Cipo publishes first determinations related to due care

By Ashley Chu

The Canadian Intellectual Property Office (CIPO) recently published its first determinations regarding due care.

Since the amendments to the Patent Act and Patent Rules came into force on October 30, 2019, applicants and patentees have been required to show due care when:

• requesting reinstatement of an abandoned application due to failure to pay a maintenance fee and the late fee;
• requesting reinstatement of an abandoned application due to failure to request examination within 6 months of the deadline to request and failure to pay the late fee; and
• requesting reversal of the deemed expiry of a patent due to failure to pay a maintenance fee and the late fee.

In determining whether the failure occurred in spite of the due care required by the circumstances having been taken, the Commissioner of Patents (the “Commissioner”) considers whether the applicant/patentee took all measures that a reasonably prudent applicant/patentee would have taken in the circumstances to avoid the failure.
CIPO had previously provided some general circumstances in which the due care standard may be met (e.g., force majeure, unexpected illness, facsimile or software submission failure, docketing system error or isolated human error by assistant). But until now, applicants and patentees did not have any concrete examples of situations where the Commissioner had found that due care had been taken.

Three determinations have been published, all of which relate to a failure to pay maintenance fees due to an isolated human error. In one case, the missed maintenance fee payment was a result of the client’s instructions being misclassified in a docketing system. In the other two cases, a mistake in identifying the correct patent number was inadvertently made.
While each case was decided on its particular set of facts, it appears that at minimum, what is needed to establish due care in cases of human error is a clear and detailed explanation of the circumstances, including:

• how the applicant, patentee or agent chooses, trains, instructs and monitors the work of a reliable, experienced, well trained and supervised employee;
• the number of years the employee has been entrusted with the particular task and whether the employee has performed all his/her duties diligently in the past;
• if an annuity service is used, how the annuity service possesses the technical skills required for the payment of maintenance fees and how the annuity service chooses, instructs and supervises the work of an experienced, well trained and supervised employee; and
• if a docketing system is involved, the measures taken to ensure client instructions are properly classified and how foreseeable limitations of the system are generally monitored and addressed.

Any additional reasons provided by the applicant/patentee should be clearly linked to the failure to pay the maintenance fees. It is also helpful to provide evidence in the form of affidavits by relevant persons, such as the employee and/or the employee’s supervisor.

These cases make it clear that CIPO requires a great level of detail in the reasons and evidence submitted by the applicant/patentee in order to meet the due care standard. However, the process of preparing such documentation is undoubtedly time-consuming and stressful, particularly since there is no guarantee that the Commissioner will make a finding of due care.

This underscores the importance of paying maintenance fees and requesting examination on time, to ensure that the rights of the applicant or patentee are preserved.

For more information on Canadian patent practice, please contact the professionals at Moffat & Co.

Ashley Chu – is an associate with Moffat & Co. Ashley is a lawyer and a registered patent agent.