Patent applications that become provisionally abandoned, for example due to failure to pay a maintenance fee or respond to a requisition, can be reinstated in Canada. However, as a recent decision illustrates, all of the requirements for reinstatement must be carefully observed; otherwise, the patent applications can become irrevocably abandoned.
In M-Systems Flash Disk Pionerers Ltd v The Commissioner of Patents, 2010 FC 441, during prosecution an examiner issued two requisitions, one to rectify defects and another to identify prior art cited during foreign prosecution under sections 30(2) and 29 of the Patent Rules, respectively. The applicant did not respond, and the application became provisionally abandoned.
Within the 12-month period for reinstatement, the applicant submitted a request for reinstatement and a response to the section 30(2) requisition, but not for the section 29 requisition. Two notices of abandonments were issued by the Canadian Patent Office, but neither was received by the applicant.
When it came to the applicant's attention that the application was abandoned, the applicant attempted to reinstate the application outside the 12-month period, but the Patent Office refused. The applicant then applied for judicial review.
In upholding the refusal to reinstate, the Federal Court of Canada followed jurisprudence which has consistently held that such abandonment operates as a matter of law, rather than as a result of a judicially reviewable decision of the Commissioner of Patents. Also, the Commissioner has no obligation to give a notice of abandonment.
The Court's decision serves as another reminder to ensure that requirements are met. Where multiple requisitions are made, to avoid abandonment a response must be made to each requisition. To reinstate an application from multiple abandonments, each abandonment must be addressed. Reinstatement is possible, but strict compliance is required.
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