Monsanto Co. v. Canada ( Commissioner of Patents )
T-805-99
Dubé J.
15/7/99
16 pp.
Applicants (Monsanto/Searle) bringing motion for extension of time to serve notice of application for judicial review; respondent (Merck Frosst) bringing motion for order dismissing judicial review application-Monsanto/Searle, Merck Frosst filing Canadian patent applications-Final action issued in respect of Monsanto/Searle patent application, indicating certain claims not allowable-Commissioner of Patents subsequently issuing notice of allowance in respect of Merck Frosst patent application-Monsanto/Searle asking for reconsideration of own patent application, or that matter be referred to Patent Appeal Board-Monsanto/ Searle's judicial review to quash notice of allowance in respect of Merck Frosst patent application issued May 7, 1999, but not served as waiting for Commissioner's decision with respect to own patent application-Thus filing application for extension of time for that purpose-Merck Frosst's application for order dismissing Monsanto/Searle's notice of application for judicial review based on ground notice of allowance not "decision" subject to review under Federal Court Act, s. 18.1-Applications dismissed-Notice of allowance not "decision" contemplated by s. 18.1-Merely administrative step taken by Commissioner leading to possible issuance of patent under Patent Rules, s. 30(1)-Under Rules, s. 30(7) Commissioner may, after sending notice but before patent issued, decide application not complying with Act, Rules, return application to examiner for further examination-Thus decision under attack not final step-Final step issuance of letters patent by Commissioner-Person who has failed to obtain patent may appeal from Commissioner's decision to Federal Court under Patent Act, s. 41-Should patent be issued, third party may attack it by launching action in Federal Court under Patent Act, s. 60-No case law permitting challenge of notice of allowance by judicial review-Under Patent Act, Patent Rules, with respect to another party's patent application, may file protest under Rules, s. 10 or make filing of prior art under Act, s. 34.1, or after patent issued, launch action before Federal Court under s. 60 to have patent declared invalid, void-Scheme of Patent Act, Rules constituting complete code in sense party may not launch judicial review application against intermediate administrative act as would create judicially sanctioned parallel procedure to scheme set out by Parliament-If decision under attack that of examiner, neither federal board, commission or tribunal under s. 18.1-If Commissioner's decision under attack, task not completed until patent issued-To estop Commissioner from making decision favouring Merck Frosst until Monsanto/ Searle obtaining decision on own patent application tantamount to injunction against Commissioner-Expediency alone not ground for launching judicial review in face of statutory, regulatory procedures already in place-Pharmascience Inc. v. Canada (Commissioner of Patents) (1998), 85 C.P.R. (3d) 59 (F.C.T.D.) applied-Notice of allowance merely informing applicant patent application meeting criteria of Patent Act, but not ipso facto entitling applicant to right of patent-Monsanto/Searle cannot interfere with role of Commissioner with reference to Merck Frosst patent application so as to protect own patent application-Not having standing to launch judicial review application attacking administrative step leading to issue of patent in another party's patent application as not yet "directly affected" by matter-Federal Court Act, R.S.C., 1985, c. F-7, s. 18.1 (as enacted by S.C. 1990, c. 8, s. 5)-Patent Rules, SOR/96-423, ss. 10, 30(1),(7)-Patent Act, R.S.C., 1985, c. P-4, ss. 34.1 (as enacted by R.S.C., 1985 (3rd Supp.), c. 33, s. 11; S.C. 1993, c. 15, s. 37), 41 (as am. by R.S.C., 1985 (3rd Supp.), c. 33, s. 16), 60.