Commissioner Decision Unreasonable in Refusing National Entry for Deficient Fee Payment

Karolinska Institutet Innovations AB v. AG, 2013 FC 715

Due to a docketing error at the firm of the agent charged with requesting national phase entry of two patent applications, the incorrect fee was paid at the time of entry. The agent paid only the filing fee and not the additional fee required with late filing. The Commissioner of Patents (the Commissioner) refused national entry as a result. The applicant brought a judicial review of this decision.

The Court found that the standard of review was one of reasonableness because the question to be determined was whether the Commissioner properly applied Rule 3.1(1) and (2) of the Patent Rules in refusing national entry, not what the Rule means. The Court found that the Commissioner was required to address “whether the Canadian firm filing the application had made, as stipulated by subsection 3(1) of the Patent Rules, a ‘…clear but unsuccessful attempt…’ to pay the required fee.”

The Court found that the errors in the letter from CIPO made “the decision lacking in justification, transparency and intelligibility.” The Court also found that the Commissioner’s decision was unreasonable on the basis that it misapplied

Rule 3.1 to the situation. The Court ordered that the Commissioner’s decision was set aside and the Commissioner is required to issue a notice requiring payment of the deficient fees.