M-Systems Flash Disk Pioneers v Canada (Commissioner of Patents)  

M-Systems sought reinstatement of a patent application through judicial review. The application was deemed abandoned because of the applicant’s failure to respond to an examiner’s Office Action by the prescribed deadline. Two notices of abandonment were issued, but were not received by the Applicant. A reinstatement request and a response to one of two requisitions in the outstanding Office Action were filed within the timeline for reinstatement. However, the second requisition was not addressed. A letter paying the next maintenance fee requested that the patent office inform the applicant if the application was not in good standing for any reason. The outstanding requisition was addressed with another request for reinstatement, almost a year later and several months past the timeline for doing so.

The Court held that the result, while unfortunate, could not be remedied by the Court. The Commissioner had not made a decision, nor exercised any statutory power. The consequences of failing to respond to any requisition are mandatory and neither the Commissioner nor the Court has the jurisdiction to modify them. The Applicant’s argument that Patent Rule 29 is unconstitutional and contrary to the rules of natural justice and the right to due process was also rejected.