Digests

Didone v. Sakno

T-406-02

2003 FC 1530, Russell J.

31/12/03

33 pp.

Judicial review of Patent Appeal Board (Board) decision respondent (Sakno) authorized correspondent under Patent Rules, r. 2 for purpose of prosecution, maintenance of patent application no. 2331099 (099 application)--Dispute as to ownership of patent--Petition accompanying patent application appointed Dennison Associates (Dennison) as patent agent--On September 10, 2001, respondent identified as sole inventor in patent petition, withdrawing by letter Dennison's authority to act on his behalf--Dennison not advising Patent Office, but instead taking steps to add applicants as co-inventors and to have David French (respondent's choice as sole agent) removed as associate agent --Patent Office advised Dennison on September 27, 2001 no longer patent agent of record for respondent--Since no common patent agent of record for both respondent, applicants, Patent Review Board determining respondent as first named inventor "authorized correspondent" pursuant to Patent Rules, r. 2--Judicial review of application not filed until March 2002--Whether appointment of Dennison as patent agent validly revoked--Whether application time- barred under Federal Court Act, s. 18.1(2)--Applicants, having decided to leave revocation decision unchallenged to further their advancement of their inventorship interests cannot now challenge decision because resulted in consequences they did not foresee when adopting their subterfuge--In so far as application attacks revocation decision communicated to Dennison on September 27, 2001, it is time-barred--As applicants' argument based upon reviewable error "in making the Decision, the Commissioner has improperly had regard to purported revocation", sufficient in itself to dispose of application--In event conclusion wrong, merits also dealt with--Board holding "in order to revoke a patent agent, it is sufficient for one of several applicants to sign the revocation"--Decision based upon Patent Rules, r. 20(3): appointment of patent agent may be revoked by submitting notice of revocation signed by applicant or agent to Commissioner--Applicants submitted all applicants had to sign revocation--Relying on Interpretation Act, s. 33(2)-- Applicants advancing similar argument with respect to Patent Rules, r. 6(2) i.e. communication must be from all applicants --Board holding notice to appoint agent must be signed by all applicants, but sufficient for one of several applicants to sign revocation--In absence of binding authority on point, rules of statutory interpretation suggest must seek intent of Parliament by reading words of provision in context and according to grammatical and ordinary sense, harmoniously with scheme and object of statute--In relation to Patent Act provisions under consideration, interpretation adopted by Board only one making scheme of Act workable--No inconsistency in Board's interpretation of Patent Rules, rr. 20(2) and 20(3)-- Board's interpretation correct because, in case of multiple applicants, valid appointment as patent agent requires authority from all of applicants--If one applicant subsequently withdraws authority (as happened here) then patent agent no longer enjoys authority of all applicants and notification of this fact to Patent Office by any one of applicants sufficient to effect revocation--To require notification by all applicants impractical and would lead to undesirable consequences-- Applicants alleged revocation of Dennison as patent agent invalid as only purported revocation came from respondent-- At time of revocation decision in September, 2001, or at any time subsequent to this, no notice of appointment signed by all applicants appointing Dennison as patent agent in accordance with Patent Rules, r. 20(2)--This is why Board correct to conclude in decision "there is no common patent agent of record appointed by all three applicants"--Bearing in mind subterfuge used to achieve their status as co-inventors on record, something incongruous about applicants seeking to assert rules circumvented in order to gain position allowing them to make such assertion--Applicant's interpretation of r. 20(3) leading to absurd result--Parties able to persuade Patent Office to accept them as co-inventors on basis of incorrect understanding (eg. Dennison agent for respondent) could then insist their own agent, who ceased to represent one of applicants (eg. respondent) cannot be removed without their consent--Finally, applicants saying Board erred by having regard to deficient and ineffective revocation--Applicants submitted Commissioner improperly having regard to communication to Patent Office by David French who was not applicant under 099 application, patent agent, associate patent agent--Patent Rules, r. 20(3) allowing revocation after submission to Commissioner of "a notice of revocation signed by the applicant or that patent agent"--Patent Act and Patent Rules prescribe no particular form notice should take--Fact notice of respondent forwarded on his behalf to Patent Office by Mr. French irrelevant--Respondent signed notice and perfectly obvious from notice and Mr. French's letter who Mr. French is and in what capacity forwarding notice-- Acceptance of notice under Patent Rules, r. 6(2) consistent with Patent Office's position under r. 20(3), that one applicant can revoke appointment--Judicial review dismissed--Patent Act, R.S.C., 1985, c. P-4--Patent Rules, SOR/96-423, rr. 2 "authorized correspondent", 6(2), 20--Federal Court Act, R.S.C., 1985, c. F-7, s. 18.1(2) (as enacted by S.C. 1990, c. 8, s. 5)--Interpretation Act, R.S.C., 1985, c. I-21, s. 33(2).