T-381-97
BETWEEN:
BRISTOL-MYERS SQUIBB COMPANY
Applicant
- and -
THE COMMISSIONER OF PATENTS
Respondent
REASONS FOR ORDER
PINARD J.
This is an application for judicial review of a decision of the Commissioner of Patents (the "Commissioner") dated February 7, 1997, wherein the Commissioner rejected the applicant's request pursuant to section 8 of the Patent Act1 (the "Act") for a Certificate of Correction correcting the Petition filed by the applicant in association with the patent application in which there is an omission from the Petition of an additional claim for priority based on U.S. Application No. 07/907,261 filed July 1, 1992.
The following facts are not in issue. The applicant issued a work order on May 10, 1993 in order that the 2,099,211 patent application be filed, claiming priority from the following United States patent applications:
| United States Patent Application 08/029,819 filed March 11, 1993; |
| United States Patent Application 08/006,423 filed January 19, 1993; |
| United States Patent Application 07/907,261 filed July 1, 1992. |
United States Patent Application 08/029,819 is a Continuation-in-Part of United States Patent Application 08/006,423, which is a continuation of United States Patent Application 07/907,261.
Such priority claims were to be made pursuant to section 28 of the Patent Act, R.S.C. 1985, c. P-4, c. 33 (3rd Supp.), s. 10, then in force, on the basis that the applicant had previously filed an application for the same invention in another country that affords Canadian citizens reciprocal treaty or convention rights, and that the application in Canada was filed within twelve months after the date the first application was filed. As such, the 2,099,211 patent application in Canada has the same force and effect as an application filed on the date the first application was filed in another country.
United States Patent Application 08/006,423 does not contain new matter since it is a continuation of the prior U.S. application, and therefore did not need to form part of the priority claim. The Petition for the patent was prepared and the claim for priority was made therein at the time of filing the Canadian patent application. However, in preparing the Petition for the patent, U.S. Patent Application 07/907,261 was inadvertently deleted from the claim for priority rather than U.S. Patent Application 08/006,423.
In compliance with subsection 34(1) of the Act then in force, the 2,099,211 patent application included a written disclosure. Page 2 of the disclosure (specification) contains the following statement:
| This application is a continuation-in-part application of Serial No. 08/006,423, filed January 19, 1993, which is herein incorporated by reference in its entirety and which in turn is a continuation application of Serial No. 07/907,261, filed July 1, 1992. |
The patent application, together with the Petition including the request for priority, were filed on June 25, 1993. The patent application was laid open for public inspection in Canada on July 20, 1994.
The error in the priority date claim was first detected in December 1996, and a Request for a Certificate of Correction under section 8 of the Act and rule 352 of the Rules Respecting the Patent Act, SOR/96-423 (the "Rules") was submitted to the Patent Office on December 17, 1996.
Two other patent applications containing similar inventive subject matter were filed approximately six months after Bristol-Myers' application, and during the latter's statutory period of confidentiality:
| i. Canadian Application 2,150,944, filed December 7, 1993 by Rhone-Poulenc Rorer S.A., claiming priority from France application 92/14813 filed December 9, 1992 ("Rhone-Poulenc application"); |
| ii. Canadian Application 2,149,021, filed December 13, 1993 by the Upjohn Company, claiming priority from U.S. application 07/990,579 filed December 15, 1992 ("Upjohn application"). |
* * * * * * * * * * * *
In her decision, the Commissioner stated:
| It is accepted that in the present case the error is clerical in nature. However, an error whose correction at the present time would pre-date a priority request by some six months for an application filed in 1993 cannot be accepted for the following reasons: |
| - according to the Rules applicable at the time of filing [New Rule 142],3 the request for priority had to be submitted within 6 months of the filing date; |
| - the application has been opened to public inspection based on the date of the priority request and the accuracy and reliability of the information of the opened document is an essential part of that procedure; |
| - following the opening of the patent application to public inspection, third parties may have relied on the information appearing in the application and could be prejudiced by the addition of a part to the priority claim. |
| In reaching this decision I have kept in mind the basic purposes of the procedures for claiming priority as well as the basic purposes for establishing the procedures to open applications to the inspection of the public. |
Section 8 of the Act was interpreted before by this Court in Bayer Aktiengesellschaft v. Commissioner of Patents (1980), 53 C.P.R. (2d) 70. At page 74 of that decision, Mahoney J. stated:
| Section 8 provides that "clerical errors . . . may be corrected by certificate under the authority of the Commissioner". "May" is permissive; it is not directory nor mandatory. There is nothing in the circumstances contemplated by s. 8 that would lead me to conclude that the respondent is obliged to issue a certificate of correction once he determines that what is sought to be corrected is a clerical error. It is in his discretion to do so. The Court cannot substitute its discretion for his. Mandamus does not lie to require the respondent to issue a certificate under s. 8 of the Patent Act.4 |
Thus, even where an error is accepted as clerical in nature, the Commissioner of Patents' decision whether to correct it is discretionary. In my view, this interpretation remains valid, notwithstanding the subsequent adoption of rule 35 in replacement of rule 1415. This change in the Rules, in the context of section 8 of the Act, does nothing more than to formally allow "the applicant" to request the correction of obvious clerical errors in the specified documents. Such a request made by the applicant under rule 35, however, remains subject to the approval of the Commissioner as edicted in section 8 of the Act.
The Commissioner's decision, therefore, was discretionary. In Maple Lodge Farms Limited v. Government of Canada et al., [1982] 2 S.C.R. 2, at pages 7 and 8, McIntyre J., for the Supreme Court of Canada, stated:
| . . . It is, as well, a clearly-established rule that the courts should not interfere with the exercise of a discretion by a statutory authority merely because the court might have exercised the discretion in a different manner had it been charged with that responsibility. Where the statutory discretion has been exercised in good faith and, where required, in accordance with the principles of natural justice, and where reliance has not been placed upon considerations irrelevant or extraneous to the statutory purpose, the courts should not interfere. . . . |
Later, the Federal Court of Appeal, in Canadian Association of Regulated Importers v. Canada, [1994] 2 F.C. 247, at page 260, expressed the following view:
| It is not fatal to a policy decision that some irrelevant factors be taken into account; it is only when such a decision is based entirely or predominantly on irrelevant factors that it is impeachable. It is not up to the Court to pass judgment on whether a decision is "wise or unwise." (See Cantwell v. Canada (Minister of the Environment) (1991), 6 C.E.L.R. (N.S.) 16 (F.C.T.D.), at page 46 per MacKay J.) This Court, because these matters involve "value judgments", is not to "sit as an appellate body determining whether the initiating department made the correct decision." (See Strayer J. in Vancouver Island Peace Society v. Canada, [1992] 3 F.C. 42 (T.D.), at page 49.) |
| [. . .] |
| In other words, for a court to interfere, there must be reliance primarily on irrelevant matters as well as an absence of evidence supporting the Minister's decision. |
Furthermore, I am of the opinion that in granting this general discretion to authorize the correction of clerical errors under section 8 of the Act, Parliament clearly signalled a reliance on the specialized expertise of the Commissioner. Accordingly, the Commissioner's determination of the factors to be taken into account in exercising her discretion ought to be given curial deference, and should not be overturned unless unreasonable (see Pezim v. B.C. (Superintendent of Brokers) (1994), 114 D.L.R. (4th) 385, at 404-406).
In the case at bar, the good faith of the Commissioner is not at issue and it is my opinion that she carefully considered the evidence supporting her decision. Upon review of the factors expressly taken into account in her decision, I am satisfied, although the alleged prejudice to third parties may be speculative, that it was reasonable for the Commissioner to exercise her discretion as she did.
Consequently, the application for judicial review is dismissed. There will be no costs, as they have not been sought by the respondent.
OTTAWA, Ontario
October 24, 1997
JUDGE
__________________
1 R.S.C. 1985, c. P-4, as amended. Section 8 of the Act reads as follows: Clerical errors in any instrument of record in the Patent Office do not invalidate the instrument, but they may be corrected under the authority of the Commissioner.
2 Rule 35. Clerical errors in any document relating to an application, other than a specification, a drawing or a document effecting a transfer or a change of name, which are due to the fact that something other than what was obviously intended was written, may be corrected by the applicant.
3 Rule 142. (1) Subject to section 65, for the purposes of subsection 28.4(2) of the Act in respect of an application (in this subsection referred to as the "subject application"), [. . .] (b) a request for priority must be made before the expiry of the six-month period after the filing date of the subject application; and
4 At the time of that decision, section 8 was essentially the same and read: "Clerical errors in any instrument of record in the Patent Office shall not be construed as invalidating the instrument, but, when discovered, they may be corrected by certificate under the authority of the Commissioner."
5 Rule 141. Any document relating to an application, other than a specification or drawing, may be corrected by the Commissioner if he is satisfied that the document contains a clerical error.