Canada’s Federal Court of Appeal Confirms that a Dead Patent Application Cannot be Revived

In University of Alberta v. Canada (Attorney General), 2018 FCA 36, the Federal Court of Appeal of Canada (FCA) dismissed an appeal by the University of Alberta and Alberta Health Services (Appellants) from the Federal Court (FC) decision dismissing the Appellants’ application for judicial review of three decisions by the Commissioner of Patents (“Commissioner”) regarding Canadian Patent Application No. 2,804,560 (the 560 Application).

The 560 Application was filed on February 1, 2013 but failed to include a declaration that the applicants were the legal representatives of the inventors. The Commissioner sent a Requisition on February 15, 2013 requiring the declaration to be filed by February 1, 2014. The missing declaration was not filed by the deadline, and the Commissioner sent a Notice of Abandonment on March 31, 2014 advising that the 560 Application was deemed abandoned on February 3, 2014 and could be reinstated within 12 months following abandonment. The 560 Application was not reinstated and was listed as “dead” on February 3, 2015.

The Appellants brought an application for judicial review of the Commissioner refusals to correct the patent records to show the 560 Application as being in good standing, apply the maintenance fee payment of January 2, 2016 and advance examination of the 560 Application. The FC found that what the Appellants were really seeking was judicial review of the February 15, 2013 requisition for which the time to file a judicial review had expired. The FC further ruled that, in any event, there was no decision of the Commissioner to review because the 560 Application was “dead” as a matter of law, and the Commissioner had no discretion reinstate it.

Summary By: Lauren Lodenquai