Repligen Corp. v. Canada (A.G.): Clerical Error in the Intellectual Property Office

David Vaver is Professor of Intellectual Property Law at Osgoode Hall Law School and on the Advisory Board of IP Osgoode.

A Note in the next issue of the Intellectual Property Journal, due out in April, reviews a recent case on Patent Office refusals to correct clerical errors: Repligen Corp. v. Canada (A.G.) 2010 FC 1288.

Life is full of mistakes and lawyering has its fair share too.  So what happens when a document is filed with a government agency, and the document has a mistake in it that goes undetected?  Sometimes a mistake is readily corrected through purposive construction – or “reading”, as it once was called – but other times official action is needed.

The Canadian Intellectual Property Office (CIPO) has express power to correct a “clerical error”, as most other agencies and tribunals do, expressly or impliedly.  The case I like best is one where a patent applicant asked to add nine pages to the specification some years after its application had been laid open to the public.  It said the computer had somehow swallowed them up before the application had been filed.  The Patent Office said no, and although the Federal Court seemed to think that an act of computer, unlike an act of God, could be cured, it did not intervene because it thought the Office’s stance was not unreasonable: Dow Chemical Co. v. Canada (A.G.) 2007 FC 1236.     

As the pressure of paperwork and computerization has increased over the last decade, there has been a steady stream of cases on Patent Office refusals to correct clerical errors, and a Note in the next issue of the Intellectual Property Journal, due out in April, reviews a recent one, Repligen Corp. v. Canada (A.G.) 2010 FC 1288.  There the Federal Court told the Patent Office to reconsider its refusal to correct an error made by a patentee’s agent – transposing two figures in a patent’s serial number when remitting maintenance fees – that resulted in lapse of the patent for failure to pay the fees on time.  The Note reviews the law of clerical error – yes, there is one, predating Confederation – and takes issue with the Office’s attempt to minimize its own role in contributing to and not fixing Repligen’s simple mistake.  CIPO claims to treat those who deal with it as its “clients”, but they are clients who cannot fire it where they feel let down.

Errors will always be with us, and one mark by which to judge an institution is on how it deals with its own and others’ mistakes – defensively, or with a due sense of “there, but for grace, go I.”  Have readers any stories to share on the subject?

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