Introduction
This article will outline the due care standard for reinstatement of Canadian patents and patent applications, and how the standard has been applied.
Beginning on the second anniversary of filing, yearly maintenance fees must be paid to the Canadian Intellectual Property Office (CIPO) for a patent application or a granted patent to remain in effect. If the anniversary is missed, the maintenance fee may be paid with an additional late fee up to 6 months following the anniversary, or up to two months from the date CIPO sends notice requiring the maintenance fee and late fee to be paid, whichever is later.[1] Failure to pay the maintenance fee with late fee in that period results in the deemed abandonment of the patent application or deemed expiry of the patent. However, under certain circumstances, it is possible to request reinstatement of the application or reversal of the deemed expiry of the patent (referred to generally as “reinstatement” for the rest of this article).
In 2019, amendments to the Patent Act and Patent Rules came into force that allow for reinstatement of the application or patent after the late fee period and up to 18 months after the initial maintenance fee due date if:
- the request for reinstatement provides the reasons for the failure; and
- the Commissioner of Patents determines “that the failure occurred in spite of the due care required by the circumstances.”[2]
If the Commissioner of Patents determines that the applicant/patentee did not exercise due care, the deemed abandonment of the application or deemed expiry of the patent will stand.
The due care standard also applies to applicants requesting reinstatement of an application abandoned for failing to request examination and pay the late fee within the later of: (a) 6 months from the deadline for requesting examination; and (b) 2 months from the mailing of a notice by CIPO.[3]
CIPO applies the due care standard strictly. At the time of writing, only approximately 15% of the 293 decisions issued have resulted in successful reinstatement.[4]
While the first decision regarding a request for reinstatement was made on 5 July 2021, the first successful request for reinstatement did not occur until 20 December 2021, nearly six months later. Figure 1 shows how decisions have developed over time.
Figure 1
For the decisions where it was determined that due care was taken, Figure 2 shows the reason for the failure to pay.
Figure 2
Cases in which due care has not been met
As evident from the foregoing, the vast majority of reinstatement requests result in CIPO making a finding that due care was not taken. A recent decision from the Federal Court was the first judicial decision reviewing a denied request for reinstatement.
Taillefer v. Canada (Attorney General), 2024 FC 259
CIPO’s strict application of the due care standard was upheld in Taillefer v. Canada (Attorney General), 2024 FC 259, where 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 Taillefer, the Canadian patent agent sent several email reminders to the applicant regarding the tenth anniversary maintenance fee and the late 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 nor the late fee.
After the agent informed 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 dismissing 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.”
At the time of writing, the patentee in Taillefer had filed a notice of appeal in respect of the Federal Court decision.
Cases in which due care has been met
Despite CIPO’s strict application of the due care standard, there have been successful instances of reinstatement.
Canadian Application No. 2,862,859
Canadian Application No. 2,862,859 was the first application to be successfully reinstated. The application was initially allowed in 2019, but the application was abandoned for failure to pay the final fee. The Canadian agent for the applicant confirmed with the applicant that an annuity service provider would attend to payment of the maintenance fees, and the agent accordingly removed the deadlines from their docketing system. Subsequently, the applicant requested that the agent attend to the 2020 maintenance fee. However, a staff member at the agent erroneously uploaded these instructions into the docketing system.
Initially, the Commissioner provided a letter of intent to refuse reinstatement on the basis that the request did not include any details relating to the training and supervision of the staff member in question, or of the docketing system and how instructions were entered.
In response, the applicant filed further submissions relating to the staff member and docketing system. These submissions were sufficient for the Commissioner to determine that due care was taken.
Canadian Application No. 2,926,031
The late period for payment of the 7th anniversary maintenance fee payment for Canadian Application No. 2,926,031 expired on April 4, 2022. The applicant was the sole inventor as well as the sole proprietor of his business. Beginning in August 2019, the applicant received two potentially fatal medical diagnoses back-to-back, for which treatment concluded in December 2022. As a result, the applicant was faced with difficult financial decisions when the maintenance fee came due and opted to allow the application to be abandoned so as to be able provide for his family in case he did not survive. These submissions were sufficient for the Commissioner to determine that due care was taken and the application was reinstated.
Concluding Remarks
As evident from the foregoing, it is clear that the CIPO applies the due care standard strictly. Agents and applicants/patentees should ensure that there are reliable docket systems in place, and that there are redundant forms of communication available so as to ensure that deadlines are not missed.
Should you have any questions regarding the due care standard or any other aspect of your patent portfolio, we invite you to reach out to your usual Oyen Wiggs contact.
[1] Patent Act, RSC 1985, c P-4, [Patent Act] sections 46(2)(b), 73(1)(c)
[2] Patent Act, sections 46(5), 73(3)
[3] Patent Act, section 73
[4] Due Care Decisions reported at: https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/patents/maintain-your-patent-application-or-granted-patent/reverse-expired-patent/determinations-related-due-care
