Only The Authorized Correspondent Can Communicate With The Canadian Patent Office In Respect of a Patent Application

Published November 23rd, 2011

    In Excelsior Medical Corp. v. Canada (Attorney General), 2011 FCA 303, the Federal Court of Appeal (FCA) confirmed that, in respect of a patent application, the Canadian Intellectual Property Office (CIPO) “can only deal with the applicant’s authorized correspondent” and that “an authorized correspondent only becomes so when the required documents are filed in the Patent Office”, as set out in Section 6(1) of the Patent Rules.

     The Federal Court (FC) had previously found that CIPO’s acceptance of maintenance fees for an application that were paid by a party other than the authorized correspondent had the effect of reinstating an abandoned patent application until the amount was refunded.  However, the FCA did not affirm this.  While the FCA agreed with the FC’s finding that the application was dead (for failing to pay the maintenance within the reinstatement period), the FCA clarified that the “acceptance of maintenance fees, whether within or outside the reinstatement period, from someone other than the applicant’s correspondent does not reinstate an application”.  The FCA reasoned that allowing such a system would create a situation in which CIPO administrative errors could extinguish or create rights “independently of the statutory scheme”.  While the FCA’s position would appear to run contrary to the decision by the FC in Sarnoff Corp. v. Canada (Attorney General), 2008 FC 712, the FCA distinguished on the facts, noting that, in Sarnoff, CIPO had in its possession documentation appointing an associate agent when it accepted the fees from the associate agent.  In refuting the applicant’s arguments, the FCA stated that the appointment of an authorized correspondent extends to both prosecution and maintenance matters. 

    Let this be a lesson to applicants and patentees alike.  When transferring files between firms, be sure to file the necessary documentation to appoint/revoke the authorized correspondent promptly or instruct the previous firm to pay fees or handle correspondence in the interim.  Periodically checking the status of applications/patents will ensure that abandonments do not go unnoticed as CIPO is under no obligation to inform applicants/owners of abandonment.  So, for example, instructing the previous firm to pay all fees for the upcoming quarter and then instructing the new firm to check the status of all applications/patents upon transference will ensure no application/patents are left behind.  The FCA clearly showed no sympathy for a firm’s failure to be appointed the authorized correspondent, stating: “this is simply another in a line of cases where the most elemental precautions were not taken when accepting a patent prosecution mandate”.

    The FCA’s decision, in contrast to prior decisions, is unequivocal.  Communication in respect of a patent application from a party other than the authorized correspondent will not be considered by the courts even if CIPO has already mistakenly accepted it.