A Correspondent is Authorized When CIPO Receives an Appointment of Agent
Unicrop Ltd. v. Attorney General of Canada, 2010 FC 61 (Boivin, J.)

January 20, 2010

Marguerite Ethier for the Applicant, Unicrop Ltd. (“Unicorp”)
Marlon Miller for the Respondent, Attorney General of Canada

Unicrop brought an application for judicial review of a decision of the Commissioner of Patents who found Canadian Patent Application No. 2,531,185 completely abandoned as of July 5, 2008, and communicated to the Applicant by letter dated October 17, 2008.

On July 5, 2007 Unicrop failed to pay a maintenance fee on time. On June 3, 2008, Unicrop’s new agent attempted to reinstate the application by way of two letters. The first letter paid both the reinstatement fee and the missed maintenance fee payment. The second letter paid the upcoming July 5, 2008 maintenance fee payment. Neither letter included a revocation and appointment of agent.

CIPO sent a letter to the new agent on July 23, 2008 indicating that it had receipt of the maintenance fee payment, but that only the authorized correspondent could pay the reinstatement and maintenance fees and according to CIPO, the new agent was not the authorized correspondent.

Unicrop argued that it had in fact appointed the new agent through a signed Appointment of Patent Agent/Representative appointing the new firm, though this Appointment was only delivered to CIPO on August 12, 2008 after the July 5, 2008 deadline to a clerical letter.

Justice Boivin held that CIPO cannot be deemed to have knowledge of the Appointment and since the Appointment was not received by July 5, 2008 it was reasonable for the Commissioner to refuse payment of the reinstatement and maintenance fees.

The Court further held that Section 3.1(1) of the Patent Rules, which states that the Commissioner shall provide a notice if the criteria of the subsection are met, does not act to require notice so as to extend the deadline for paying the fees and requesting reinstatement. The new firm was not the authorized correspondent under Section 6(1) of the Patent Rules and accordingly it could not pay the maintenance and reinstatement fees.

Finally, the equitable doctrine of relief does not apply as Unicrop failed to comply with the statue and there is no error or mistake on the part of CIPO.

The Court did not make an order as to costs.

By: Etienne de Villiers, Dimock Stratton LLP