After due care was introduced in the Patent Act in 2019, the due care standard has shown to be quite strict and can be difficult to satisfy.  Typically, when a failure to pay a maintenance fee and the late fee within the late fee period occurs, the due care standard must be met to reverse a deemed expiry of a patent or to reinstate an application deemed abandoned. To determine whether the failure occurred in spite of the due care required having been taken by an applicant or a patentee, the Canadian Intellectual Property Office generally assesses whether the applicant or the patentee took all measures that a reasonably prudent applicant or patentee would have taken – given the particular set of circumstances related to the failure – to avoid the failure, and despite taking those measures, the failure occurred.

When communication failure occurs between applicants/patentees and agents, it will be necessary to show that alternative communication mechanisms are in place to mitigate the risk of communication failure in order to meet the due care standard.In the example of Taillefer v. Canada (Attorney General), 2024 FC 259 (CanLII), Taillefer, the Patentee, sought a judicial review of the Commissioner’s denial of Taillefer’s request for reinstatement of Canadian Patent No. 2,690,767 (the “Patent”), after it was deemed to have expired for failure to pay the tenth anniversary maintenance fee.

The Patentee and his Agent consistently communicated by email through the same email address in the past with respect to payment of the annual maintenance fee. In this case, the Agent sought instructions from the Patentee in multiple emails for payment of the tenth maintenance fee, and reported, by email, subsequent correspondences from the Canadian Intellectual Property Office to the Patentee.  The emails went to the Patentee’s junk email folder until the Patentee found out after the Patent was deemed to be abandoned.

In the request to reinstate the Patent, the Agent explained that the Patentee did not take any actions which would cause the emails to be directed to his junk email folder and had no reason to regularly check his junk email folder for relevant emails.

However, the Commissioner refused to reinstate the Patent, on the basis that the efforts made by the Agent and the Applicant were insufficient to meet the standard of due care in the circumstances at issue. The Commissioner noted that the request did not describe any other action that was taken or considered by the Agent or the Patentee to ensure that communication channels remained effective, and the fees were paid on time, despite the circumstances surrounding the case.

The Federal Court upheld the Commissioner’s decision.

In the judicial review, the Patentee argued that due care should be found if it is demonstrated that a system of email communication worked reliably in the past, and that the breakdown could not have been anticipated.  The Federal Court rejected these arguments. (Taillefer v. Canada (Attorney General), 2024 FC 259 (CanLII), para. 32).

According to the Federal Court, it was reasonable that:

The Commissioner had looked at steps that could have avoided the communication failure and to have expected that the Agent would have additional communication mechanisms in place to make sure they could always correspond with the Patentee;

Alternative measures should have been used to ensure that the Patentee was aware of the deadlines at issue in circumstances where numerous notices from the Agent had gone unanswered and where non-compliance could lead to expiry of patent rights (Taillefer v. Canada (Attorney General), 2024 FC 259 (CanLII), at para. 41);

A reasonably prudent Patentee would have a system in place to make sure that their email was operating effectively if they were relying on the email as the primary communication means to pay their maintenance fees; and

Having retained the responsibility to instruct the Agent on a yearly basis to pay the maintenance fee, it was incumbent on the Patentee to exercise due care to ensure that his email was properly receiving messages so that he could provide instructions to the Agent in a timely manner. (Taillefer v. Canada (Attorney General), 2024 FC 259 (CanLII), at para. 42).

The Federal Court also mentioned that both the Agent and the Patentee must ensure that mitigation systems are in place so that the Agent’s role can be completed. (Taillefer v. Canada (Attorney General), 2024 FC 259 (CanLII), at para. 47).

The Federal Court of Appeal concurred with the Federal Court. According to the Federal Court of Appeal, it was reasonable for the Commissioner:

To find that due care would have required the Agent to have in place, and given the particular set of circumstances, to use alternative communication mechanisms to ensure that the Patentee was aware of the maintenance fee deadlines; and

To decide that the Patentee, having retained the responsibility to instruct the Agent to pay the annual maintenance fees, was required to exercise due care by having a system in place to monitor and pay the fees, notably by ensuring that his communication channel with the Agent remained effective. (Taillefer v. Canada (Attorney General), 2024 FC 259 (CanLII), at para. 10).

Discussion

Communication failure can occur between applicants/patentees and agents, and the consequences can be dire if maintenance fees are ultimately not timely paid in Canada. However, communication failure sometimes cannot be timely identified, as exemplified in the case discussed above.

Therefore, both agents and applicants/patentees need to work diligently and proactively to prevent communication failure from occurring. Ongoing technical disruptions and inaccurate records at the Canadian Intellectual Property Office (discussed here) heighten the need to avoid communication failures. Agents and applicants/patentees can take the following measures to prevent communication failure, for example:

Both agents and applicants/patentees can establish alternative communication mechanisms. For example, in addition to email, agents and applicants/patentees can also communicate by telephone, and/or fax;

Both agents and applicants/patentees can set up dedicated email addresses for email communications. For example, in an email from an agent to a client, in addition to including the email of the client, the agent can also copy the client’s dedicated email address;<

If email communication is used, it is necessary for both agents and applicants/patentees to regularly check junk email folders to avoid loss of any legitimate email;

If a client does not respond to the emails from an agent, the agent can attempt to communicate with the client with alternative communication mechanisms, such as by calling and/or faxing the client, and vice versa; and

Agents and applicants/patentees may also request a delivery receipt and/or a read receipt of the emails in important emails

Finally, if applicants/patentees have retained the responsibility to instruct agents for performing certain tasks, the applicants/patentees need to have a system, such as a docketing system, to reliably track the deadlines of the tasks, and provide instructions to agents in a timely manner.