Application in Good Standing Must Fail
  • May 24, 2017 | Authors: Jillian Brenner; Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • University of Alberta v. Canada (Attorney General), 2017 FC 402

    The Federal Court has refused to declare that an application is in good standing after the applicants or their agents failed to reply to a requisition, and failed to apply to reinstate the patent application within the 12 month grace period.

    Two weeks after the patent application was filed, CIPO issued two notices to the agents. The first notice was a requisition pursuant to section 37 of the Patent Rules, and the second notice advised that CIPO would use the title of the invention as it appeared in the description rather than the title specified in the Petition for Grant of a Patent.

    One year later CIPO issued a notice of abandonment for a failure to reply in good faith to the requisition, and gave 12 months to reinstate.

    During that 12 month time period, the application was assigned. The new owners paid the Year 2 and Year 3 maintenance fees, both of which appeared to be accepted by CIPO. The new owners did not seek to clarify whether the patent application was in good standing.

    Three years after the original filing, the new owners applied to CIPO to correct the records to show the application was in good standing. CIPO refused, and then retrospectively rejected the Year 3 maintenance fee payment.

    The Court did not allow the various arguments that CIPO's subsequent actions suggested to the new owners that the patent application was still in good standing. Although the new owners sought to judicially review several of CIPO's later decisions, the Court held that the first requisition pursuant to section 37 of the Patent Rules is what should have been judicially reviewed. Since the time for that judicial review had long passed, the Court dismissed the proceeding.