The Canadian Federal Court emphasised the importance of filing a patent application with the correct set of figures in Scannex Technologies, LLC v Attorney General of Canada (2009 FC 1068). After a US patent application was filed, a corresponding international patent application was filed under the Patent Cooperation Treaty (PCT) with a different and thus incorrect set of figures. This PCT application entered the national phase in Canada as a Canadian patent application. The applicant requested that the Commissioner of Patents substitute the incorrect figures in the Patent Application with correct figures pursuant to section 8 of the Patent Act, which affords the Commissioner the discretion to correct clerical errors. In support, the applicant filed an affidavit stating that incorrect figures were filed due to the unintentional error of a clerk of the applicant's agent in the US, and filed a certified copy of the US patent application containing the correct figures. Notwithstanding the applicant's efforts, the Commissioner refused to correct the figures. The applicant then applied to the Federal Court for judicial review.
The Court considered a clerical error to be associated with writing, noting that case law had consistently defined a clerical error as one that is "mechanical in nature and made without thought". In support, the Court relied on the French version of section 8, which uses the term "erreur d'écriture". Acknowledging that the definition may be too narrow given contemporary business practice, the Court nevertheless concluded that the filing of incorrect figures was not a clerical error within the narrow definition of the Patent Act. In view of this decision, applicants and their agents should exercise great care to ensure that patent applications are complete, with the correct set of pages.
 |
| Jean-Charles Grégoire |
Marks & Clerk Canada
PO Box 957, Station B
Ottawa ON K1P 1C2
Canada
Tel: +1 613 236 9561
Fax: +1 613 230 8821
info@marks-clerk.ca
www.marks-clerk.ca