Federal Court Decision on the “Due Care” Standard in the Patent Act: A High Standard for Reinstatement of Patent Rights

The recent decision by the Federal Court regarding the “due care” standard in the Patent Act has shed light on the high expectations placed on patentees and patent agents when it comes to maintaining patent rights. The case, Taillefer v Canada (Attorney General), 2024 FC 259, involved a patentee who missed a maintenance fee payment due to a technical error in communication with their patent agent.

The court’s ruling emphasized that the onus is on both patentees and patent agents to ensure that maintenance fees are paid on time. In this particular case, the patentee had relied on their agent to handle the payments for nearly a decade, but a technical error led to the missed payment and subsequent expiration of the patent.

The Commissioner of Patents, in assessing the request for reinstatement, found that the patentee had not taken all possible actions to avoid the failure to pay the fee on time. The court upheld the Commissioner’s decision, highlighting the importance of patentees understanding the deadlines and obligations associated with maintenance fees.

The ruling serves as a reminder to patentees and patent agents to have robust systems in place to prevent such lapses in communication and ensure that patent rights are not inadvertently lost. The decision also underscores the need for clear communication between patentees and agents, as well as the importance of proactive measures to avoid similar situations in the future.

As the patentee in this case has until March 18, 2024, to appeal the court’s decision, it remains to be seen how this ruling will impact future cases involving the reinstatement of patent rights. The Taillefer decision sets a precedent for the “due care” standard, emphasizing the need for diligence and proactive measures in maintaining patent rights.