Date: 19990610
Docket: T-1291-98
BETWEEN:
PFIZER INC.
Applicant
- and -
THE COMMISSIONER OF PATENTS
Respondent
REASONS FOR ORDER
CULLEN, J.:
[1] The applicant seeks judicial review, pursuant to section 18.1 of the Federal Court Act, of the decisions, dated 20 March 1998 and 23 March 1998, sent by the Commissioner of Patents, which stated that its earlier decision, dated 24 February 1998 to reinstate the applicant"s patent application was sent in error, and that the applicant"s letter, dated 10 March 1997, does not qualify as a request for reinstatement, and thus its patent application is deemed abandoned. The applicant seeks a declaration that its patent application, serial number 2,131,371, was reinstated as of 27 January 1998, as confirmed by the Commissioner of Patents" letter dated 24 February 1998, as well as an order quashing the decision of the Commissioner of Patents, dated 23 March 1998.
Background
[2] The applicant, Pfizer Inc. ("Pfizer"), began the national phase in Canada for four Patent Cooperation Treaty patent applications on 1 September 1994. One of those applications, which forms the subject matter of this judicial review application, was given serial number 2,131,371 (the "371 application"). On 10 May 1996, Pfizer instructed its patent agents to abandon the 371 application. On 23 May 1996, Pfizer was told by its agents that abandonment could be achieved by failing to pay the next maintenance fee, which was due on 27 January 1997. An annual maintenance fee is required for an application such as the 371 application and is payable on the anniversary of its international filing date.
[3] On 10 September 1996, the Patent Office sent an office action to Pfizer. At this time, Pfizer did not respond to the office action, as it had been instructed by its patent agents to ignore any office actions in furtherance of its plan to abandon the 371 application.
[4] After the maintenance fee was not paid, the Patent Office issued a Notice of Abandonment on 5 March 1997. Five days later, Pfizer instructed its agents to respond to the September 1996 office action and to continue with the 371 application, instead of abandoning it.
[5] On 27 January 1998, Pfizer submitted maintenance fees to the Patent Office in the amount of $300 for two other patent applications which shared the same international filing date as the 371 application. These applications have the serial numbers 2,132,457 (the "457 application") and 2,131,373 (the "373 application"). By letter, dated 5 February 1998, Pfizer instructed the Patent Office that this $300 should be applied against the 371 application, in order to cover the $100 maintenance fee (for 27 January 1997) and the required reinstatement fee of $200.
[6] On 24 February 1998, the Patent Office issued a Notice of Reinstatement and a Notice of Abandonment in regard to the 371 application. On 2 March 1998, another Notice of Abandonment was issued in regard to the 371 application, and Pfizer"s patent agents petitioned for reinstatement and paid the 27 January 1998 maintenance fee, as well as the required reinstatement fee. On 10 March 1998, a Notice of Reinstatement was issued for the 371 application. However, on 20 March 1998, the Patent Office sent a letter to Pfizer"s agents stating that the 24 February 1998 Notice of Reinstatement had been sent in error, and that the requirements for reinstatement of the 371 patent had not been satisfied. In a letter dated 23 March 1998, the Patent Office stated that the applicant"s letter of 10 March 1997 did not qualify as a request for reinstatement and that the 371 application was considered abandoned as of 27 January 1998 since no request for reinstatement was received by that date.
[7] Finally, on 11 May 1998, the Patent Office issued a Notice of Reinstatement regarding the 371 application. (In view of this action on the part of the Patent Office, I am not clear on why these parties are before the Court regarding the earlier sequence of events, given the present status of the 371 application. In any event both counsel treated it lightly and I have carried on with the matter.)
Applicant"s Position
[8] The applicant submits that there are three issues to be determined in this application for judicial review. First, whether the applicant satisfied the requirements of subsection 73(3) of the Patent Act, R.S.C. 1985, c. P-4. Second, whether the Commissioner of Patents exceeded her jurisdiction by issuing the letter, dated 23 March 1998, which purported to withdraw the 371 application"s reinstatement. And third, whether the Commissioner was functus officio by virtue of her decision, dated 24 February 1998, and therefore not entitled to issue the second letter.
[9] With regard to the issue of reinstatement, the applicant submits that subsection 73(3) sets out three requirements for reinstating an abandoned patent application. The applicant must make a request for reinstatement within the 12 month period following the abandonment; the applicant must take the action that should have been taken in order to avoid the abandonment; and the applicant must pay the prescribed reinstatement fee within the 12 month period following the abandonment.
[10] Before 1 October 1996, reinstatement under the Patent Act required that a petition be presented to the Commissioner by the applicant. Since this date, by amendment, the Patent Act and Patent Rules, SOR/96-423 require the applicant to make a request for reinstatement.
[11] The applicant submits that the 371 application was abandoned upon failure of the applicant to pay the maintenance fee due on 27 January 1997. The applicant argues that it satisfied the first requirement " the request for reinstatement " by responding to the 10 September 1996 office action on 10 March 1997. The applicant argues that it had no other reason to respond to this office action, and thus, its response manifests its intent. The applicant contends that it met the second requirement " taking the action it should have to avoid abandonment " by paying its tardy maintenance fee when it authorized the Patent Office by letter, dated 5 February 1998, to use the $300 fee submitted on 27 January 1998. The balance of this fee"$200"was also used by Pfizer to satisfy the third requirement for reinstatement, viz . paying the prescribed fee of $200 for reinstatement. Thus, Pfizer argues, it met its obligations under section 73(3) for reinstatement. This was confirmed by the Patent Office, Pfizer contends, when it issued a Notice of Reinstatement.
[12] With regard to the second issue, the applicant submits that the Commissioner of Patents lacked the jurisdiction or the statutory power to withdraw the reinstatement accorded to the 371 patent. No provision in either the Patent Act or the Patent Rules allows for such an action. The applicant argues that the Commissioner"s decision, dated 23 March 1998, was ultra vires and thus should be quashed.
[13] The applicant submits that once an application has been reinstated, neither the Patent Act nor the Patent Rules permit the Commissioner to reconsider such a decision. The applicant also contends that a tribunal lacks any inherent power to reconsider its decisions in the absence of express statutory authority. The applicant acknowledges that a decision cannot be reopened unless there was either an error in expressing the manifest intention of the tribunal, or an error in drawing up the decision; however, the applicant argues that no evidence was presented to establish that the Notice of Reinstatement was sent in error, as the letter of 23 March 1998 contends. Thus, the applicant submits, the Commissioner is functus officio.
[14] Finally, the applicant submits that the notices of reinstatement and abandonment are not just mere administrative acts on the part of the Patent Office because they are based on acts done by the applicant, and not on a state of affairs existing by operation of law. The applicant contends that the Notice of Reinstatement is determinative of its rights, whereas mere administrative acts are not determinative of a party"s rights in any final sense. The applicant submits that regardless of whether these notices can be characterized as decisions, they constitute "acts" of the Commissioner of Patents, and are therefore subject to judicial review under section 18.1.
Respondent"s Position
[15] The respondent submits that reinstatement requires a specific request to that effect. It disputes the applicant"s contention that their letter dated 10 March 1997 constituted a request for reinstatement. The respondent argues that nothing in this letter indicates that it is to be considered as such.
[16] The respondent also submits that the legislative scheme does not allow for the exercise of any discretion by the Commissioner with regard to abandonment and reinstatement. The respondent contends that issuing notices of abandonment and reinstatement are merely administrative acts which inform the applicant of the existing state of affairs. The respondent submits that neither notice constitutes a decision made by the Commissioner, and therefore, the Commissioner cannot be considered functus officio after having issued the notice of reinstatement. Thus, according to the respondent, the decision at issue is not subject to review under section 18.1 of the Federal Court Act.
Analysis
[17] The text of the letter dated 20 March 1998 from the Patent Office to the applicant"s patent agents reads:
| Dear Sirs: |
| Please disregard this letter as it was sent in error. I am enclosing a letter of even date dealing with the matter.On February 24, 1998 the Patent Office sent you a Notice of Reinstatement regarding the above captioned application. |
I apologize for any inconvenience that this may have caused.
(Applicant"s Application Record ["AR"], tab 2)
[18] The text of the letter dated 23 March 1998 from the Patent Office to the applicant"s patent agents reads:
| Dear Sirs: |
| This is in response to your letter of February 5, 1998 in which you present an argument that an earlier response dated March 10, 1997 constituted a request for reinstatement of the above captioned application. |
| The application was filed on January 27, 1993 following which the first two maintenance fees were timely paid. However, the third maintenance fee, due on or before January 27, 1997 was not paid. A notice to this effect was dispatched on March 5, 1997. This notice indicated that the application was abandoned pursuant to paragraph 73(1)(c) of the Patent Act and further indicated that the requirements and time limit for reinstatement. |
| Section 73(3) sets out three requirements before an application may be reinstated. An application may be reinstated by (a) making a request for reinstatement, (b) taking the action that should have been taken in order to avoid abandonment"in this case paying the maintenance fee, and, (c) paying the prescribed fee within the prescribed period i.e. $200 before the expiry of the 12 month period after the date of abandonment. |
| In the instant case no request for reinstatement was submitted by January 27, 1998. The applicant relies on a response dated March 10, 1997, this was a response made in reply to an Examiner"s Action dated September 10, 1996. However, this response contains no indication whatsoever that it is a request for reinstatement. |
| The applicant further argues that there is an implication that the response dated March 10, 1997 was a request for reinstatement otherwise there would be "no point in filing a response to an Official Action in an abandoned application". This argument is not persuasive. An application can become abandoned for more than one reason on differing dates, and, as is clear from section 152 of the Patent Rules , there must be a reinstatement for each failure to take an action referred to in subsection 73(1) of the Act. The point of filing a response on March 10, 1997 was to ensure that the application would not become abandoned pursuant to paragraph 73(1)(a) of the Act. |
| Abandonment in itself is not fatal to an application, rather it is a failure to reinstate within the time limit. In fact applicant"s two copending applications viz # 2,131,373 and # 2,132,457 are now abandoned for failure to pay maintenance fees. Furthermore, it is noteworthy that if the Patent Office had been convinced that the requirements for reinstatement had been met in the instant application, the instant application would still be abandoned for failure to pay the fourth maintenance fee by January 27, 1998. |
| No request for reinstatement was received by January 27, 1998, accordingly the application is now dead in the sense that the period for reinstatement has expired. |
(AR, tab 2)
[19] The first, or preliminary, issue to be determined is whether the letters constitute decisions that are subject to review under section 18.1 of the Federal Court Act. That section provides:
| 18.1(1) An application for judicial review may be made by the Attorney General of Canada or by anyone directly affected by the matter in respect of which relief is sought. |
| (2) An application for judicial review in respect of a decision or order of a federal board, commission or other tribunal shall be made within thirty days after the time the decision or order was first communicated by the federal board, commission or other tribunal to the office of the Deputy Attorney General of Canada or to the party directly affected thereby, or within such further time as a judge of the Trial Division may, either before or after the expiration of those thirty days, fix or allow. |
(3) On an application for judicial review, the Trial Division may
| (a) order a federal board, commission or other tribunal to do any act or thing it has unlawfully failed or refused to do or has unreasonably delayed in doing; or |
(b) declare invalid or unlawful, or quash, set aside or set aside and refer back for determination in accordance with such directions as it considers to be appropriate, prohibit or restrain, a decision, order, act or proceeding of a federal board, commission or other tribunal.
[20] In Markevich v. Canada (T-250-98, 19 February 1999), Mr. Justice Evans considered whether a letter concerning unpaid taxes issued by the Revenue Canada office in Richmond, British Columbia was subject to judicial review under section 18.1. In concluding that the letter was indeed subject to judicial review, he held,
| The words "decision or order" are found in subsection 18.1(2) of the Federal Court Act , which provides that an application for judicial review or a "decision or order" must be made within 30 days after the time that the decision or order was first communicated by the decision-maker. In my opinion, this subsection simply provides a limitation period within which an application for judicial review of a decision or order must normally be made. It does not say that only decisions or orders may be the subject of an application for judicial review, nor does it say that administrative action other than decisions or orders are subject to the 30 days" limitation period: Krause v. The Queen (F.C.A.; A-135-98; February 8, 1999). |
It seems to me that the permitted subject-matter or an application for judicial review is contained in subsection 18.1(3), which provides that on an application for judicial review the Trial Division may order a federal agency to do any act or thing that it has unlawfully failed or refused to do, or declare invalid or set aside and refer back, prohibit or restrain "a decision, order, act or proceeding of a federal board, commission or other tribunal." The words "act or proceeding" are clearly broad in scope and may include a diverse range of administrative action that does not amount to a "decision or order", such as subordinate legislation, reports or recommendations made pursuant to statutory powers, policy statements, guidelines an operating manuals, or any of the myriad forms that administrative action may take in the delivery of a statutory agency of a public programme: see Krause v. The Queen, supra
| However, in order to qualify as an "act or proceeding" that is subject to judicial review, the administrative action impugned must be an "act or proceeding" of a "federal board, commissionHowever, in order to qualify as an "act or proceeding" that is subject to judicial review, the administrative action impugned must be an "act or proceeding" of a "federal board, commission or tribunal", that is a body or person "having, exercising or purporting to exercise jurisdiction or powers conferred by or under an Act of Parliament" (subsection 2(1) of the Federal Court Act ). |
[21] In the instant case, the letters were issued by the Patent Office pursuant to a statutory power, and were in response to the applicant"s abandonment and subsequent attempted reinstatement of its patent application under the Patent Act . The letters clearly affect the rights and interests of the applicant, and indeed, are determinative in a final sense in that they purport to extinguish the applicant"s patent application. Nor is any further internal appeals process available to the applicant. Accordingly, the letters should be subject to review by this Court.
[22] The next issue to be determined is whether the applicant satisfied the requirements of section 73(3) for reinstatement. That section provides:
73(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.
[23] Prior to 1 October 1996, the Act and Rules required that a request for reinstatement take the form of a petition presented to the Commissioner; however, a subsequent amendment changed this to require only that an applicant make a request for reinstatement, and this is found in the current wording of section 73(3)(a).
[24] The critical point, and certainly the contentious one, is whether the applicant satisfied the first requirement, viz. the request for reinstatement. The letter which the applicant argues constitutes its request for reinstatement briefly states that it is in response to the official action dated September 10, 1996 and requests a particular amendment to the 371 patent application (affidavit of Michael K. Gore, exhibit L). It does not, however, contain an express request that the 371 patent application be reinstated. Nor does it contain any references to abandonment and reinstatement.
[25] The 371 patent application was deemed abandoned by the Patent Office on 27 January 1997 when the applicant failed to pay its annual maintenance fee. At that point, the clock started ticking on the 12 month period for compliance with the reinstatement requirements set out in section 73(3).
[26] What was the state of affairs 12 months later? The January 1997 maintenance fee remained outstanding, the subsequent maintenance fee for 27 January 1998 was unpaid, and a letter dated 10 March 1997 from the applicant"s patent agents in response to the Patent Office"s letter of 10 September 1996 had requested certain amendments to the 371 application.
[27] On 5 February 1998, past the 12 month period, the patent agents instructed the Patent Office to use monies previously paid for other patent applications to satisfy the outstanding maintenance fee due 27 January 1997 and the reinstatement fee. However, the maintenance fee due 27 January 1998 remains outstanding at this point. A Notice of Reinstatement is issued, and a Notice of Abandonment is issued, presumably in response to the applicant"s failure to pay the latest maintenance fee.
[28] On 2 March 1998, the applicant"s patent agents specifically petition for reinstatement, and include the overdue maintenance fee and the reinstatement fee (affidavit of Michael K. Gore, exhibit S). A Notice of Reinstatement follows one week later.
[29] In light of the applicant"s patent agents" letter of 2 March 1998, which specifically requests reinstatement (albeit in the language of petitioning), the earlier letter of 10 March 1997 cannot be read as a similar request for reinstatement. The Patent Act requires that a request for reinstatement be made. This implies something be asked for, which is an overt act in itself. The letter is not capable of being construed as a request for reinstatement"while it certainly contains a request, per se , it requests an amendment to the application itself and fails to deal in any way with the issue of reinstatement, unlike the later letter of 2 March 1998.
[30] Notwithstanding this lapse and apparent failure to satisfy the requirements of section 73(3), the Patent Office issued a Notice of Reinstatement on 24 February 1998. Nothing in either the Patent Act or Patent Rules provides for the withdrawal or retraction of a Notice of Reinstatement.
[31] Tribunals have limited post-decision powers that allow for reconsideration in very narrow circumstances. These include, inter alia, instances where a party was not notified of the proceeding, required procedure was not followed, or clerical errors. Aside from such circumstances, a tribunal is considered functus officio once a decision has been rendered.
[32] In the instant case, the Notice of Reinstatement was sent to the applicant, and the applicant adjusted its affairs on the basis that its 371 application was reinstated and being processed through the Patent Office. Nothing in the Act or Rules permits the Patent Office to retract such a notice, and until or unless the applicant abandons its application, the Notice of Reinstatement should govern.
Ottawa, Ontario
June 10, 1999. B. Cullen
J.F.C.C.