Federal Court Softens Rules on Paying Patent Maintenance Fees

In a recent decision of Justice Hughes, Sarnoff Corporation v Canada (Attorney General) (2008 FC 712), the Federal Court has tempered the harsh effect of past decisions on patent maintenance fees. In this case, a law firm, as a successor agent, paid maintenance fees on behalf of an applicant. At the time the fees were paid, the Patent Office claimed that it did not have on file a notice appointing the law firm as agent for the applicant, despite the fact that it had accepted the fees. The Patent Office rejected the fees and deemed the patent abandoned. The applicant applied to quash the decision and reinstate the patent. The Federal Court distinguished a number of recent decisions relating to maintenance fees, including the Dutch Industries case (previously reported in ETIPS®, The Dilemma of Unpaid Fees: Dutch Industries Ltd v The Commissioner of Patents, Vol 2, No 14, December 18, 2003) and DBC Marine Safety Sytems Ltd v Canada (2007 FC 1142), on the basis that in those cases, maintenance fees were not paid on time. In the present case, however, the fees were paid on time, and the issue was whether they were paid by the appropriate person. The Court applied the law of agency, holding that the maintenance fees could be paid by any person acting as the legal agent of the applicant, and quashed the decision of the Patent Office. In the alternative, the Court noted that it could have quashed the decision by exercising the equitable remedy of relief against forfeiture, a remedy available where there is a large disparity between the value of what is forfeited and the damage suffered. It remains to be seen whether this test could be applied more generally to save applications from relatively minor breaches of the rules. Summary by: James Kosa