Earlier this year the Federal Court issued its decision in Excelsior Medical Corporation v Attorney General of Canada (for further details please see "Fee refund derails applicant's attempt to reinstate patent application"). A Patent Cooperation Treaty application entered the national phase in Canada on December 2 2002, naming Vasca Inc as the applicant. The national phase application was filed by a first Canadian firm, which was appointed as Vasca's patent agent of record in Canada. In September 2006 Vasca assigned the patent application to Excelsior Medical Corporation. At the time of the assignment, the patent application was provisionally abandoned for failure to pay an annual maintenance fee; the deadline for reinstating the provisionally abandoned application was July 10 2007.

Subsequent to the assignment, in March 2007 Excelsior selected a second law firm to prosecute its patent application and the file was transferred from the first firm to the second firm. On July 9 2007 – the day before the reinstatement deadline – the second firm requested reinstatement of the application and paid the required maintenance fees and reinstatement fee. However, at that time the second firm had not appointed itself as the patent agent of record, despite the fact that the Canadian Patent Rules stipulate that only the patent agent of record can pay a maintenance fee. Initially, the Canadian Intellectual Property Office (CIPO) took the position that the application had been reinstated. However, CIPO shortly reversed its decision and indicated that reinstatement was refused because the reinstatement request and fees had not been paid by the patent agent of record, and that the application was therefore irrevocably abandoned. Subsequently, at the second firm's request, the reinstatement fees were refunded to the second firm.

In considering this scenario, the Federal Court held that the initial acceptance of the reinstatement request by CIPO reinstated the application but that the subsequent refund of the fees nullified the reinstatement, leaving a patent application that was irrevocably abandoned.

On appeal, the Federal Court of Appeal affirmed the conclusion of irrevocable abandonment, albeit for different reasons. The court followed its own decision in Unicrop Ltd v Canada (Attorney General)(1), which held that CIPO can deal only with the applicant's authorised correspondent, namely the patent agent of record. Contrary to the decision of the Federal Court, the court of appeal held that CIPO's initial acceptance of the reinstatement request did not create rights and its subsequent refund of the fees did not extinguish these rights. Rather, the reinstatement request was ineffective from the outset, regardless of CIPO's erroneous initial acceptance of the request. The Federal Court of Appeal held that this fact scenario was simply another in a line of cases "where the most elemental precautions were not taken when accepting a patent prosecution mandate".

This case highlights the importance of ensuring that transfers of patent files between patent firms include the filing of the requisite revocation and appointment documentation at the Patent Office.

For further information on this topic please contact Jeffrey D Morton at Smart & Biggar/Fetherstonhaugh by telephone (+1 604 682 7780), fax (+1 604 682 0274) or email ([email protected]).


(1) 2011 FCA 55.