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Due care must be used in paying patent maintenance fees and in requesting reinstatement

In what Justice Furlanetto describes as “the first judicial review in which the “due care” provisions under subsection 46(5) of the Patent Act have been substantively considered”, the patentees’ request for reinstatement of the patent that had been deemed to have expired for nonpayment was denied.

What the decision reveals is that the agent repeatedly reached out to the patentee by e-mail for instructions to pay the maintenance fees and did so in a timely fashion.  The agent did not pay the maintenance fee as, pursuant to the agent’s retainer, that would only be done on instructions, and none were received.

The request for reinstatement was only made after the patentee found the agent’s e-mail notifying the patentee that CIPO had deemed the patent to have expired for nonpayment.

This decision was challenged through judicial review, where Justice Furlanetto refused to reverse CIPO’s decision.

Applying the reasonableness standard to the Commissioner’s decision, the Federal Court deferred to the Commissioner’s decision and the deemed invalidity finding was undisturbed.

The facts relating to the nonpayment are not revealed in detail beyond the implication that inexplicably the agent’s e-mails to the patentee had been diverted to the patentee’s “junk folder” which was not regularly reviewed.  The Commissioner had decided that the patentee and the agent had failed to demonstrate that they had done all that was possible to ensure communication was effective, including establishing alternative ways of communicating.  The most important point, in the end, was the finding that the patentee had failed to provide enough information to support its claim that due care had been exercised.

At this date, prudent practice dictates that “alternative means of communication” be initiated and employed (possibly phoning if emails fail to elicit responses) and that significant explanatory detail be provided when corresponding with CIPO requesting reinstatement.

The decision can be found here.

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