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Federal Court Addresses Due Care Standard for Failure to Pay Maintenance Fee

In Taillefer v. Canada (Attorney General), 2024 FC 259, the applicant unsuccessfully sought judicial review of a decision of the Commissioner of Patents denying a request to reinstate Canadian Patent 2,690,767 that was deemed abandoned for failure to pay the tenth anniversary maintenance fee.

In this case, the Canadian patent agent sent several email reminders to the applicant regarding the tenth anniversary maintenance fee. However, the applicant did not respond to any of the agent’s emails. As the agent did not receive instructions, the agent did not pay the maintenance fee.

After informing the applicant of the deemed abandonment of the patent, the applicant found the agent’s emails in their junk email folder. The applicant then instructed the agent to seek reinstatement. In the reinstatement request, the agent indicated “[t]o the best of his knowledge, the patent owner did not take any actions which would cause [the] emails to be directed to his junk folder, and had no reason to regularly check his junk folder for relevant emails.”

The Commissioner rejected the request for reinstatement, finding that there was not “any other action that was taken, or even considered, by the agent or the patentee, to ensure that communication channels remain[ed] effective and the Fees [we]re paid on time…”

In rejecting the application for judicial review, the Federal Court stated “it is my view that it was reasonable for the Commissioner to have looked at steps that could have avoided the communication failure and to have expected that the Agent would have additional communication mechanisms in place… Similarly, in my view it was reasonable for the Commissioner to expect that a reasonably prudent patentee would have a system in place to make sure that their email was operating effectively if they were relying on this as the primary communication means to pay their maintenance fees.”

This decision is a reminder of the high bar required to show the due care necessary for reinstatement of a Canadian patent or patent application that was deemed abandoned for failure to pay a maintenance fee.

A copy of the decision is available here.

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