Blair v. Canada (Attorney General)

Blair v. Canada (Attorney General)
Court (s) Database
Federal Court Decisions
Date
2014-09-10
Neutral citation
2014 FC 861
File numbers
T-1745-12
Decision Content
Date: 20140910
Docket: T-1745-12
Citation: 2014 FC 861
Ottawa, Ontario, September 10, 2014
PRESENT: The Honourable Madam Justice Strickland
BETWEEN:
SCOTT BLAIR
Appellant
and
ATTORNEY GENERAL OF CANADA
Respondent
JUDGMENT AND REASONS
[1] This is an appeal from a decision of the Commissioner of Patents (Commissioner) dated March 21, 2012. The Commissioner refused to grant a patent as requested in Canadian Patent Application Serial No. 2,286,794 (Patent Application) for the invention entitled “SUBWAY TV MEDIA SYSTEM” on the ground of obviousness. The appeal is brought pursuant to s. 41 of the Patent Act, RSC 1985, c P-4 (Act).
Factual Background [2] As a preliminary point, all references to the Respondent in this decision are to the Attorney General of Canada (AGC). As addressed below, the Commissioner had also been named as a respondent to this appeal by the Appellant. The AGC brought a preliminary motion seeking an order removing the Commissioner as a respondent which has been granted as part of this judgment.
[3] The present appeal has a long procedural history including two prior decisions of this Court pertaining to the Patent Application. In one of these, Blair v Attorney General of Canada and the Commissioner of Patents, 2010 FC 227 [Blair 2], Justice Mactavish set out the history of this matter to that point in time, much of which is adopted below.
[4] The Appellant, the inventor, filed the Patent Application on May 6, 1998. The application claimed priority from a patent application (No 60/045, 811) filed in the United States on May 7, 1997. It is not disputed that May 7, 1997 is the date to be utilized in assessing whether the invention claimed was obvious.
Construction of the Claims [5] As noted above, the proposed invention is entitled “SUBWAY TV MEDIA SYSTEM”. It relates to video display systems mounted in a specified location on mass transit subway cars. The abstract describes it as follows:
A television system for subway cars (10) includes a plurality of TV monitors (22) mounted at intervals along the cars (10), at the junction of the sidewall and the ceiling, and a central video signal source unit (23) such as a video tape player, video disk player, computer-based digital video recorder or television receiver, connected to the video monitors (22). Programs of short duration, e.g. 5-15 minutes, matching the average length of a subway ride, and comprising advertising messages, news bytes and the like are played and displayed in the monitors repeatedly during the subway ride.
[6] The claims in issue are, with Claim 1 being the primary claim:
1. A subway car for mass transportation including longitudinal opposed sidewalls, a ceiling adjoining the sidewalls, a video display system comprising a plurality of video display monitors each having a video screen, and a video signal source unit operatively connected to said monitors, said monitors being spaced along the length of the car on opposed sides thereof, each of said monitor being mounted at the junction of the sidewall and ceiling, with the screen of the monitor substantially flush with the adjacent wall surface structure of the car, and directed obliquely downwardly toward the car seats, so that each video screen is readily visible to passengers in the subway car.
2. The subway car of claim 1 wherein the video signal source unit comprises a video tape player, a video disc player or computer based digital video recorder.
3. The subway car of claim 1 or claim 2 wherein the video monitors include LCD screens.
4. The subway car of claim 1, claim 2, or claim 3 including a self-contained wiring cabling system connected the video monitors to the video signal source unit.
5. The subway car of claim 1, claim 2, claim 3 or claim 4 including a rigid transparent unit overlying the screen of each respective monitor, and shaped to coincide with the shape of the internal wall of the subway car at the location of mounting.
6. The subway car of claim 5 wherein the rigid transparent unit is concavely curved so as to blend as a continuum with the internal walls of the subway car at the location of mounting.
[7] The Appellant put forth seven essential elements to claim 1 which were accepted as the correct construction by Justice Mactavish in Blair 2, above, at paras 59-60:
1. a subway car for mass transportation including longitudinal opposed sidewalls, a ceiling adjoining the sidewalls (“subway car”);
2. a video display system comprising a plurality of video display monitors each having a video screen (“multiple monitors”);
3. a video signal source unit operatively connected to said monitors (“video source”);
4. said monitors being spaced along the length of the car on opposed sides thereof (“spaced monitors”);
5. each of said monitors being mounted at the junction of the sidewall and ceiling (“wall-ceiling junction placement”);
6. with the screen of the monitor substantially flush with the adjacent wall surface structure of the car (“flush mounted”); and,
7. directly obliquely downwardly toward the car seats, so that each video screen is readily visible to passengers in the subway car (“angled for viewership”).
Objections and Proceedings [8] During the initial prosecution of the Patent Application at the Patent Office, several office actions were issued by the patent examiner that rejected all of the claims on the basis of obviousness pursuant to s. 28.3 of the Act, being that the subject-matter defined by a claim must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to the information set out in s. 28.3(a) and (b).
[9] The Appellant attempted to overcome the examiner’s objections to his application including by amending his claims to those as set out above and providing letters from individuals who claimed to have expertise in various aspects of the transportation industry, Dermot P. Gillespie (Gillespie), Van Wilkins (Wilkins) and Jim Berry (Berry).
First Decision of the Commissioner of Patents [10] On October 21, 2002, the patent examiner issued a final action refusing all of the claims of the Patent Application. The examiner concluded that the claims would have been obvious on the claim date to a person skilled in the art having regard to the United States Patent No. 5,606,154 issued to Doigan et al. (Doigan); French Patent No. 2,652,701 issued to Comerzan-Sorin (Comerzan-Sorin) and Canadian Patent No. 1,316,253 issued to Tagawa et al. (Tagawa), collectively the prior art, and in light of the common general knowledge in the art.
[11] The Appellant requested an oral hearing before the Patent Appeal Board (PAB) which occurred on November 24, 2004. The PAB found that the Patent Application would have been obvious at the claim date and recommended that the decision in the patent examiner’s final action to reject the application be affirmed. The Commissioner accepted this recommendation on January 13, 2006.
[12] The Appellant appealed the Commissioner’s decision to this Court which was decided by an order of Justice Teitelbaum in Blair v Attorney General of Canada et al in T-1176-06 [Blair 1]). In support of his appeal, the Appellant filed new affidavit evidence from two experts, Wilkins, a journalist in the field of public transportation, and Yvonne Gibson (Gibson), an individual with experience in subway advertising. Both opined that the design of the proposed patent would not have been obvious to them.
[13] Justice Teitelbaum allowed the appeal with respect to the issue of obviousness and the Commissioner’s decision was set aside. He remitted the matter to the Commissioner “for review on the issue of obviousness in light of the fresh evidence filed on this appeal, any further written legal submissions that the appellant may wish to make, and the record previously before the Commissioner of Patents.”
Second Decision of the Commissioner Patents [14] A new panel of the PAB also concluded that the Patent Application would have been obvious as of the claim date and recommended rejecting the application. On October 26, 2007, the Commissioner accepted this recommendation and refused to grant a patent to the Appellant on the ground of obviousness.
[15] The Appellant appealed this decision in Blair 2 and, by her decision dated February 26, 2010, Justice Mactavish rejected the Appellant’s submissions of reasonable apprehension of bias arising, in part, from an alleged failure to comply with Justice Teitelbaum’s direction to consider the Gibson and Wilkins affidavits. However, she found two errors with the decision, being the manner in which the Commissioner treated the evidence contained in the Gibson and Wilkins affidavits, and, in how the Commissioner applied the test for obviousness.
[16] There, the Commissioner had concluded that the subject matter of the claimed invention was not overtly technical and, as a result, found the expert evidence of Gibson and Wilkins to be unnecessary. Justice Mactavish found that, having admitted the affidavits as fresh evidence on the Appellant’s first appeal, Justice Teitelbaum implicitly found this evidence to be probative. Therefore, while the Commissioner could assess the persuasive effect of the evidence, it was not open to her to find the evidence unnecessary. Further, while the Commissioner refers to “the person of ordinary skill in the art” (POSITA), a key element in assessing obviousness, she did not clearly identify who that person was for the purposes of the obviousness analysis. Justice Mactavish accepted the Appellant’s submission, not contested by the Respondent, that the POSITA was a “person familiar with the installation of video systems.”
[17] Justice Mactavish also found that the Commissioner erred in applying the obviousness test by separately considering each element of the claim 1, on its own, in order to determine whether that element was obvious, rather than considering the claim as a whole. She found that it was clear from the description of claim 1 and the seven essential elements of the claim as submitted by the Appellant, which she accepted as the correct construction, that the invention involves a combination of constituent elements, some of which were already known. Further, that where a claimed invention lies in the combination of elements, “it is not permissible to characterize the invention as a series of parts because the invention lies in the fact that they were put together” (Omark Industries (1960) Ltd v Gouger Saw Chain Co, [1965] 1 Ex CR 457, 45 CPR 169 [Omark]).
[18] The effect of those errors was to render the Commissioner’s decision unreasonable.
[19] The Appellant also sought to introduce fresh evidence on the appeal in the form of an affidavit from Richard Morris (Morris) who described himself as a railway and transit signal specialist. Justice Mactavish permitted the filing of this evidence which she found was probative insofar as it demonstrated that no one else has thought to install video screens in subway cars in the location identified by the Appellant. She also found that it directly contradicted the finding in the Commissioner’s first decision that the junction of the ceiling and sidewall of a subway car is the logical and perhaps only available location in which to install a video screen, which finding was also referred to the second decision. Further, the new evidence concerned installation of video systems taking place in other parts of the world just prior to the issuance of the Commissioner’s second decision. She directed the Commissioner to consider this evidence on the question of obviousness.
Commissioner’s Decision Under Appeal [20] On March 21, 2012, a different Commissioner found that the proposed invention was obvious. That decision is the subject of this appeal.
[21] The Commissioner set out the procedural history of the Patent Application along with the findings of Justice Teitelbaum and Justice Mactavish. He also noted that the PAB had identified a difference between the background of the POSITA, as defined in Blair 2, above, and the backgrounds of the Appellant’s experts. The Appellant stated that the skilled person “is a person familiar with the installation of video systems” but the expert affiants had backgrounds in various aspects of the transportation industry or subway advertising. The PAB invited the Appellant to make further submissions on the issue. In response, the Appellant submitted written submissions together with the affidavits of three experts, Gordon Ballantyne (Ballantyne), Robert DiNardo (DiNardo) and Wai Ng (Ng), who claimed expertise in the field of installing video systems.
[22] The Commissioner set out the statutory and objective framework in which obviousness will be assessed, the test for obviousness and applied the four step Sanofi approach to claim 1 and then to the dependant claims 2-6 (Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61, [2008] 3 SCR 265 [Sanofi]). The Commissioner concluded that while the combination of elements as a whole was novel as it was not found within the prior art, it did not involve ingenuity as there was a trend in the art of installing video systems in a wide variety of transportation systems. Given this trend, no inventive ingenuity would have been involved in choosing to install a video system in a subway car. The Commissioner then considered if an inventive step had been involved in designing that particular implementation. In that regard, he found that ordinary skill would have led the POSITA to select the wall-ceiling junction placement of the monitors and ingenuity was not involved. Similarly, the remaining essential elements, when considered for completeness as part of the claimed combination, and when taken in combination with the other claimed elements, did not establish an inventive step.
[23] The Commissioner stated that a conclusion on the obviousness of the combination could not be drawn without ensuring that the totality of the evidence submitted by the Appellant had been considered. In that regard, he addressed the affidavits of the Appellant’s experts in video installation, Ballantyne, Di Nardo and Ng, each of which, having reviewed the cited prior art and the Patent Application, stated that they would not have found the present inventive concept obvious on the relevant date. The Commissioner found, however, that they provided no rationale for their conclusions and did not address the question of whether, in light of the trend shown in the art and the common general knowledge, the inventive concept involved an inventive step. Their submissions did not persuade him that any ingenuity would have been required to arrive at the inventive concept.
[24] The Commissioner found that the evidence of Gillespie and Berry, who were experienced in the field of transportation, and Wilkins who was experienced in rail/transit signalling, and the affidavits submitted subsequent to the final action from Gibson and Morris, experts in communications/marketing/corporate relations and mass transit respectively, served primarily to illustrate that the claimed subject matter differs from the state of the art at the relevant date. The Commissioner agreed that there are differences over the state of the art and that the claimed subject matter is novel.
[25] However, the Commissioner found that evidence of those experts speaks to the novelty of the invention and therefore assisted in the obviousness analysis only to the point of step 3, identifying the differences over the state of the art, and offered little assistance is addressing the final step. Gibson, Wilkins and Morris offered their opinions on the ultimate question of obviousness, each finding the present claim unobvious. However, the Commissioner found, as with the submissions of the three experts on video installation, they offered limited explanations for that conclusion. Their submissions did not persuade him that any ingenuity would have been required to arrive at the inventive concept.
[26] The Commissioner also found that he could have reached the same conclusion from an alternative starting point. Following the general trend in public transportation systems, the Commissioner found that there does not appear to be anything to elevate the present inventive concept above a mere substitution. On Toronto Transit Commission (TTC) subway cars, poster ads are located at the wall-ceiling junction and the Appellant’s primary intended use of the video system is to run advertising messages. The claim, therefore, merely involved substituting video monitors for the poster ads of the prior art.
[27] The Commissioner concluded that to complete the claim 1 analysis he was required to turn to the Janssen “trend in the art” factor and the Beloit test (Janssen-Ortho Inc v Novopharm Ltd, 2007 FCA 217 at para 25, 59 CPR (4th) 116 [Janssen]; Beloit Canada Ltd v Valmet OY (1986), 8 CPR (3d) 289, 64 NR 287 (FCA) [Beloit]). Having done so, he found that claim 1 was obvious as the POSITA would have come directly and without difficulty to the solution taught by it.
[28] The Commissioner noted that the Appellant did not make submissions respecting claims 2-6 and that he appeared to rely on a finding of non-obviousness of claim 1. The Commissioner concluded that the additional elements introduced by claims 2-6, in combination with the essential elements of claim 1, would have been obvious for want of an inventive step.
ISSUES [29] The Appellant frames the issues on this appeal as follows:
The Commissioner did not apply specific directions given by Justice Mactavish; The Commissioner analyzed the elements of the claims separately instead of analyzing the combination of those elements as a whole; The Commissioner did not fairly consider the evidence filed by the Appellant. Instead of considering the evidence during the process of determining whether the invention was obvious, the Commissioner first determined the issue of obviousness and only considered the evidence to see if the conclusion he had arrived at should be changed; The Commissioner’s use of “trend in the art” was a retrospective exercise to explain way gaps in the prior art.
[30] The Respondent states the issues on this appeal are as follows:
Is the Commissioner, the statutory decision-maker, a proper respondent on this appeal? Should the new evidence relating to the Canadian Intellectual Property Office’s (CIPO) administrative practice following a refusal be given any weight on this appeal? After applying the correct legal test for “obviousness” to the facts of the case, is the second reconsideration decision entitled to deference?
[31] I would reframe the issues as follows:
Should the Commissioner be removed as a respondent to the appeal? What weight, if any, should this Court afford to the Appellant’s new evidence concerning the marking his application as being “dead” by CIPO? What is the standard of review? Did the Commissioner err in finding the Appellant’s proposed invention obvious?
PRELIMINARY ISSUES ISSUE 1: Should the Commissioner be removed as a respondent to this appeal? Respondent’s Submissions [32] As a preliminary issue, the AGC sought an order removing the Commissioner as a named respondent to the appeal.
[33] The Respondent submits that the Commissioner is not a proper party to the appeal. The naming of the proper respondent is governed by Rule 338(1) of the Federal Courts Rules, SOR/98-106 (Rules). As this was a statutory appeal brought pursuant to s. 41 of the Act, there was no “first instance” proceeding naming any of the respondents and thereby requiring them to be named as respondents on this appeal pursuant to Rule 338(1)(a). Further, statutory decision-makers are not “adverse in interest” and otherwise do not have an “interest” in the appeal as described in that Rule (Maple Leaf Foods Inc v Consorzio Del Prosciutto di Parma and Registrar of Trade-marks, 2010 FCA 67 at para 9, 85 CPR (4th) 451 [Maple Leaf Foods]). It is also well established that a tribunal or adjudicative body whose decision is the subject of a judicial review or appeal must not be named as a respondent or defendant (Genex Communications v Canada (Attorney General), 2005 FCA 283, [2006] 2 FCR 199 [Genex]).
[34] The only exception to the rule that a body whose decision is being attacked may not appear at the review proceedings or on an appeal of their decision is where there is a statutory exemption (Genex, above, at paras 64-66). There is no statutory requirement to name the Commissioner as a respondent to an appeal under s. 41 of the Act. Therefore, Rule 338(1)(b) does not apply and does not require the Commissioner to be named. In these circumstances Rule 338(1)(c) provides for the AGC to be named as the respondent on the appeal. As the AGC is prepared to respond, a motion under Rule 338(2) is not required. The Rules only require that the Commissioner be served with an appeal (Rule 339(1)(b)).
Appellant’s Submissions [35] The Appellant maintains that the Commissioner is a proper party on this appeal. It notes that this is the third such appeal of this matter and that in both prior appeals the Commissioner was named as a respondent with no objection by the AGC.
[36] The Appellant notes the absence of a provision in Rule 338, which concerns appeals, similar to that found in Rule 303(1)(a), which deals with applications, and which specifically states that a tribunal in respect of which the application is brought shall not be named as a respondent. This suggests that it is proper, even if not necessary, to name the Commissioner in a s. 41 appeal.
[37] Further, that in an application for prohibition under the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 (PM (NOC) Regulations), it is appropriate to name the Minister of Health as a respondent, even though it is not set out in those regulations (Pfizer Canada Inc v Canada (Minister of Health), 2007 FC 169 at para 11 [Pfizer]). There are many cases where the Minister of Health is a party under the PM (NOC) Regulations but there are also some other matters, including applications for access to information, where the Minister is named.
[38] In Krause v Minister of Finance et al, [1999] 2 FCR 476 (CA), the Federal Court of Appeal held that in a judicial review proceeding under ss. 18 and 18.1 of the Federal Courts Act, RSC, 1985, c F-7, it was improper to identify Her Majesty the Queen in Right of Canada as a respondent. There, the Court amended the style of cause to substitute the President of the Treasury Board and the Minister of Finance as the respondents. While s. 41 of the Act is styled as an appeal, in substance it is procedurally more similar to a judicial review by way of certiorari because the Court reviews the record and may quash the decision under review (René Dussault & Louis Borgeat, Administrative Law: A Treatsie, Vol 4 (Carswell: 1990)).
[39] The Appellant submits that it is common practice to name the Commissioner as a respondent in s. 41 appeals (Dutch Industries Ltd v Commissioner of Patents, 2001 FCT 879, [2002] 1 FC 325, var’d Barton No-till Disk Inc v Dutch Industries Ltd, 2003 FCA 121 [Dutch Industries]; Attorney General of Canada and the Commissioner of Patents v Amazon.com et al, 2011 FCA 328, [2012] 2 FCR 459 [Amazon]; Harvard College v Canada (Commissioner of Patents), 2002 SCC 76, [2002] 4 SCR 45 [Harvard College]). The Commissioner was the appellant in both Amazon and Harvard College. In Amazon, the Federal Court of Appeal included a specific direction regarding proper interpretation and application of jurisprudence and, if the Commissioner was not a party, the Attorney General would, in effect, become a messenger.
Analysis [40] The Respondent, pursuant to Rule 369, brought a motion in writing on December 11, 2012, seeking an order removing the Commissioner as a respondent to the appeal. By order dated February 11, 2013, Prothonotary Milczynski adjourned the motion to be heard at the hearing of this appeal on its merits.
[41] The affidavit evidence filed by the AGC in support of its motion includes as exhibits copies of correspondence between counsel for the AGC and for the Appellant concerning this issue. Therein, counsel for the Appellant stated that it was its understanding that the Commissioner was to be included in the style of cause and served with the Notice of Appeal so as to be obliged to provide a certified copy of the file history of the relevant Patent Application to the Court. In this case, the record was provided to the Appellant and the Court by the file preparation section of the Department of Justice. Further, the AGC, and not the Commissioner, filed a Notice of Appearance.
[42] For the following reasons it is my view that the Commissioner should not have been named as a Respondent to this appeal.
[43] As this is an appeal from the Commissioner’s decision, Part 6 of the Rules applies. Rule 338(1) provides as follows:
Persons to be included as respondents
338. (1) Unless the Court orders otherwise, an appellant shall include as a respondent in an appeal
(a) every party in the first instance who is adverse in interest to the appellant in the appeal;
(b) any other person required to be named as a party by an Act of Parliament pursuant to which the appeal is brought; and
(c) where there are no persons that are included under paragraph (a) or (b), the Attorney General of Canada.
Intimés
338. (1) Sauf ordonnance contraire de la Cour, l’appelant désigne les personnes suivantes à titre d’intimés dans l’appel :
a) toute personne qui était une partie dans la première instance et qui a dans l’appel des intérêts opposés aux siens;
b) toute autre personne qui doit être désignée à titre de partie aux termes de la loi fédérale qui autorise l’appel;
c) si les alinéas a) et b) ne s’appliquent pas, le procureur général du Canada.
[44] In Genex, above, the Canadian Radio-television and Telecommunications Commission (CRTC) made a decision not to renew the appellant's broadcasting licence for a radio station. The Federal Court of Appeal addressed the difference between Rules 303 and Rule 338 in the context of a named respondent and found:
[62] In judicial review proceedings, rule 303 of the Federal Court Rules stipulates that an applicant shall name as a respondent every person affected by the order sought in the application, other than a tribunal in respect of which the application is brought. If these proceedings were by way of judicial review rather than by way of appeal, as is the case, it is clear that the CRTC would not be a respondent. However, it could request status as an intervener in the proceedings: see rule 109. The legal situation does not differ on an appeal. However, it is arrived at by a different route.
[63] In fact, the status of the parties to an appeal is governed by rule 338. Under that rule, an appellant shall include as a respondent every party in the first instance who is adverse in interest to the appellant in the appeal. Rule 2 defines a party in the first instance in an action as a plaintiff, defendant or third party. In the case of an application, such as an application for judicial review, the word "party" refers to an applicant or respondent.
[45] In my view, this disposes of the Appellant’s suggestion that, based on the difference of wording between the two rules, or, because the appeal has procedural similarities to a judicial review, that it is proper, even if not necessary, to name the Commissioner as a respondent in a s. 41 appeal.
[46] The Court in Genex went on to find that the CRTC was not a party in the first instance and that, in the absence of a statutory exemption, it was not entitled to appear in the appeal:
[64] In the application for renewal of the appellant's licence before the CRTC, the latter was not a party in this first instance; it was the adjudicative body. Furthermore, it is not a person who, in the appeal, has interests adverse to those of the appellant. In fact, the appellant should not have made the CRTC a respondent in its proceedings…
[65] Irrespective of the reasons that led the appellant to name the CRTC as respondent on appeal, this act was a source of confusion since, as a general rule, the rights of a respondent on appeal are different from and much more extensive than those of an intervener. Failing a statutory exemption, as in the case of the Canada Industrial Relations Board (see subsection 22(1.1) [as enacted by S.C. 1998, c. 26, s. 9] of the Canada Labour Code, R.S.C., 1985, c. L-2), a body whose decision is attacked is not entitled to appear in the appeal or review proceedings. Were it not for the fact that it was implicated as a party to the appeal by the appellant, the CRTC would have had to make a motion for leave to intervene under section 109 of the Rules. Its status would then have been clear and spelled out in the order authorizing it to intervene, as was the case for the interveners Cogeco Diffusion Inc., the Canadian Association of Broadcasters, the Association québécoise de l'industrie du disque, du spectacle et de la vidéo and the Canadian Civil Liberties Association.
[66] Whether in judicial review or appeal proceedings, the federal agency that made a decision is not authorized to come and defend the decision it made, still less to justify itself. As Mr. Justice Estey said in Northwestern Utilities Ltd. et al. v. City of Edmonton, 1978 CanLII 17 (SCC), [1979] 1 S.C.R. 684, at page 709 (where the agency had presented on appeal detailed and elaborate arguments in support of its decision), "[s]uch active and even aggressive participation can have no other effect than to discredit the impartiality of an administrative tribunal either in the case where the matter is referred back to it, or in future proceedings involving similar interests and issues or the same parties." The agency is entitled to be represented on appeal, but its submissions must in principle be limited to an explanation of its jurisdiction, its procedures and the way in which they unfolded.
[47] Similarly, in Maple Leaf Foods, above, Justice Sharlow of the Federal Court of Appeal found that the Registrar of Trade-Marks should not have been named a respondent in that proceeding because, as the statutory decision-maker, it was not adverse in interest to Maple Leaf. Rule 338 justified an order removing the Registrar as a party to the appeal (also see Genencor International, Inc v Canada (Commissioner of Patents), 2006 FC 876 at para 38, 52 CPR (4th) 253, rev’d on other grounds, 2006 FC 1021 [Genencor]).
[48] Based on this, it is clear that the Commissioner is not a party in the first instance who is adverse in interest to the Appellant pursuant to Rule 338(1)(a). As to Rule 338(1)(b), there is no requirement in the Act to name the Commissioner as a party.
[49] I also do not find the remainder of the Appellant’s submissions on this issue to be compelling. This included a Federal Court index and docket search for “Minister of Health” which turned up 711 results from 2003 to 2012. The Appellant acknowledges that the vast majority of these are under the PM (NOC) Regulations but states that others are applications, only two of which are specified and are said to concern access to information. I do not see how this or Pfizer, above, assists the Appellant, particularly as an applicant is required to name as a respondent every person directly affected by the order sought, other than a tribunal in respect of which the application is brought. Thus, a tribunal could be a named party in capacities other than as a decision-maker. The Appellant similarly included a query search of “Commissioner of Patents” that located 248 records between 1971 and 2012. Not all of these are s. 41 of the Patent Act appeals. Further, in the three cases from this search result which are addressed by the Appellant, Dutch Industries, Amazon, and Harvard College, all above, the issue of the Commissioner being named as a party does not appear to have been disputed.
[50] I also do not agree with the Appellant’s assertion that, when this Court quashes a decision and directs the matter back for redetermination, the tribunal is not bound to follow any direction of the Court that may be included in its decision if it is not a named party. This is certainly not reflected in Rules 303 and 338.
[51] Finally, I would note that nothing in Rule 317, which pursuant to Rule 350 applies to appeals, requires that the tribunal whose order is the subject of the application or appeal to be named as a respondent in order to compel production by an applicant or appellant of the materials in its possession relevant to that proceeding.
[52] Therefore, pursuant to Rule 338(1)(c), the AGC should, in the circumstance of this matter, be the named Respondent on this appeal. Accordingly, it is hereby ordered that the Commissioner is removed as a named respondent and the style of cause shall be amended accordingly.
ISSUE 2: What weight, if any, should this Court afford to the Appellant’s new evidence concerning the marking his application as being “dead” by CIPO? [53] The Appellant brought a motion before this Court on August 16, 2013, seeking to bring new evidence in the form of affidavits dated August 15 and September 6, 2013 from Keith Bird, a lawyer and a patent agent who was involved in the Appellant’s application, and an affidavit dated September 3, 2013 from Julie Tomaselli, Legal Assistant at the Department of Justice.
[54] By Order dated September 19, 2013, Prothonotary Aalto granted the motion to adduce new evidence on appeal. He found that the evidence appeared to be germane to the underlying appeal and should be before the hearings judge who would be in the best position to determine its relevance.
[55] The essence of this new affidavit evidence is that CIPO, in its Canadian Patents Database, has recorded the Patent Application as a “dead” application as of March 21, 2012, and recorded the maintenance fees as having been paid only to the thirteenth anniversary. Although payments for the fourteenth and fifteenth anniversary maintenance fees and the fee for reinstating the appeal have been made, due to a 2009 change in CIPO procedure, the application will continue to be recorded as “dead” until the current appeal is resolved. At that time, the fees held on file will either be applied or refunded. The CIPO Techsource-Patent Administration electronic file concerning the subject Patent Application includes changes made to explain the “dead” status, including that the case is under appeal, and advising that maintenance fees paid after March 21, 2012 would be processed after the appeals are exhausted if the refusal is reversed.
[56] However, the information available online to the general public by way of the Canadian Patents Database is not identical to that which can be obtained from the Techsource terminals available at CIPO’s offices. A printout from the latter source lists the current state of the Patent Application as “Dead” and that it was dead on: “2012/03/21 for COMMISSIONER’S DECISION TO REFUSE.” The attached log includes reference to and copies of the letter written by counsel for the Appellant to the Commissioner concerning this issue and the Commissioner’s reply explaining what is meant by “dead” and other related matters. The fourteenth anniversary maintenance fee is shown in the log as having been recorded on November 20, 2012, however, it is not displayed as paid. There is no record of the fifteenth maintenance fee. The most recent online version of the Canadian Patents Database has not been revised to reflect the explanations available in Techsourse.
Respondent’s Position [57] The Respondent submits that the Commissioner’s decisions regarding administration of the patent registrar are subject to a separate judicial review application and do not properly form part of the appeal under the Act for relief following a refusal. The term “dead” does not appear in the Act or the Patent Rules, SOR/96-423 [Patent Rules], it is an administrative designation only and CIPO has taken steps to ensure that the public record clearly indicates that an appeal from the refusal is pending. The recording of a refused patent application as “dead” is not evidence necessary to decide this appeal from the Commissioner’s decision refusing the Patent Application on the grounds that the claimed invention is obvious.
Appellant’s Position [58] In his Supplementary Memorandum of Fact and Law, the Appellant submits that the Commissioner had no statutory basis to record the Patent Application as “dead” upon refusing the Patent Application. In the event that this Court determines that the Commissioner erred in refusing to allow the application on the grounds of obviousness, the Court has the power to direct the Commissioner to take such steps as will be required to put the Patent Application into good standing and to properly record the payment of the maintenance fees. Further, that the Commissioner failed to treat the Appellant fairly in accordance with the procedures authorized by the Act and the Patent Rules. The new evidence makes it clear that CIPO will not recognize any mistake in relation to the Patent Application but will instead try to change the basis upon which it seeks to justify the action said to be a mistake.
Analysis [59] The Act does not use the term “dead,” nor is the term used in the Patent Rules. The Appellant provided, by way of an exhibit to the September 6, 2012 Bird affidavit, a print out from the Canadian Patents Database entitled “Help: Administrative Status Definitions.” This describes a dead application as the date that an abandoned application could normally no longer be reinstated.
[60] The Appellant does not assert any specific prejudice suffered as a result of the Canadian Patents Database depiction of the Patent Application as being dead. Although he asserts that this evidence shows that the Commissioner has failed to treat the Appellant fairly in accordance with procedures authorized by the Act or the Patent Rules, he makes no legal argument in support of that claim such that it is a basis for quashing the Commissioner’s decision. Moreover, the remedy that the Appellant seeks as regard to the new evidence is an order to correct the designation of the Patent Application as dead and to properly record all transactions that were not recorded after the designation of the Application as dead, including the payments of maintenance fees.
[61] Additionally, the new evidence does not support the Appellant’s assertion that CIPO will not recognize any mistake made in relation to the Patent Application but will instead try to change the basis upon which it seeks to justify the impugned action. In fact, the August 29, 2013, letter from CIPO explaining why the Patent Application was marked as dead and what steps it would take to address the Appellant’s concerns suggests the contrary. Further, this issue pertains to the administration of the Patent register.
[62] I am also of the view that the recording of a refused Patent Application as “dead” is not evidence necessary to decide this appeal from the Commissioner’s decision refusing the application on the ground that the claimed invention is obvious.
[63] For these reasons, the new evidence is relevant only to the limited extent that it grounds that portion the Appellant’s request for relief pertaining to the revisiting of the designation of the status of the Patent Application in the event that its appeal is successful, which presumably, CIPO would do of its own accord. However, as I have determined below that the appeal cannot succeed, this new evidence has no relevance.
ISSUE 3: What is the standard of review? Appellant’s Submissions [64] The Appellant does not make submis