CIPO issues the first ruling under the new patent prosecution due to care standard

The Canadian Intellectual Property Office (CIPO) has released a notice of its first judgment under the new patent prosecution due to care standards. Although due care was determined, it took the Applicant a series of written arguments and affidavit evidence to persuade the Patent Office.

The problem resulted in the emergence of a failed maintenance fee payment during the prosecution of CA 2,862,859. The following facts are derived from the Applicant’s submissions and the Commissioner’s answers, which may be found in the online file wrapper. However, not all supporting papers and communications are accessible online.

Important information 

Without receiving a single examiner’s report, a notice of approval was given for the patent application. To make a modification to the application that would necessitate additional searches by the examiner, it was required to enable the application to be abandoned by failing to pay the final fee under section 32 of the Patent Rules (as they were before October 30, 2019).

The patent application was allowed to expire due to the nonpayment of the final fee. The Applicant had contracted with an annuity business to pay the 2020 maintenance charge and had informed the Canadian representative of this. The Canadian agent removed the payment of the maintenance charge from its docketing system.

Later, the Applicant reversed the maintenance fee payment order and requested that the Canadian agent pay the 2020 maintenance price. This reversal was inadvertently misrepresented in the agent’s docketing system, resulting in the maintenance fee not being paid and the application being abandoned.

Despite the payment of reinstatement and late fees, the application was ruled abandoned for failure to pay the 2020 maintenance cost within six months of the due date.

Affidavit evidence and written arguments

At this stage, the patent applicant cannot reinstate as of right, but must instead demonstrate that the failure to pay the maintenance fee happened despite taking the reasonable care required by the circumstances. As a result, the Applicant presented written arguments and affidavit evidence alleging that the singular human error happened as a result of a convoluted set of events that were unlikely to happen again, namely:

• It is no longer necessary to abandon the application by failing to pay the final fee because amendments to the Patent Act and Rules were made to allow withdrawal of the Notice of Allowance.
• The abandonment caused the Applicant’s annuity service to delete its own docket to pay the maintenance fee.
• The Applicant’s instructions to the Canadian agent to not pay the maintenance fee in favor of the annuity service caused the Canadian agent to delete the docket to pay the maintenance fee
• The COVID-19 pandemic caused the Canadian agent’s office to close and to switch everyone to work from home.
• The administrative staff member who handled the email unintentionally mischaracterized the Applicant’s direction reversing its earlier stance and asking the Canadian agent to pay the maintenance charge in the docketing system. This meant that a new docket to pay the charge was not generated to replace the previously deleted docket.

The Patent Office was not satisfied that this complied with the requirement of due care. The Patent Office takes issue with the evidence submitted eight months after the Request Letter was received, such as failing to explain:

• Whether and how the administrative staff in charge of receiving incoming letters were properly selected, trained, and supervised. Despite the fact that the administrative staff member who made the error had been with the Canadian agent’s company for 18 years, this statement was made.
• The instruction that was provided to the administrative staff member regarding the classification of client instructions and entry of instructions into the docketing system;
• What reasonable and regular supervision was exercised over the work performed by the administrative staff member generally, and specifically in the COVID-19 pandemic, to ensure that classification errors would be avoided or would be identified and addressed;
• The measures are taken to ensure client instructions are properly classified;
• How foreseeable limitations of the mail classification system and entry of instructions into the docketing system are generally monitored and addressed;
• How the docketing system itself is generally satisfactory;
• What quality assurance and monitoring protocols are in place;
• How the misclassification of the client instruction was an isolated event; and
• How the transition to working from home was linked to the failure to pay the fees.

To address the Patent Office’s concerns, the Applicant filed supplementary submissions and affidavit evidence three weeks later. After another five months, the Patent Office answered and reinstated the application.