Executive Summary: Key Legal and Evidentiary Issues

• Failure to pay annual maintenance fees led to the deemed expiry of the patent under section 46 of the Patent Act.

• The appellant relied on a long-standing email communication protocol with his patent agent, which unexpectedly failed.

• The Commissioner of Patents rejected the reinstatement request, finding insufficient evidence of “due care.”

• The Federal Court upheld the decision, applying the reasonableness standard of review.

• On appeal, the Federal Court of Appeal affirmed that the Commissioner’s interpretation of "due care" was consistent with international guidance.

• The absence of backup communication methods or monitoring systems undermined the appellant’s claim of exercising due care.

Facts of the Case

Robert Taillefer held Canadian Patent No. 2,690,767, which required the payment of annual maintenance fees to remain in force. Taillefer had an arrangement with his patent agent to receive reminders via email and would then send instructions for payment. This system had functioned reliably from 2012 to 2019.

However, in 2019 and 2020, eight emails from the agent were diverted to Taillefer’s junk folder. These included four requests for payment instructions and notices warning of the impending expiry of the patent. Unaware of these messages, Taillefer did not provide instructions to pay the fee, and the agent, having received no response, did not proceed with payment. The patent was thus deemed expired in 2020.

When Taillefer later discovered the issue, he applied for reinstatement of the patent. The Commissioner of Patents denied this request, concluding that due care had not been exercised as required under subsection 46(5)(b) of the Patent Act.

Federal Court Review

Taillefer sought judicial review in the Federal Court, arguing that the Commissioner had unreasonably interpreted and applied the "due care" requirement. The court found the Commissioner’s decision reasonable, highlighting that no backup communication system or monitoring mechanism was in place to prevent or catch the failure. It ruled that the appellant bore responsibility for ensuring a reliable method of communication and patent fee monitoring.

Federal Court of Appeal Decision

The Federal Court of Appeal upheld the Federal Court's dismissal of the application. It agreed that the Commissioner had properly interpreted the due care standard in accordance with both the amended Canadian patent legislation and international norms established by the World Intellectual Property Organization (WIPO). The court emphasized that while email communications had historically worked, the absence of alternative systems made the breakdown foreseeable and avoidable.

Ultimately, the appeal was dismissed with costs awarded to the respondent. The court concluded that the failure to maintain adequate safeguards in the patent maintenance process did not meet the standard of due care required to reinstate the expired patent.