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PATENTS - Application - Infringement - Defences to infringement - Procedure - Appeals

Thursday, October 26, 2017 @ 8:37 AM  


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Appeal by Apotex from refusal of partial summary judgment. In 1989, the respondents, the Pfizer companies, filed an application in respect of the 132 Patent. The respondents did not claim small entity status, entitling it to a lesser application fee. Instead of paying the large entity fee of $700, the respondents paid the small entity fee of $300. In 1997, the respondents subsequently believed their error was in the amount of $50 and remitted it as payment. The Commissioner issued the 132 Patent in 1997. The Patent Office erroneously indicated that full payment had been received, reflecting large entity status. The respondents otherwise paid all prescribed fees in respect of the application and maintenance of the 132 Patent until its expiration in 2014. In 2013, the parties became involved in Notice of Compliance and infringement proceedings. The appellant submitted that the respondents' failure to pay the proper application fee invalidated the issuance of the 132 Patent. The Federal Court ruled that the failure to pay the proper application fee did not invalidate the 132 Patent. Apotex appealed.

HELD: Appeal dismissed. The ordinary meaning of s. 73 of the Patent Act did not expressly deal with the impact of non-payment of fees upon an issued patent. The purpose of s. 73 of the Patent Act was to provide a tool to the Commissioner to collect fees. The legislative intent was not to provide an alleged patent infringer with a means of declaring a patent void. The context and purpose of s. 27(1) did not mean that any failure to meet any requirement of the Act rendered a patent void. The facts and defaults available to an alleged infringer related to the patentability of the invention. Pre-patent issuance defects in the administrative application process could not be relied upon by an alleged infringer to render a patent void. Such interpretation was consistent with the overall scheme of the current Act, and with prior versions of the Act.

Apotex Inc. v. Pfizer Inc., [2017] F.C.J. No. 915, Federal Court of Appeal, J. Gauthier, D.W. Stratas and R. Boivin JJ.A., October 2, 2017. Digest No. TLD-October232017009