Make Sure You Check Your Junk Folder! Missed Patent Maintenance Fees Causes Loss Of Patent

On February 4, 2025, the Federal Court of Appeal (FCA) issued its decision in Taillefer v. Canada (Attorney General), 2025 FCA 28, upholding a Federal Court (FC) decision dismissing Robert Taillefer’s (the Appellant’s) application for judicial review of the Commissioner of Patents’ (the Commissioner’s) refusal to reinstate Canadian Patent No. 2,690,767  (the 767 Patent) following its expiration in 2020 due to the non-payment of maintenance fees.

The Appellant’s failure to pay the 767 Patent’s maintenance fee was due to an email communication error between the Appellant and his patent agent (the Agent) where, in 2019 and 2020, seven of the Agent’s emails seeking instructions for payment and advising of the consequences for non-payment went to the Appellant’s junk folder. As the Appellant had instructed the Agent to notify him of the maintenance fee deadline and to pay it only upon receipt of specific instructions to do so, the fee went unpaid and the 767 Patent expired. The Appellant only became aware of these emails three months after the expiry of the late fee period.

The Commissioner refused the Appellant’s initial request for reinstatement of the 767 Patent, finding that the Appellant failed to meet the “due care” standard required for reinstatement under the Patent Act. The FC further dismissed the Appellant’s application for judicial review of the Commissioner’s decision, finding the Commissioner’s decision to be reasonable. The matter was subsequently brought to the FCA.

In a brief decision, the FCA dismissed the appeal, finding that it was reasonable for the Commissioner to conclude that due care in these circumstances would have required the (1) Agent to have alternative means of communicating with the Appellant; and (2) Appellant, having retained responsibility to instruct the Agent regarding payment, to put a system in place to monitor and pay the fees.

Summary By: Claire Bettio