Federal Court Decision on “Due Care” Standard for Patent Maintenance Fees

The Federal Court has recently made a groundbreaking decision regarding the “due care” standard in the Patent Act, shedding light on the high expectations placed on patentees and patent agents when it comes to maintaining patent rights. The court’s ruling in the case of Taillefer v Canada (Attorney General) has set a precedent for future reinstatement applications, emphasizing the importance of diligence and proactive measures in avoiding missed maintenance fees.

Under the amended maintenance fee regime, patentees and patent applicants are required to pay annual maintenance fees to keep their patents in good standing. Failure to do so can result in the expiration of a patent or the abandonment of a patent application. The amendments, which align with the international Patent Law Treaty, introduced the “due care” standard as a requirement for reinstating patents after a missed maintenance fee.

In the Taillefer case, the patentee had relied on a patent agent to handle the payment of maintenance fees for nearly a decade. However, due to a technical error that redirected the agent’s emails to the patentee’s junk mail, the maintenance fee was not paid, leading to the expiration of the patent. Despite the patentee’s immediate efforts to seek reinstatement, the Commissioner found that the “due care” standard had not been met.

The Federal Court upheld the Commissioner’s decision, emphasizing the shared responsibility of patentees and agents in ensuring timely payments. The court highlighted the need for patentees to understand the importance of maintenance fee deadlines and for agents to implement backup communication systems to prevent lapses in payment.

Overall, the Taillefer decision serves as a reminder to patentees and agents of the rigorous standards set forth by the “due care” standard. Moving forward, it is crucial for parties involved in patent maintenance to work together to establish robust systems and protocols to avoid the inadvertent loss of patent rights. The patentee in the Taillefer case has until March 18, 2024, to appeal the court’s decision, signaling a potential turning point in the enforcement of the “due care” standard in patent law.