It's not over yet - Patent lapse due to clerical error may yet be saved

July 31, 2012

On July 27, 2012, the Federal Court of Canada - for the second time - quashed a decision of the Commissioner of Patents to refuse to correct a clerical error relating to Repligen Corporation’s Canadian Patent # 1,341,486.

In 2008, Repligen’s patent lapsed due to the inadvertent non-payment of its maintenance fees. Although the fees were sent to the Patent Office under Repligen’s name, they were sent with the wrong patent number. When Repligen’s new patent agents caught the mistake, they requested a correction under section 8 of the Patent Act. Section 8 gives the Commissioner the discretion to correct clerical errors in “any instrument of record in the Patent Office”. Although the Commissioner acknowledged that the error was clerical in nature, she refused to correct it. In 2010, Repligen succeeded in an application for judicial review of the Commissioner’s decision but their request for correction was again refused upon redetermination by the Patent Office.

In the present decision, the Federal Court found that the Commissioner erred by focussing on both Repligen’s lack of due diligence (in failing to detect the error) and on the possibility of prejudice to Rolls-Royce (owner of the patent belonging to the “wrong” number), without balancing these considerations against the impact on Repligen of the loss of the patent. The central issue should rather have been that Repligen intended to maintain its patent rights and continued to pay its fees (despite those fees being misdirected). The Court found that the Commissioner’s exercise of discretion should reasonably reflect the interests of both Repligen and Rolls-Royce, where both attempted to comply with maintenance fee provisions, and should be in keeping with the remedial nature of section 8 of the Patent Act. The matter has again been sent to the Patent Office for redetermination.

For more information, see Repligen Corporation v. Canada (Attorney General)

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