Patent applicants and patentees take note – two recent decisions issued by the Federal Court of Appeal have further emphasized the strict application of the due care standard.

As noted in our publication on the due care standard from last year,^[1] the due care standard applies to applicants and patentees that fail to pay a maintenance fee and the associated late fee within a prescribed period. The due care standard also applies to applicants who fail to request examination and pay the associated late fee within a prescribed period.

Taillefer^[2] is an appeal of a Federal Court decision. The Federal Court had dismissed an application for judicial review of the Commissioner’s refusal to reinstate a Canadian patent due to failure to pay the tenth anniversary maintenance fee. As indicated in our IP News post covering the Federal Court decision,^[3] the maintenance fee was missed because the patentee did not respond to their agent’s reminder emails, which had inadvertently wound up in their junk folder. In a short 12-paragraph decision, the Federal Court of Appeal upheld the Federal Court decision dismissing the judicial review application. Notably, the Federal Court of Appeal indicated that “[it] was reasonable for the Commissioner to find that due care would have required the Agent … to use alternative communication mechanisms to ensure that the Appellant was aware of the maintenance fee deadlines. It was also reasonable for the Commissioner to decide that the Appellant…. was required to exercise due care by having a system in place to monitor and pay the fees, notably by ensuring that his communication channel with the Agent remained effective.”^[4]

Another recent due care decision from the Federal Court of Appeal is Matco Tools.^[5] As noted in our IP News post on the Federal Court decision,^[6] the applicant’s patent application went abandoned for failing to pay a maintenance fee. The maintenance fee was not paid because of a data migration error when the applicant transitioned to a new annuity service provider, and because notices from CIPO were not being forwarded by US counsel to the applicant due to US counsel’s standing instructions to “…take no further action … with regard to payment of annuities and maintenance fees”.

The Commissioner refused the applicant’s reinstatement request, indicating that the data migration error was not relevant to the due care analysis and that no satisfactory explanation had been provided as to why the notice regarding non-payment of the maintenance fee was not forwarded to the applicant.

The Federal Court had rejected the Commissioner’s analysis, indicating that “[a] robust due care inquiry should cover the entire chain of events, from the earliest root cause to the final opportunity for correction”.^[7]

In overturning the Federal Court’s decision, the Federal Court of Appeal made three general observations:

• The obligation to exercise due care extended to the applicant’s representatives (which included their US counsel and the Canadian patent agent).
• Since the statutory framework requires that the applicant show “the reasons for the failure to take the action that should have been taken in order to avoid the abandonment”,^[8] the Commissioner’s decision to disregard the data migration error was reasonable and “[the] Commissioner was properly concerned with measures that were taken, or could have been taken, to avoid the deemed abandonment after the deadline for paying the maintenance fee had passed”.
• Even though the applicant instructed their US counsel to “take no further action … with regard to payment of annuities and maintenance fees”, this did not amount to instructions to not inform the applicant of the notices.

These two decisions confirm that the due care standard is applied extremely strictly in Canada. As always, if you have any questions regarding the due care standard, please do not hesitate to reach out to a member of our team.

[1] A copy of our publication is available here: https://patentable.com/the-due-care-standard-for-reinstatement-of-patents-and-patent-applications/

[2] Taillefer v. Canada (Attorney General), 2025 FCA 28, decision available at: https://decisions.fca-caf.gc.ca/fca-caf/decisions/en/item/521549/index.do

[3] A copy of our IP News Post on the Taillefer Federal Court decision is available here: https://patentable.com/federal-court-addresses-due-care-standard-for-failure-to-pay-maintenance-fee/

[4] Taillefer v. Canada (Attorney General), 2025 FCA 28, at para 10

[5] Canada (Attorney General) v. Matco Tools Corporation, 2025 FCA 156, decision available at: https://decisions.fca-caf.gc.ca/fca-caf/decisions/en/item/521676/index.do

[6] A copy of our IP News Post on the Matco Tools Federal Court decision is available here: https://patentable.com/court-orders-redetermination-of-reinstatement-request-in-data-migration-error-case/

[7] Matco Tools Corporation v. Canada (Attorney General), 2025 FC 118, at para 45

[8] Patent Act, RSC 1985, c P-4, s 73, https://canlii.ca/t/7vkn#sec73