Canadian Bill of Rights fails to save Sandisk patent application
Sandisk acquired Israeli flash memory firm M-Systems in 2006. In a recent judgment, the Canadian Federal Court of Appeal has confirmed a lower court judgment that one of M-Systems’ Canadian patent applications has been lost, due to the Patent Office’s “multiple abandonment” procedures.
The abandonment of the M-Systems patent application was caused by a failure to address one of two requisitions by the patent examiner assigned to reviewing the M-Systems application. In an office action report, the examiner had requisitioned both: 1) an amendment to correct defects in the application; and 2) a list of prior art cited against corresponding applications by foreign patent offices (a so-called “Rule 29 requisition”).
The applicant provided a timely response to the first requisition but overlooked the Rule 29 requisition. The patent agents testified that they never received the abandonment notice from the Canadian Patent Office.
The lower court held that the abandonment was mandatory (not discretionary) and that Rule 29 was constitutional. According to the lower court, sub-section 2(e) of the Canadian Bill of Rights does not apply as patents are bargains made with the state and do not involve “rights” per se. In any case, a review of the Baker factors indicated that the patent applicant was not deprived of the right to a fair hearing in accordance with the principles of fundamental justice (see the analysis starting at paragraph 48 of the lower court judgment).
In short reasons, the appeal court agreed with the lower court’s analysis but said the case could be decided on the same basis as an earlier case, DBC Marine. The ratio of that case is simply that a (multiple) abandonment is not a discretionary decision which can be judicially reviewed.
Unless this case is overturned by the Supreme Court of Canada, great caution should be taken to deal with office actions that contain multiple examiner’s requests. For example, Rule 29 requisitions could be recorded separately in the patent agent’s deadline tracking software.
The case is M-Systems Flash Disk Pioneers Ltd. v. Commissioner of Patents, 2011 FCA 112
François Grenier and Alexandra Steele of Robic acted for the patent applicant. Antoine Lippé, Michelle Kellam acted for the Commissioner of Patents.
