T-526-06
T-527-06
T-1837-05
T-569-06
T-570-06
Vancouver, British Columbia, February 26, 2007
PRESENT: The Honourable Madam Justice Layden-Stevenson
BETWEEN:
and
REASONS FOR ORDER AND ORDER
[1] The applicant, Mr. Wicks, filed six applications for judicial review regarding the position of the Commissioner of Patents (the Commissioner) that the applicant’s two patent applications were irrevocably abandoned and could not be reinstated. These reasons address each of the patent applications as well as the applicant’s assertions that the Commissioner identified the incorrect expiration date for each of the patent applications and further misapprehended the applicable law. Despite the innovative and intriguing submissions of the applicant, I have determined that the Commissioner’s position was correct. Accordingly, the applications for judicial review will be dismissed.
I. Background
[2] The legal issue for determination is a straightforward question of statutory interpretation. The factual basis that gives rise to the issue requires that I go back in time. Regard must be had to certain past practices in the office of the Commissioner, the impact of the jurisprudence of the Federal Court and the Federal Court of Appeal on those past practices and Parliament’s response to the jurisprudence. This contextual backdrop is necessary to situate the applicant’s arguments.
[3] Before turning to the historical aspect, a brief introduction of the applicant is warranted. Mr. Wicks claims to be the owner of Canadian Patent Application No. 2,159,102 (the '102 patent application) and the inventor of its invention. The nature of the claimed invention is not relevant to this matter. The '102 patent application was filed September 25, 1995 as a Canadian National Phase Application, which corresponded to International Patent Application No. PCT/US94/002212 filed March 1, 1994 and its related priority document, U.S. Patent No. 5,890,433 filed March 25, 1993 and granted April 6, 1999. Mr. Wicks also claims to be the owner of Canadian Patent Application No. 2,228,707 (the '707 patent application) and the inventor of its invention. The '707 patent application was filed February 4, 1998 and claimed priority to United States Serial No. 60/037,162 filed February 4, 1997. The '707 patent application describes an improvement to the '102 patent application.
[4] Thus, the '102 patent application was filed in Canada on September 25, 1995, and the '707 patent application was filed in Canada on March 1, 1998. The legislative scheme that applies to patent applications is set out in more detail later in these reasons. I will return to the '102 and '707 patent applications in due course. I turn now to a distilled overview of the historical backdrop. A more comprehensive discussion is contained in the cases that I refer to below. There is no need for me to engage in a detailed recitation here.
[5] The Patent Act, R.S.C. 1985, c. P-4 (the Act) and the Patent Rules, SOR/96-423 (the Rules) require a patent applicant to pay a prescribed amount of money, known as a “maintenance fee” at specified times. The maintenance fee is required to keep the patent application in good standing. The fee payable by a “small entity” (defined in the Rules) is less than that payable by a “large entity” (an entity that does not meet the definition of small entity).
[6] It was the practice of the Commissioner, in circumstances where applicants paid small entity fees when they ought to have paid large entity fees, to accept top-up payments for the deficiencies. The top-up payments were considered to be retroactive corrective payments whether or not they were made within the prescribed statutory time limit for reinstatement of patent applications that had been deemed abandoned for non-payment of maintenance fees.
[7] In Dutch Industries Ltd. v. Canada (Commissioner of Patents), [2002] 1 F.C. 325, 209 F.T.R. 260, 14 C.P.R. (4th) 499 (Dutch Industries No. 1), the issue was whether the Commissioner was competent to accept payments on account of underpaid maintenance fees after the prescribed time for payment. The court concluded that the Act and the Rules manifest a mandatory requirement to pay the prescribed fees and a mandatory consequence of deemed abandonment if the fees are not paid before the expiration of the legislated payment period. Any request for reinstatement must be made within the prescribed period. The Commissioner is without jurisdiction to permit the deficient portion of the maintenance fees to be paid after the expiration of the time for applying for reinstatement.
[8] On appeal, the Federal Court of Appeal, in Dutch Industries v. Canada (Commissioner of Patents), [2003] 4 F.C. 67,301 N.R.152, 24 C.P.R. (4th) 157 (F.C.A.) leave to appeal dismissed, [2003] S.C.C.A. No. 204 (Dutch Industries No.2), agreed that the Commissioner lacked the authority to permit a deficient maintenance fee to be topped up beyond the time prescribed for reinstatement. However, the Court of Appeal determined that the status of an applicant as a small entity is not susceptible to change from time to time. The Court of Appeal concluded that, on a proper interpretation, status as to small entity is determined at the time when the patent regime is first engaged (generally, when submitting a patent application). That status is maintained in relation to that patent application and any resulting patent throughout its term. In other words, the status of the applicant is determined at the outset and remains constant thereafter for all purposes under the Act and the Rules.
[9] In response to the Dutch Industries cases, Parliament added section 78.6 to the Act, which came into force on February 1, 2006, by Order in Council 2005-1871. The pertinent portion is subsection 78.6(1) which provides:
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78.6 (1) If, before the day on which this section comes into force, a person has paid a prescribed fee applicable to a small entity, within the meaning of the Patent Rules as they read at the time of payment, but should have paid the prescribed fee applicable to an entity other than a small entity and a payment equivalent to the difference between the two amounts is submitted to the Commissioner in accordance with subsection (2) either before or no later than twelve months after that day, the payment is deemed to have been paid on the day on which the prescribed fee was paid, regardless of whether an action or other proceeding relating to the patent or patent application in respect of which the fee was payable has been commenced or decided.
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78.6 (1) Si, avant l’entrée en vigueur du présent article, une personne a payé la taxe réglementaire relative à une petite entité, au sens des Règles sur les brevets dans leur version applicable à la date du paiement, alors qu’elle aurait dû payer celle relative à une entité autre qu’une petite entité, et qu’elle verse la différence au commissaire aux brevets en conformité avec le paragraphe (2), avant la date d’entrée en vigueur du présent article ou au plus tard douze mois après cette date, le versement est réputé avoir été fait à la date du paiement de la taxe réglementaire, indépendamment de toute instance ou autre procédure engagée à l’égard du brevet ou de la demande de brevet qui fait l’objet de la taxe ou de toute décision en découlant.
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II. The Relevant Legislative Provisions
[10] A number of amendments were made to the Act after Mr. Wicks filed his patent applications. I will be referring to the current provisions. In these applications, nothing turns on the former provisions.
[11] Paragraph 27.1(2) of the Act imposes a duty on an applicant for a patent to pay prescribed fees.
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(2) The prescribed application fee must be paid and the application must be filed in accordance with the regulations by the inventor or the inventor’s legal representative and the application must contain a petition and a specification of the invention.
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(2) L’inventeur ou son représentant légal doit déposer, en la forme réglementaire, une demande accompagnée d’une pétition et du mémoire descriptif de l’invention et payer les taxes réglementaires.
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[12] The prescribed fees and timing are set out in the Rules and in Schedule II to the Rules. Under Item 30 of Schedule II, an applicant must generally pay a maintenance fee of a specified amount by the anniversary date of the application each year.
[13] The provisions of section 73 of the Act specify that if an applicant fails to pay the maintenance fees as prescribed, or fails to request an examination and pay the prescribed fee, the application shall be deemed to be abandoned.
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73. (1) An application for a patent in Canada shall be deemed to be abandoned if the applicant does not (a) … (b) … (c) pay the fees payable under section 27.1, within the time provided by the regulations; (d) make a request for examination or pay the prescribed fee under subsection 35(1) within the time provided by the regulations; (e) …; or (f) …
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73. (1) La demande de brevet est considérée comme abandonnée si le demandeur omet, selon le cas : a) … b) … c) de payer, dans le délai réglementaire, les taxes visées à l’article 27.1; d) de présenter la requête visée au paragraphe 35(1) ou de payer la taxe réglementaire dans le délai réglementaire; e) … f) …
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[14] Thus, if an applicant fails to pay a maintenance fee that is due, the application is deemed abandoned. However, the application may be reinstated if, within one year of the default, certain actions are taken. Specifically, the applicant must make a request for reinstatement, pay the defaulted maintenance fee and pay a prescribed reinstatement fee. This mechanism for reinstatement is found in subsection 73(3) of the Act.
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(3) An application deemed to be abandoned under this section shall be reinstated if the applicant (a) makes a request for reinstatement to the Commissioner within the prescribed period;
(b) takes the action that should have been taken in order to avoid the abandonment; and (c) pays the prescribed fee before the expiration of the prescribed period.
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(3) Elle peut être rétablie si le demandeur : a) présente au commissaire, dans le délai réglementaire, une requête à cet effet; b) prend les mesures qui s’imposaient pour éviter l’abandon;
c) paie les taxes réglementaires avant l’expiration de la période réglementaire.
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[15] The prescribed fee and the prescribed period are specified in section 152 of the Rules.
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152. In order for an application deemed to be abandoned under section 73 of the Act to be reinstated, the applicant must, in respect of each failure to take an action referred to in subsection 73(1) of the Act or section 151, make a request for reinstatement to the Commissioner, take the action that should have been taken in order to avoid the deemed abandonment and pay the fee set out in item 7 of Schedule II before the expiry of the twelve-month period after the date on which the application is deemed to be abandoned as a result of that failure.
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152. Pour que la demande considérée comme abandonnée en application de l’article 73 de la Loi soit rétablie, le demandeur, à l’égard de chaque omission mentionnée au paragraphe 73(1) de la Loi ou visée à l’article 151, présente au commissaire une requête à cet effet, prend les mesures qui s’imposaient pour éviter la présomption d’abandon et paie la taxe prévue à l’article 7 de l’annexe II, dans les douze mois suivant la date de prise d’effet de la présomption d’abandon.
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III. The Applicant's Crystallized Position
[16] The applicant’s record contains an exhaustive documentary history that appears to include everything touching upon the '102 and '707 patent applications. The memoranda of fact and law comprises argument based on administrative law principles, reliance on Canadian Intellectual Property Office (CIPO) Policy Statements, infringement of rights under subsection 27(1) and section 78.6 of the Act, infringement of rights under the Canadian Bill of Rights and reliance on the doctrines of legitimate expectations and mistake.
[17] At the hearing, the applicant’s counsel abandoned all arguments, save one. Additionally, counsel stated that most of the documentation contained in the record could be ignored because it was not probative. The content of the record, therefore, was substantially reduced and the applicant’s argument was crystallized into a single issue, that is, whether subsection 78.6(1) applies to the applicant’s patent applications. That is the only issue that was argued and it is the only issue that will be addressed in these reasons.
[18] Next, counsel spoke to the six applications for judicial review (three in relation to each of the impugned patent applications). The '102 patent application entails file numbers T-1836-05, T-526-06 and T-527-06. The '707 patent application involves file numbers T-1837-05, T-569-06 and T-570-06. The applicant’s counsel formally requested that I address only T-527-06 in relation to the '102 patent application and only T-569-06 in relation to the '707 patent application. The applicant’s counsel stated (and counsel for the Commissioner agreed) that a determination on T-527-06 would be dispositive of all applications for judicial review in relation to the '102 patent application and a determination on T-569 would be dispositive of all applications for judicial review in relation to the '707 patent application. Although I invited counsel to simply discontinue the four extraneous applications, his reasons for declining to do so remain a mystery to me. Accordingly, my analysis will be directed to file numbers T-527-06 and T-569-06. However, since there was no formal discontinuance of the remaining applications for judicial review, a copy of these reasons will be placed in each of the other files as well.
[19] Additionally, the applicant’s counsel formally adopted the factual chronology of the Commissioner as accurate. Because the factual matrix for each of the patent applications is distinct, I will deal with each of the patent applications separately.
IV. Issue
[20] The only issue is whether the applicant comes within subsection 78.6(1) of the Act.
V. Standard of Review
[21] The issue necessitates an interpretation of subsection 78.6(1) of the Act. Questions of statutory interpretation are pure questions of law and the standard of review is that of correctness. The Commissioner’s position with respect to the '102 and '707 patent applications must be correct.
VI. The '102 Patent Application
[22] The factual background in relation to the '102 patent application is as follows:
September 25, 1995 The '102 patent application entered the Canadian National Phase. On behalf of the applicant, as a large entity, the application fee, the examination fee, and the second annuity fee were paid to CIPO, representing the Commissioner.
March 1, 1997 The applicant failed to pay the 3rd annuity fee on its due date. The patent application was deemed abandoned.
April 9, 1997 CIPO issued a notice of abandonment.
February 25, 1998 The applicant submitted a form claiming small entity status since January 1, 1997. (The Rules in force had a more complex definition of small entity but the maintenance fee structure was substantially the same).
February 27, 1998 The applicant requested reinstatement submitting the appropriate fee. The applicant, as a small entity, paid the 3rd annuity (in arrears) and paid the 4th annuity.
March 11, 1998 CIPO issued a notice of reinstatement.
1990-2000 The applicant paid the 5th and 6th annuities.
March 1, 2001 The applicant failed to pay the 7th annuity fee on its due date. The application was deemed abandoned.
March 29, 2001 CIPO issued a notice of abandonment.
March 1, 2002 The statutory 12-month period within which the application could have been reinstated elapsed. No request for reinstatement and no payment was made during the 12-month period.
November 16, 2004 The applicant forwarded payments of the 7th through 10th annuities, with associated late fees.
December 14, 2004 CIPO informed the applicant that the patent application “became dead on March 1, 2002 for non-payment of the maintenance fee”.
January 31, 2005 The applicant forwarded a payment for the 11th annuity fee.
March 8, 2005 CIPO reminded the applicant that the application had been deemed abandoned and that the reinstatement period had expired. CIPO informed the applicant that the purported 11th annuity payment would be returned on request.
April 6, 2005 CIPO returned the payments that the applicant had forwarded regarding the 7th through the 10th annuities to the applicant.
July 5, 2005 The applicant requested reinstatement. The applicant again submitted payments for the 7th through 10th annuities, with associated late fees.
September 19, 2005 CIPO again reminded the applicant that the application had been deemed abandoned and that the reinstatement period had expired. CIPO informed the applicant that the purported payments would be returned on request.
October 19, 2005 The applicant initiated the application for judicial review in T-1836-05 challenging the “decision” contained in CIPO’s letter of September 19, 2005.
January 31, 2006 The applicant forwarded $550 to CIPO and authorized the Commissioner to “make any and all appropriate action” and to debit a Visa account for “whatever additional sum of money is needed to effect payment of any additional fees”.
February 1, 2006 The applicant forwarded the 12th annuity along with the difference between the amount payable by a small entity and the amount payable by a large entity.
February 21, 2006 CIPO again reminded the applicant that the application was beyond the period of reinstatement. It indicated that the purported payment of January 31 would be returned on request.
February 27, 2006 In reference to the purported payment of February 1, 2006, CIPO again reminded the applicant that the application was dead.
March 23, 2006 The applicant initiated the application for judicial review in T-526-06, challenging the “decision” contained in CIPO’s letter of February 21, 2006.
The applicant initiated the application for judicial review in T-527-06 challenging the “decision” contained in CIPO’s letter of February 27, 2006.
[23] The applicant argues that section 78.6 applies to his patent applications. He concedes that but for subsection 78.6(1), the patent applications have expired and the Commissioner’s position is correct. In short, if the applicant’s argument regarding subsection 78.6(1) is accepted, he will succeed. However, if his argument is rejected, the applications for judicial review must fail.
[24] The submission is that the Commissioner identified the incorrect expiration date for both patent applications and misapprehended the legal consequences of Dutch Industries 2 and subsection 78.6(1). In argument, the applicant referred only to the Court of Appeal’s decision in Dutch Industries. Therefore, all further references to Dutch Industries are to Dutch Industries 2.
[25] According to the applicant, the correct expiration date regarding both patent applications is the date upon which the applicant submitted the incorrect maintenance payment (the date upon which the applicant paid fees as a small entity rather than a large entity). Dutch Industries mandates this result because the court held that whatever status the applicant for a patent held at the time of the application is to be retained throughout the duration of the patent application. Status, whether as a large entity or a small entity, is determined only once – when the patent regime is first engaged. In this respect, Dutch Industries operates retroactively. Dutch Industries interpreted the provisions of the Act and the interpretation is good for all time.
[26] The applicant asserts that the enactment of subsection 78.6(1) provided a remedial effect for the harshness of Dutch Industries. It allowed a one-year window of opportunity for patent holders and applicants to “fix” their applications by topping up their payments thereby allowing for the reincarnation of dead patent applications. In support of this contention, the applicant points to the Interpretation Act, R.S.C. 1985, c.I-21, and specifically section 12, which provides that every enactment is deemed remedial and is to be given such fair, large and liberal construction and interpretation as best ensures the attainment of its objectives. He also relies on various Hansard excerpts for the House of Commons and Senate, specifically the comments of the Honourable Senator Joseph A. Day as contained in Volume 142, Issue 37 (February 17, 2005).
[27] The applicant claims that Johnson & Johnson Inc. et al. v. Arterial Vascular Engineering Canada Inc. et al. (2006), 351 N.R. 87 (F.C.A.) (Johnson) provides further support for his position. He points to the comments at paragraphs 5, 6, 8 and 10 and claims that the court’s reasoning establishes that subsection 78.6(1) operates retroactively to establish a deemed date of payment with retroactive effect.
[28] The projected result of the applicant’s submissions is that the '102 patent application “died” on February 27, 1998. On that date, the reinstatement and maintenance fees in relation to the patent application were paid as a small entity. However, because the applicant filed initially (on September 25, 1995) as a large entity, the fees ought to have been paid as a large entity throughout. Dutch Industries applies retrospectively and, by operation of law, the patent application died on February 27, 1998 as a result of Dutch Industries. Subsection 78.6 was enacted specifically for the purpose of remedying the effect of Dutch Industries. Therefore, when the applicant tendered the payment of fees, subsection 78.6 was activated and the Commissioner was wrong not to reinstate the patent application.
[29] With respect, the applicant’s argument is not sustainable because he cannot bring himself within the purview of subsection 78.6(1). The real question to be answered is whether section 78.6 permits a remedy for non-payment of fees. I conclude that, properly construed, subsection 78.6, a transitional provision, does not provide a remedy for non-payment of fees. It follows that the applicant cannot benefit from it.
[30] The Supreme Court of Canada has repeatedly articulated the proper approach to statutory interpretation. In R. v. Jarvis, [2002] 3 S.C.R. 757, at paragraph 77, the court directed that “one is to seek the intent of Parliament by reading the words of the provision in context and according to their grammatical and ordinary sense, harmoniously with the scheme and the object of the statute”. The stated principle was supported by specific reference to the Interpretation Act, Bell ExpressVu Limited Partnership v. Rex, [2002] 2 S.C.R. 559; Rizzo & Rizzo Shoes Ltd. (Re.), [1998] 1 S.C.R. 27; R. v. Gladue, [1999] 1 S.C.R. 688; E.A. Driedger, Construction of Statutes (2nd ed. 1983) at p. 87. The approach was confirmed again in Medovarski v. Canada (Minister of Citizenship and Immigration), [2005] 2 S.C.R. 539 where, at paragraph 15, the Chief Justice cautioned that because statutory interpretation always entails a search for the intention of the legislator, where statutory purpose is relevant to a transitional provision, it should be considered.
[31] This search for parliamentary intent constitutes an exercise in ascertaining, in accordance with the noted principle, what Parliament set out to accomplish. It is not an exercise in adopting a construction that the parties, or the court, might prefer when the intent of Parliament is obvious.
[32] It is evident that section 78.6, on its face and in accordance with Parliament’s intent, was enacted to remedy the harsh effects of the Dutch Industries decision. As noted, the applicant claims that Dutch Industries applies to him retrospectively because on February 27, 1998, he began making payments as a small entity. The application died on that date because it was initially filed in September of 1995 as a large entity. I do not disagree with that statement. However, if the applicant had continued to pay small entity maintenance fees, albeit in error (as a result of Dutch Industries), the applicant would come within the purview of section 78.6. The applicant did not make payments. When maintenance fees were due in March of 2001, no fees were paid and no request for reinstatement was made within the prescribed 12-month period. In fact, the applicant did not attempt to pay any fees with respect to the '102 patent application until November 16, 2004.
[33] Dutch Industries speaks to the date upon which entity status is determined. It does not address, nor does it purport to address, patent applications that were abandoned for non-payment of fees.
[34] The wording of subsection 78.6(1) is not ambiguous. It, as well as the Hansard excerpts referred to by the applicant, demonstrate that Parliament intended to provide relief to patent holders and applicants who had unknowingly, but in good faith, made deficient payments on maintenance fees in error. Those individuals were caught by the “harsh effects” of the Dutch Industries decision. The transitional provision was enacted to allow those individuals a window (one year) to “top-up” their payments in order to bring their patents and applications into good standing. For ease of reference, section 78.6 is reproduced again.
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78.6 (1) If, before the day on which this section comes into force, a person has paid a prescribed fee applicable to a small entity, within the meaning of the Patent Rules as they read at the time of payment, but should have paid the prescribed fee applicable to an entity other than a small entity and a payment equivalent to the difference between the two amounts is submitted to the Commissioner in accordance with subsection (2) either before or no later than twelve months after that day, the payment is deemed to have been paid on the day on which the prescribed fee was paid, regardless of whether an action or other proceeding relating to the patent or patent application in respect of which the fee was payable has been commenced or decided. [Emphasis mine]
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78.6 (1) Si, avant l’entrée en vigueur du présent article, une personne a payé la taxe réglementaire relative à une petite entité, au sens des Règles sur les brevets dans leur version applicable à la date du paiement, alors qu’elle aurait dû payer celle relative à une entité autre qu’une petite entité, et qu’elle verse la différence au commissaire aux brevets en conformité avec le paragraphe (2), avant la date d’entrée en vigueur du présent article ou au plus tard douze mois après cette date, le versement est réputé avoir été fait à la date du paiement de la taxe réglementaire, indépendamment de toute instance ou autre procédure engagée à l’égard du brevet ou de la demande de brevet qui fait l’objet de la taxe ou de toute décision en découlant.
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[35] The applicant claims to have submitted the payments before the day on which the section came into force. That may well be so. However, the fact remains that the payment must have been in accordance with the Patent Rules, specifically those relating to the timing of the payments.
[36] The Hansard excerpt of Senator Day’s comments is equally telling. After providing the background regarding Dutch Industries, Senator Day stated:
In other words, if an application for a patent is filed as a small entity, the owner of the patent will continue to pay the fees payable by a small entity as long as the patent remains in effect.
Honourable senators, it is estimated that about 7,000 patents and applications for patents are threatened by this decision. These patents could be declared invalid on the grounds that the amount of some fees paid do not correspond to the appropriate status of the entity.
Without the technical amendments in this bill, honourable senators, there is no possibility for applicants or owners of patents to correct this situation. Without this bill, they cannot maintain their patent rights by means of a corrective payment.
Bill C-29 provides for a period of 12 months during which applicants and owner of patents affected by the Dutch Industries decision could legally make any corrective payments and thus maintain their rights.
[Emphasis mine]
[37] Similarly, in Johnson, the Federal Court of Appeal, at paragraph 5, stated that the “legal effect of subsection 78.6(1) is that the top-up payments made for the patents in issue…must be treated for the purposes of the Patent Act as though they had been made on the date of the original deficient payments."
[38] If I am wrong in this respect and the language of subsection 78.6(1) can be seen to be ambiguous, then the clear intent of Parliament removes any doubt as to its meaning. In short, the relief afforded by section 78.6 is premised upon the payment of fees. The applicant seeks to apply the section to forgive his non-payment of fees. Section 78.6 does not provide a remedy for the failure to make payments.
[39] Regarding the applicant’s argument that, in the face of Dutch Industries, a person would not make payments knowing that they were “illegal” and to do so would be akin to a fraud, I fail to see the wisdom of that logic. Dutch Industries had not been decided when the applicant failed to pay the maintenance fees.
[40] For the foregoing reasons, the application for judicial review with respect to T-527-06 must be dismissed as will the applications for judicial review with respect to T-1836-06 and T-526-06.
VII. The '707 Patent
[41] The legal arguments regarding the '707 patent application are identical to those with respect to the '102 patent application. It necessarily follows that the applications for judicial review in relation to the '707 patent application must also be dismissed. However, in my view, the applicant could not get to the stage where those arguments could even be considered with respect to the '707 patent application. For completeness, I will briefly address the inherent frailty in the applicant's submission.
[42] The relevant part of the chronological history of the '707 patent application is set out below. Events subsequent to the expiration date for requesting reinstatement are substantially, although not identically, the same as those for the '102 patent application. Therefore, because nothing turns on them, they have not been listed here.
February 4, 1998 The '707 patent application was filed as a small entity. The application fee was paid to CIPO, representing the Commissioner.
February 4, 2000 The second annuity due was paid.
February 4, 2001 The applicant failed to pay the 3rd annuity fee on its due date and the application was deemed abandoned.
March 5, 2001 CIPO issued a notice of abandonment.
February 4, 2002 The 12-month period within which the application could have been reinstated elapsed. No request for reinstatement and no payment was made during the 12-month period.
[43] The applicant urged me to conclude that the '707 patent application “died” (because of Dutch Industries) on the day that it was filed. Ostensibly, this was because the applicant submitted the application as a small entity when he should have submitted it as a large entity in the first instance.
[44] As I informed counsel at the hearing, there is nothing in the record to support the submission that the application should have been submitted as a large entity. There is a document (applicant’s record, volume 1, tab 1) indicating that the application was submitted by “RailRunner Systems Inc." (RailRunner). However, that is the extent of the information. There is no evidence regarding the nature of RailRunner. I do not know, nor do I have any way of knowing, whether it was a small entity or a large entity. Counsel could not point to anything in the record to enlighten
me.
[45] The applicant suggests that I can infer from the correspondence to the Commissioner on February 1, 2006 (authorizing the Commissioner to obtain payment in relation to the '707 patent application as an entity other than a small entity) that the applicant is a large entity and therefore must have been at the date of the initial application. As I informed counsel, it would be totally inappropriate and improper to draw such an inference in the absence of any evidence to support it. Moreover, there is evidence to the contrary in the record in the form of the applicant’s request dated February 25, 1998, claiming small entity status since January 1, 1997.
[46] There was no further submission regarding the death of the '707 patent application because of the retrospective effect of Dutch Industries. Since the legal arguments advanced with respect to the '707 patent application require a foundation upon which to rest, I regard this omission as fatal. However, as I have already noted, the arguments regarding section 78.6 of the Act were to be the same for both patent applications. Those arguments have been rejected. Accordingly, for the foregoing reasons, the application for judicial review with respect to T-569-06 must be dismissed as will the applications for judicial review with respect to T-1837-05 and T-570-06.
[47] The respondent did not request costs and none are awarded.
ORDER
THIS COURT ORDERS THAT the applications for judicial review are dismissed.
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-527-06
STYLE OF CAUSE: HARRY O. WICKS v.
THE COMMISSIONER OF PATENTS
PLACE OF HEARING: Vancouver, BC
DATE OF HEARING: February 20, 2007
REASONS FOR ORDER AND ORDER: LAYDEN-STEVENSON J.
APPEARANCES:
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Mr. Aiyaz A. Alibhai Mr. James J.D. Wagner |
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Ms. Banafsheh Sokhansanj
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SOLICITORS OF RECORD:
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MBM Intellectual Property Law Vancouver, BC
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John H. Sims, Q.C Deputy Attorney General of Canada
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