Repligen Corporation v. The Attorney General of Canada

This is a second judicial review commenced by Repligen for a second refusal by the Commissioner of Patents (“Commissioner”) to correct errors made in maintenance fee payment documents. In the first judicial review application, the Court determined that the Commissioner did not consider relevant factors in determining whether to make the corrections pursuant to section 8 of the Patent Act.

The Commissioner made a redetermination of the issue and again refused to make the correction. In arranging for a service to pay required maintenance fees, the patent number was incorrectly provided. Maintenance fee payments were then made against the wrong patent, owned by Rolls-Royce PLC, and the Repligen patent lapsed. The Commissioner refused to correct the error, citing concerns that making the correction could negatively affect the rights of others. The first judicial review was commenced in respect of this refusal.  

The Court in this second judicial review noted that the appropriate standard of review is correctness for the interpretation of section 8 of the Patent Act, and the application of the law of the facts involves a review based on reasonableness. The Court determined that the Commissioner should have taken into consideration that Repligen had paid the prescribed maintenance fees, although to the wrong patent. The Court considered that Repligen’s interests were completely discounted by the Commissioner on the basis of a lack of due diligence. The Court indicated that the approach taken by the Commissioner requires a standard of perfection in terms of fee payments, which would render section 8 of the Patent Act unnecessary.

Accordingly, the Court submitted the matter to a different decision maker within the Patent Office, indicating that the Commissioner should take into account the interests of Repligen and Rolls-Royce, as both parties attempted to comply with maintenance fee provisions.