In the recent case of Repligen Corporation v. Canada (Attorney General) (2012 FC 931), the Federal Court granted a second application for judicial review of a decision made by the Commissioner of Patents. This decision provides greater guidance as to the factors that should be considered when exercising discretion to correct a clerical error under Section 8 of the Patent Act. In this case, the Federal Court overturned the Commissioner's refusal to correct the inversion of two digits of the Applicant's patent number, which resulted in the loss of the Applicant's patent.

As a result of the digit inversion, the Applicant's patent lapsed in July 2008 due to non-payment of the prescribed fees. Upon discovery of the error, Repligen filed a request to correct the error and reinstate the patent. While the Commissioner acknowledged that the inversion of the patent number digits was clerical in nature, she refused to fulfill the request on the basis that third parties may have relied on publicly available information indicating that the patent had lapsed. In 2010, the Applicant successfully brought an application for judicial review of the Commissioner's decision (2010 FC 1288). In that case, the Federal Court found, among others, that the Commissioner had failed to adequately consider the impact of the loss of the patent on Repligen, or the fact that Repligen had made payments in accordance with the due dates. Instead, the Commissioner focused on the Applicant's delay in seeking correction and on the inverted digits. Additionally, it was found that the Commissioner failed to properly appreciate the remedial powers available under section 8, and did not balance all of the relevant factors before deciding whether to exercise these powers.

Following the 2010 decision, the Commissioner reconsidered Repligen's request, but refused to act yet again. In addition to the previous reasons provided, the Commissioner found that the Applicant had not been sufficiently diligent in ensuring proper payment. The Applicant contested this second refusal by the Commissioner to correct the clerical error.

In this case, the Court affirmed that the Commissioner has the discretion to determine whether to correct clerical errors, and then focused on whether the Commissioner reasonably chose not to exercise that discretion. The Court acknowledged that maintenance fee provisions are generally applied in a strict manner and that, while Repligen's role cannot be ignored, the Patent Office must still consider all relevant factors including the impact of the loss of the patent and the fact that payments had been made. These issues cannot be discounted solely on the basis of a lack of diligence. The Court was critical of the Commissioner's decision, which suggested that the standard to be applied is one of perfection. If that was the standard, then section 8 would completely lack purpose.

Ultimately, the application was allowed and the issue was remitted back to the Patent Office, albeit to a different decision maker.