T‑1845‑05
2006 FC 753
Pason Systems Corp. and Pason Systems Inc. (Applicants)
v.
The Commissioner of Patents and Varco, L.P. (Respondents)
Indexed as: Pason Systems Corp. v. Canada (Commissioner of Patents) (F.C.)
Federal Court, Hughes J.—Toronto, June 12 and 13, 2006.
Patents — Judicial review of Commissioner of Patent’s decision allowing Varco, L.P.’s (Varco) application for correction of clerical errors in claim 9 of its patent, pursuant to Patent Act, s. 8 — Varco not advising Commissioner of ongoing litigation between it and Pason Systems Corp. (Pason) — Pason, directly affected by Commissioner’s decision, entitled to bring current application pursuant to Federal Courts Act, s. 18.1(1) — Two‑step inquiry under s. 8, nature of clerical error, discussed — Alleged errors substantive rather than clerical, thus outside scope of s. 8 — In any event, Commissioner would not have allowed amendments had he been aware of ongoing litigation — Varco, patent agent required to make full, fair, frank disclosure of relevant circumstances to Patent Office — Application allowed.
This was an application for judicial review of a decision by the Commissioner of Patents allowing amendments to claim 9 of Varco, L.P.’s (Varco) Canadian patent No. 2094313 pursuant to section 8 of the Patent Act, which provides that “[c]lerical errors . . . may be corrected under the authority of the Commissioner.” Prior to applying to the Commissioner for the corrections in question, Varco had instituted an action against Pason Systems Corp. (Pason) for patent infringement. The Commissioner was not advised of this litigation, nor was Pason advised of the application for corrections and their subsequent approval (certificate of correction on the public record as of about May 30, 2005). It was only on September 22, 2005 that Pason became aware of the certificate. The current proceedings were initiated within 30 days of that date.
Held, the application should be allowed.
Although the Patent Act does not provide any mechanism for a third party to challenge a decision made by the Commissioner under section 8, Pason was directly affected by the section 8 decision in the case at bar and therefore could bring an application for judicial review pursuant to subsection 18.1(1) of the Federal Courts Act, which it did in a sufficiently timely fashion (i.e. within 30 days of actual knowledge of the certificate).
The inquiry to be undertaken by the Commissioner under section 8 is twofold. He must determine whether there is a clerical error and, if so, what discretionary corrective measure, if any, should be taken. A careful review of claim 9 did not demonstrate that the changes requested by Varco were immediately apparent as clerical errors, such errors being defined in the case law as something that arises in the mechanical process of writing or transcribing. The alleged errors were substantive in nature rather than clerical, and thus outside of the scope of section 8. Such interpretation of the nature of clerical error was supported by the Manual of Patent Office Procedure, which states that no correction will be made which affects the rights of others, and by a comparison of corrections by way of re‑issue with corrections pursuant to section 8. Such a comparison made it clear that the latter type of corrections are intended to deal only with errors of an obvious clerical nature that have no material effect on the patent as it would always have been understood by anyone prepared to overlook simple and obvious clerical errors.
In any event, the Commissioner would not have allowed the amendments had he been aware of the ongoing litigation. Varco and its patent agent owed a duty of candour to the Patent Office to make a full, fair and frank disclosure of the relevant circumstances. It was incumbent upon them to act with integrity, and they were clearly obligated to disclose such a relevant matter as ongoing litigation. As the Commissioner exercised his discretion ignorant of this litigation, his decision had to be set aside.
statutes and regulations judicially
considered
Federal Courts Act, R.S.C., 1985, c. F‑7, ss. 1 (as am. by S.C. 2002, c. 8, s. 14), 18.1 (as enacted by S.C. 1990, c. 8, s. 5; 2002, c. 8, s. 27).
Federal Courts Rules, SOR/98‑106, r. 1 (as am. by SOR/2004‑283, s. 2), Tariff B, Column III.
Patent Act, R.S.C., 1985, c. P‑4, s. 8 (as am. by S.C. 1993, c. 15, s. 27), 41 (as am. by R.S.C., 1985 (3rd Supp.), c. 33, s. 16), 48.5 (as enacted idem, s. 18).
Patent Rules, SOR/96‑423.
cases judicially considered
applied:
CertainTeed Corp. v. Canada (Attorney General) (2006), 50 C.P.R. (4th) 177; 2006 FC 436; Dr. Q v. College of Physicians and Surgeons of British Columbia, [2003] 1 S.C.R. 226; (2003), 223 D.L.R. (4th) 599; [2003] 5 W.W.R. 1; 11 B.C.L.R. (4th) 1; 48 Admin. L.R. (3d) 1; 179 B.C.A.C. 170; 302 N.R. 34; 2003 SCC 19; Bayer Aktiengesellschaft v. Commissioner of Patents, [1981] 1 F.C. 656; 53 C.P.R. (2d) 70 (T.D.); Upjohn Co. v. Commissioner of Patents et al. (1983), 74 C.P.R. (2d) 228 (F.C.T.D.); revd sub nom. Novopharm Ltd. v. Upjohn Co. (1984), 2 C.P.R. (3d) 432 (F.C.A.).
considered:
College of Chiropodists of Ontario v. Canadian Podiatric Medical Assn. (2004), 248 D.L.R. (4th) 277; 37 C.P.R. (4th) 219; 266 F.T.R. 219; 2004 FC 1774; Bristol‑Myers Squibb Co. v. Canada (Commissioner of Patents) (1997), 77 C.P.R. (3d) 300; 138 F.T.R. 144 (F.C.T.D.); affd (1998), 82 C.P.R. (3d) 192; 229 N.R. 217 (F.C.A.).
authors cited
Canadian Intellectual Property Office. Manual of Patent Office Procedure, ss. 23.04, 23.04.02, 23.04.03.
Intellectual Property Institute of Canada. Code of Ethics (as of March 6, 2001).
APPLICATION for judicial review of the Commissioner of Patents’ decision to allow amendments to a patent owned by Varco, L.P. pursuant to section 8 of the Patent Act on the basis of clerical error. Application allowed.
appearances:
A. Kelly Gill and Selena Kim for applicants.
Andrew M. Shaughnessy and Julie Maclean for respondent Varco, L.P.
solicitors of record:
Gowling Lafleur Henderson LLP, Toronto, for applicants.
Torys LLP, Toronto, for respondent Varco, L.P.
The following are the reasons for judgment and judgment rendered in English by
[1]Hughes J.: This is an application for judicial review of a decision of the Commissioner of Patents to allow amendments to claim 9 of Canadian patent No. 2094313 under the provisions of section 8 [as am. by S.C. 1993, c. 15, s. 27] of the Patent Act, R.S.C., 1985, c. P‑4 on the basis of “clerical errors”.
[2]The patent is owned by the respondent Varco who has instituted an action in this Court, T‑436‑05, alleging that the applicant Pason has infringed that patent, including claim 9. Pason has defended that action and counterclaimed alleging invalidity of several claims of the patent, including claim 9.
[3]Varco, without advising Pason, during the foregoing litigation, made an application to the Commissioner of Patents for correction of some of the disclosure and of claims 4 and 9 of the patent under the provisions of section 8 of the Patent Act which states:
8. Clerical errors in any instrument of record in the Patent Office do not invalidate the instrument but they may be corrected under the authority of the Commissioner.
[4]This application for correction took the form of a letter dated May 17, 2005, from Varco’s lawyers/patent agents which, as to claim 9, which is the only correction challenged in these proceedings, stated:
Re: Section 8 of the Patent Act, Correction of Clerical Errors
This is a request for a Certificate of Correction of clerical error pursuant to Section 8 of the Patent Act in respect of Canadian Patent No. 2,094,313.
These errors are apparent on the face of the record as follows:
. . .
5. In claim 9 (on page 46),
(a) at line 15, delete “first” and insert “second”
Comments: This clerical error is intrinsically apparent from claim 9 itself. In the immediately preceding clause in claim 9, it reads “. . .a first relay connected to said drilling fluid pressure regulator, said first relay. . .” The clause containing the clerical error immediately following reads as follows: “. . .a second relay connected to said bit weight regulator, said first relay. . .” Clearly, this latter underlined “first” should read “second”, since the clause is dealing with the “second relay” not the “first relay”.
(b) at line 25, delete “controller”
Comments: This clerical error is apparent from the context of claim 9. The drill string controller is not controlling the rate of release of the drill string controller, but rather is controlling the rate of release of the drill string itself (see the preamble of claim 9: “An automatic drilling system for automatically regulating the releasing of the drill string of a drilling rig . . .”; and see lines 28, 31 and 33, where the language does not contain the clerical error, and see also for example, claim 10, where the corresponding language does not contain the clerical error).
(c) at line 27, delete “increases” and insert “decreases”
Comments: This clerical error is apparent both intrinsically from claim 9 itself and from the remainder of the specification. At lines 23 to 25, claim 9 states that when there is a decrease in drilling fluid pressure, there is an increase in rate of release of the drill string. This is the correct inverse relationship. On the contrary and in error, lines 25 to 28 provide that when the drilling fluid pressure increases the rate of release of the drilling string also increases. This latter “increases” clearly should read “decreases”. This inverse relationship and the use of the correct “decreases” when fluid pressure increases is set out in claims 1 and 11 and, inter alia, in the disclosure at page 4, lines 13 to 21.
(d) at line 30 delete “decreases” and insert “increases”
Comments: This clerical error is apparent intrinsically from claim 9 itself and from the remainder of the specification. At lines 31 to 33, claim 9 states that when there is an increase in bit weight, the rate of release of the drill string is decreased. This is the correct inverse relationship. On the contrary, and in error, lines 28 to 30 provide that when there is a decrease in bit weight, the rate of release of the drill string is decreased. Thus, at line 30, “decreases” should read “increases”. This inverse relationship and the use of the correct “increases” when bit weight decreases is set out in claim 2 and, inter alia, in the disclosure at page 4, lines 22 to 29.
. . .
The patentee respectfully requests correction of these clerical errors pursuant to Section 8 of the Patent Act. In furtherance of this request, and for the Commissioner’s convenience, we enclose a schedule that may be used, if thought appropriate, to append to the requested Certificate of Correction.
. . .
SCHEDULE
. . .
5. In claim 9 (page 46)
(a) at line 15, delete “first” and insert “second”;
(b) at line 25, delete “controller”;
(c) at line 27, delete “increases” and insert “decreases”; and
(d) at line 30, delete “decreases” and insert “increases”.
[5]Varco did not disclose to the Commissioner the fact of the ongoing litigation with Pason. The Commissioner did not seek any evidence or further submissions from Varco.
[6]On May 30, 2005 the Commissioner issued a certificate of correction stating that the following corrections were made to the patent:
In the Patent Grant:
1. In the disclosure: page 18, line 30 “cable 20” has been deleted to insert “cable 207” instead. Page 22, line 13 “brake 232" has been deleted to insert “brake 32” instead. Page 23, line 23, “off bottom” has been deleted to insert “on bottom” instead.
2. In the claims: at lines 13 and 14 of claim 4 (page 44); on line 13 (second occurrence) “an” and “increase” on line 14, have been deleted and replaced with “a decrease” instead. In claim 9 (page 46); a) at line 15, “first” has been deleted and replaced by “second”. b) at line 25, “controller” has been deleted. c) at line 27, “increases” has been deleted and replaced by “decreases”. d) on line 30, “decreases” has been deleted and replaced by “increases”. At line 1 of claim 13 (page 48), “claim 1" has been deleted and replaced by “claim 11”.
[7]In respect of claim 9, the corrections can be illustrated as follows:
9. An automatic drilling system for automatically regulating the releasing of the drill string of a drilling rig during the drilling of a borehole, comprising:
a drilling fluid pressure sensor;
a bit weight sensor;
a drilling fluid pressure regulator responsive to changes in drilling fluid pressure for outputting a signal representative of those changes;
a bit weight regulator responsive to changes in bit weight for outputting a signal representative of those changes;
a first relay connected to said drilling fluid pressure regulator, said first relay responsive to the output signal of said drilling fluid pressure regulator to supply a first drill string control signal at an output thereof;
a second relay connected to said bit weight regulator, said second (“first” deleted) relay responsive to the output signal of said bit weight regulator to supply a second drill string control signal at an output thereof;
a relay selector connected to said first and second relay to select any one of said first drill string control signal, said second drill string control signal, and both of said first and second drill string control signals to control the release of said drill string; and
a drill string controller coupled to said first and second relays wherein when said first drill string control signal represents a decrease in drilling fluid pressure, said drill string controller increases the rate of release of said drill string (“controller” deleted) and when said first drill string control signal represents an increase in drilling fluid pressure, said drill string controller decreases (“increases” deleted) the rate of release of said drill string, and further wherein when said second drill string control signal represents a decrease in bit weight, said drill string controller increases (“decreases” deleted) the rate of release of said drill string and when said second drill string control signal represents an increase in bit weight, said drill string controller decreases the rate of release of said drill string.
[8]Pason was not advised by Varco that a certificate of correction had been issued and, while the certificate was on the public record as of about May 30, 2005, the evidence is that neither Pason nor its legal counsel became aware of the certificate until September 22, 2005. These proceedings were initiated within 30 days of that date.
[9]Pason’s application is supported by an affidavit providing a record of the proceedings before the Commissioner and in action T‑436‑05 and further affidavits attesting as to when they and their law firm became aware of the certificate of correction. Varco has filed an affidavit of Robert H. Barrigar, a Canadian lawyer and patent agent having much experience in the areas of patent law and prosecution. Pason challenges the admissibility of that affidavit.
[10]The Commissioner did not appear or make representations in these proceedings.
Issues
[11]The issues to be determined in this application are:
1. Standing and Timeliness. Does Pason have standing to seek review of the Commissioner’s decision to issue a certificate of correction and, if so, did it bring this proceeding in a timely manner? If not, will an extension of time be granted?
2. Standard of Review. What is the standard to be applied by the Court in reviewing the Commissioner’s decision?
3. Is the Barrigar affidavit admissible in these proceedings?
4. Did the Commissioner commit a reviewable error?
5. What relief if any, is to be given?
1. Standing and Timeliness
[12]The Patent Act does not provide any mechanism for a third party to challenge a decision made by the Commissioner under section 8 of that Act. Precedent shows that unsuccessful patentees who were refused corrections under these provisions have sought judicial review under the provisions of section 18.1 [as enacted by S.C. 1990, c. 8, s. 5; 2002, c. 8, s. 27] of the Federal Courts Act, R.S.C, 1985, c. F‑7 [s. 1 (as am. by S.C. 2002, c. 8, s. 14)]. There is no precedent in respect of a third party seeking to challenge such a decision.
[13]Subsection 18.1(1) of the Federal Courts Act permits “anyone directly affected” by the matter in respect of which relief is sought, to bring an application for judicial review. Here Pason, being sued for infringement of the patent at issue, and counterclaiming as to invalidity, is clearly “directly affected” by the decision. Varco kept quiet about its application for correction, and about the grant of the certificate. One expects that it would have sooner or later made that disclosure on discovery. Varco did, several months after the amendment had been made, make reference to it in its reply and defence to counterclaim. Why Varco or its patent agents or its lawyers were not more forthright has not been disclosed.
[14]Pason brought this application within 30 days from the date that it had actual knowledge of the certificate. The circumstances here are similar to those reviewed by this Court in College of Chiropodists of Ontario v. Canadian Podiatric Medical Association (2004), 248 D.L.R. (4th) 277 (F.C.), where the Court permitted an extension of time to challenge a trade‑mark notice where a party did so within 30 days of actual knowledge. In that case Justice Heneghan said, at paragraphs 81‑83:
When did that thirty‑day time period begin to run? In Magnotta Winery Corp. v. Vintners Quality Alliance of Canada (1999), 1 C.P.R. (4th) 68 (F.C.T.D.), the Court addressed the question of timeliness and whether an extension of time should be granted.
In that case, the Registrar published notice of the mark in the Trade‑marks Journal dated May 27, 1998. The applicants learned of this on August 20, 1998 and immediately contacted the respondent to communicate their objection to their receipt of an official mark. Subsequently, the applicants sought direction from the Court as to the proper procedures to be followed in challenging the decision of the Registrar.
At p. 78, the Court made the following observations concerning the lack of knowledge by the applicants about the publication of the official mark:
I would not characterize Magnotta’s failure to notice the publication in the Trade‑marks Journal of May 27, 1998, as “going to sleep” as counsel for the VQA argues. There was a certain amount of subterfuge involved in the VQA’s application for, and obtaining of the publication of adoption and use of ICEWINE as its official mark without notice to Magnotta. Not every person, nor every counsel, continually checks the publications in the Trade‑marks Journal, particularly if they have no reason to suspect that it might contain information relevant to them or their clients’ situation, which if the VQA is not a public authority, Magnotta’s counsel could not be expected to find. The cases state that notice in that journal is public notice to all the world, but surely there has to be some reasonable likelihood that the person to whom the notice is thereby given should expect to find information relevant to their situation in the journal before it can be relied upon as notice to them.
[15]I find that Pason has brought this application in a sufficiently timely fashion and, if any extension of leave is required, it is hereby granted nunc pro tunc.
2. Standard of Review
[16]The Patent Act provides for appeals to the Federal Court from decisions of the Commissioner or others in certain instances such as refusal to grant a patent (section 41 [as am. by R.S.C., 1985 (3rd supp.), c. 33, s. 16]) or refusal of a re‑examination board to issue a certificate upon re‑examination of a claim of an issued patent (section 48.5 [as enacted idem, s. 18]). No express provision is made in respect of certificates of correction under section 8 of the Act.
[17]There are few precedents particularly as to section 8. In one of them, this Court was faced with judicial review of a decision of the Commissioner rejecting an application for correction under section 8 of the Patent Act which would have added a further claim for convention priority, in Bristol‑Myers Squibb Co. v. Canada (Commissioner of Patents) (1997), 77 C.P.R. (3d) 300 (F.C.T.D.). At page 305 of the report of that decision, Justice Pinard said that an inquiry as to section 8 divides itself into two inquiries, the first is factual; namely, was there a clerical error, and the second is discretionary, that is, if there was a clerical error, what, if anything, to do about it:
Section 8 of the Act was interpreted before by this Court in Bayer Aktiengesellschaft v. Canada (Commissioner of Patents) (1980), 53 C.P.R. (2d) 70. At page 74 of that decision, Mahoney J. stated:
Section 8 provides that “clerical errors . . . may be corrected by certificate under the authority of the Commissioner”. “May” is permissive; it is not directory nor mandatory. There is nothing in the circumstances contemplated by s. 8 that would lead me to conclude that the respondent is obliged to issue a certificate of correction once he determines that what is sought to be corrected is a clerical error. It is in his discretion to do so. The Court cannot substitute its discretion for his. Mandamus does not lie to require the respondent to issue a certificate under s. 8 of the Patent Act.
(Note 4: At the time of that decision, section 8 was essentially the same and read: “Clerical errors in any instrument of record in the Patent Office shall not be construed as invalidating the instrument, but, when discovered, they may be corrected by certificate under the authority of the Commissioner.”)
Thus, even where an error is accepted as clerical in nature, the Commissioner of Patents’ decision whether to correct it is discretionary. In my view, this interpretation remains valid, notwithstanding the subsequent adoption of rule 35 in replacement of Patent Rules, C.R.C. 1978, c. 1250, rule 141.
(Note 5: Rule 141. “Any document relating to an application, other than a specification or drawing, may be corrected by the Commissioner if he is satisfied that the document contains a clerical error.”) This change in the Rules, in the context of section 8 of the Act, does nothing more than to formally allow “the applicant” to request the correction of obvious clerical errors in the specified documents. Such a request made by the applicant under rule 35, however, remains subject to the approval of the Commissioner as edicted in section 8 of the Act.
The Commissioner’s decision, therefore, was discretionary.
[18]This decision went to the Federal Court of Appeal, reported (1998), 82 C.P.R. (3d) 192. That Court, at paragraphs 12 and 13, stated that none of the parties questioned that the Commissioner’s findings were factual in nature, thus such findings would neither be confirmed nor denied by the Court, the only issue was that of jurisdiction. The Court found that the Commissioner was correct in denying to make a correction on the basis that it went beyond the instrument itself.
[19]Recently, in a case respecting an appeal from the Commissioner, not a judicial review, this Court nonetheless embarked on an analysis of the appropriate standard of review in respect of a decision of the Commissioner to reject an application for a patent on the basis of obviousness. In CertainTeed Corp. v. Canada (Attorney General) (2006), 50 C.P.R. (4th) 177 (F.C.), Justice Heneghan nonetheless provided an analysis of the standard of review. At paragraphs 22 to 27, she concluded that, in that circumstance, the standard was correctness:
The first question to be considered is the appropriate standard of review since the decision in issue was made by a statutory decision‑maker exercising delegated authority. In this regard, I refer to Dr. Q v. College of Physicians and Surgeons of British Columbia, [2003] 1 S.C.R. 226. Identifying the appropriate standard of review requires the Court to undertake a pragmatic and functional analysis having regard to four factors: the existence or absence of a privative clause; the expertise of the tribunal; the purpose of the legislation; and the nature of the question.
The Act does not contain a privative clause and section 41 allows an appeal from a decision of the Commissioner. Accordingly, this first factor is neutral.
The Commissioner is experienced in dealing with patent applications and appeals under the Act. He has expertise in that area and accordingly, his decisions will attract a high degree of deference.
The purpose of the Act is to encourage invention and to regulate the issuance of patents in Canada; see Pope Appliance Corp. v. Spanish River Pulp and Paper Mills Ltd., [1929] A.C. 269 (Canada P.C.).
Finally, there is the nature of the question. The ‘020 Application was rejected on the basis of obviousness. Obviousness is a question of fact; see Lido Industrial Products Ltd. v. Teledyne Industries Inc. (1981), 57 C.P.R. (2d) 29 (F.C.A.). However, the issue in this appeal is whether the Commission applied the correct test for obviousness and that is a question of law.
On balance, I conclude that the appropriate standard of review here is correctness. Pursuant to section 41 of the Act, the Court may apply the appropriate test on a de novo basis; see Progressive Games, Inc. v. Canada (Commissioner of Patents) (1999), 177 F.T.R. 241 (T.D.).
[20]In the circumstances of this case where corrections were made under the provisions of section 8 of the Patent Act, a standard of review analysis must be done, as set out by the Supreme Court of Canada in Dr. Q v. College of Physicians and Surgeons of British Columbia, [2003] 1 S.C.R. 226.
[21]The findings of Justice Heneghan in CertainTeed, at paragraphs 23, 24 and 25, apply equally in these proceedings, however, consideration also must be given here to the nature of the question now before this Court. Section 8 of the Patent Act provides that “Clerical errors in any instrument of record in the Patent Office . . . may be corrected by certificate under the authority of the Commissioner.” This involves two steps, first there must be a determination in that there has been such an error, then the Commissioner “may” correct that error, that is, a discretion remains. The determination as to whether a “clerical error” exists is essentially factual, it requires no special expertise that the Commissioner may possess in patent or scientific matters. A reasonable but not high degree of deference can be afforded to the Commissioner in this regard. The second step, that of determination as to whether to correct an error if it is seen to exist, is discretionary (see Bayer Aktiengesellschaft v. Commissioner of Patents, [1981] 1 F.C. 656 (T.D.), per Justice Mahoney, at page 660 and requires a substantial degree of deference.
3. Admissibility of Barrigar Affidavit
[22]Varco has filed an affidavit of Robert H. Barrigar as part of its record in response to this application. Varco has filed no other evidence. Pason objects to the filing of this affidavit and its use in these proceedings.
[23]Mr. Barrigar is an experienced and knowledgea-ble Canadian lawyer specializing in intellectual property matters and patent agent whose opinion as to Canadian patent law and procedures in the Canadian Patent Office are entitled, in the proper circumstances, to great respect. I find, however, that the affidavit as tendered in these proceedings does little more than raise arguments and provide opinions as to law. The first is the function of counsel, the second is the function of the Court. Neither is the function, in these proceedings, of Mr. Barrigar.
[24]Mr. Barrigar has no connection with any party, nor does he have any evidence of a factual nature beyond what is apparent from the record of the Patent Office already before this Court. His opinions, as he has stated in cross‑examination, especially at pages 8 through 11 of the transcript, are drawn only from that record and inferences which he has made in that respect.
[25]The mandate which Mr. Barrigar received is set out in paragraph 7 of his affidavit:
In late November 2005, Mr. Andrew Shaughnessy of the solicitors for the Applicants asked me to consider presenting an affidavit primarily to the practice of the Commissioner as it pertains to s. 8 of the Patent Act generally and as to its application to the Certificate of Correction applying to Claim 9 of the patent in suit in these proceedings (Canadian Patent No. 2,094,313 entitled AUTOMATIC DRILLING SYSTEM and issued 24 August 1999 to the patentee Varco, L.P.) in particular. I agreed to offer this affidavit to the Court in the hope that it may assist the Court in this matter.
[26]Had the affidavit been directed “to the practice of the Commissioner as it pertains to s. 8” it may have had some probative value. However, even to the extent that the affidavit addresses such matters, it overwhelms any such observations with argument and legal opinion such that it is not possible to draw out what might have served such value, from what is otherwise stated. As an example, paragraph 11 states:
Whether a given attribute of a patent exists by reason of a submission by the applicant or patentee supported by unsubstantiated facts, or instead by reason of the Commissioner having been satisfied that facts have been established that invoke the proper statutory foundation of the attribute, it has been my experience that the courts have been reluctant to entertain proceedings of the present type for review of the administrative procedure that gave rise to the attribute in question. While it is for the Court as enlightened by counsel in the present proceedings to decide whether or not the present proceedings are suitable to the present situation, I observe that there are both substantive and practical reasons for the Court to decline to entertain such proceedings, and instead to insist that the applicant in such proceedings deal with the issues in proceedings relating to the validity of the patent.
[27]I appreciate that it has sometimes been the practice to make what some judges have whimsically called a “Jenny Craig” order, that is, put it all in “subject to weight” and then afford little or no weight to the evidence, I believe that it is proper here simply to state up front that the affidavit is inadmissible. I say that even if the affidavit was admitted, my decision in these proceedings would have been the same.
[28]It follows that the transcript of the cross‑examination of Mr. Barrigar should also be removed from the records in these proceedings.
4. Did the Commissioner commit a reviewable error?
[29]The circumstances in which the “clerical error” was presented to the Commissioner have been reviewed earlier in these reasons. Only submissions of Varco’s lawyers/agents were provided to support the alleged error. No evidence other than what is apparent from the face of the patent was provided and none was requested by the Commissioner.
[30]The Court is asked to review the Commissioner’s decision only in respect of claim 9. The changes requested in respect of claim 9 are numerous, “first” is to become “second”, “drill string controller” is to become “drill string”, “increases” is to become “decreases” in a first instance and “decreases” is to become “increases” in a second. A careful review of claim 9 does not demonstrate that such changes are immediately apparent as clerical errors, that is, an error of a clerk or stenographer arising out of the mechanical process of writing or transcribing. The argument of Varco’s lawyers/agents as filed with the Patent Office does nothing to enlighten the Commissioner in that regard.
[31]In fact, the letter from the lawyers/agents to the Patent Office presents a puzzling dichotomy. Other errors for which correction was requested are apparent from the face of the patent, particularly when compared with the equivalent United States patent attached to that letter and referred to by the lawyers/agents to show that such errors are not present in the United States patent and were obvious clerical errors. When it comes to claim 9 the lawyers/agents make no such reference and, in fact, claim 9 in its unamended form is in many but not all respects the same in the United States and Canadian patents.
[32]The practice of the Commissioner in dealing with section 8 requests is set out in the Manual of Patent Office Procedure (MOPOP) section 23.04 and following. The Commissioner requires only a letter setting out the circumstances leading to the alleged mistake. There is no indication that the Commissioner requires an affidavit or other evidence as to how the mistake arose. It is difficult, therefore, apart from what would be immediately apparent from the face of the patent, to understand how the Commissioner would decide that there was a “clerical error”. In exercising discretion to amend, no guidelines are provided in the Patent Act or Rules [Patent Rules, SOR/96-423] however MOPOP, section 23.04.02, subsections 6, 7 and 8 state that no correction will be made which affects the rights of others, mentioning specifically backdating a priority date, broadening a claim of a patent or, revocation or correction to a disclaimer or dedication. Thus, while correction to a claim which changes its character in any way from that immediately apparent on its face, is not mentioned, however the Commissioner has indicated a sensitivity in exercising discretion as to the rights of others.
[33]Section 8 correction is available at anytime, unlike corrections by way of re‑issue which are available only for a period of four years from the date that the patent originally issued. Re‑issue requires evidence as to error arising from “inadvertence, accident or mistake” whereas section 8 requires only that there be a “clerical error”. Re‑issue provides for intervening rights to accrue where a claim has been varied from that originally granted. Section 8 does not, although MOPOP, section 23.04.03 makes the unsubstantiated statement that the patent must be read as if it had always existed in the corrected form. A comparison of re‑issue on the one hand and section 8 clerical error correction on the other, makes it clear that section 8 is intended to deal only with errors of an obvious clerical nature that have no material effect on the patent as it would always have been understood by anyone prepared to overlook simple and obvious clerical errors.
[34]The nature of a section 8 “clerical error” has been expressed by Justice Mahoney of this Court as something that arises in the mechanical process of writing or transcribing. In Bayer Aktiengesellschaft v. Commissioner of Patents he said, at page 660:
I accept that a clerical error is an error that arises in the mechanical process of writing or transcribing and that its characteristic does not depend at all on its relative obviousness or the relative gravity or triviality of its consequences. I accept the decision of the Comptroller in Heberlien and Co. A.G.’s Application ([1971] F.S.R. 373 at p. 377) that:
. . . if an error originates as a clerical error it does not change its nature if it is overlooked by someone checking the document in which it occurs or otherwise working on it. It is the clerical origin of the error that is important.
[35]In Upjohn Co. v. Commissioner of Patents et al. (1983), 74 C.P.R. (2d) 228 (F.C.T.D.) Justice Muldoon expressed a similar view, at page 232:
Such errors are not defined in the Act or Rules. On the plain meaning of the term Parliament must have intended this expression to mean errors caused by a clerk or stenographer.
[36]This decision was reversed [sub nom. Novopharm Ltd. v. Upjohn Co.] (1984), 2 C.P.R. (3d) 432 (F.C.A.) but on another point.
[37]In reviewing the record here as far as the factual finding as to alleged “clerical errors” respecting claim 9 are concerned, even affording reasonable deference to the Commissioner, there is nothing on the record that could be said to provide a basis for saying that what has been submitted by Varco as to claim 9 were “clerical errors”. The alleged errors are substantive in nature and, if claim 9 were to be amended in the manner requested by Varco, meaningful changes to what is set out in claim 9 would be the result. Nothing on the face of the record in the Patent Office suggests that such changes would have been understood to represent simple corrections to “clerical errors”.
[38]As to the second step provided for in section 8, namely the exercise of discretion by the Commissioner as to amendment, even if his findings as to “clerical errors” in claim 9 cannot be assailed, it is abundantly clear that the Commissioner would not have allowed the amendments if he had been aware that such claim was the subject of a contested action in the Court. Varco says it is up to the Commissioner to look up Court records to see if there is litigation or at least to inquire of the applicant as to whether litigation or other matters that may affect his discretion, are pending. This places far too great an onus on the Commissioner and demands an unrealistic level of prescience. The applicant and its agent owe a duty of candour to the Patent Office to make a full, fair and frank disclosure of all of the relevant circumstances. A fundamental canon adopted by the Intellectual Property Institute of Canada in its Code of Ethics in 2001 states:
FUNDAMENTAL CANON
The most important attribute of a member of the Institute is integrity. This principle is implicit in this Code of Ethics and in each of the Rules and Commentaries thereunder. Over and above the possibility of formal sanction under any of the rules in this Code, an agent must at all times conduct himself or herself with integrity and competence in accordance with the highest standards of the profession so as to retain the trust, respect and confidence of members of the profession and the public.
[39]Lawyers and agents who are members of the Institute have undertaken to adhere to this canon. Similarly the Canadian Bar Association and law societies of the provinces require, in their standards of ethics, that a lawyer carry on his or her professional duties honourably and with integrity.
[40]Given the lack of specific statutory requirements or regulations affecting section 8, it is incumbent upon the agent and lawyer dealing with the matter to act with integrity. Disclosure of an obviously relevant matter such as ongoing litigation is a clear obligation. Where the Commissioner made an exercise of discretion ignorant of a relevant matter such as this, the decision cannot be said to withstand a reasonably probing examination.
[41]The Commissioner’s decision to amend claim 9 under the provisions of section 8 of the Patent Act constitutes a reviewable error and must be set aside.
[42]A judgment will issue stating that the Commissioner’s decision to amend claim 9 under the provisions of section 8 of the Patent Act, is set aside. Other amendments made by the Commissioner at the same time are not challenged and remain unaffected. No order will be made as to what subsequent steps, if any, may be taken by the patentee.
[43]The applicants, being successful are entitled to their costs, from Varco, L.P., to be taxed at the middle of Column III [of the Federal Court Rules, SOR/98-106, r. 1 (as am. by SOR/2004-283, s. 2), Tariff B].
JUDGMENT
UPON APPLICATION made to this Court on Monday, the 12th day of June 2006 for judicial review of a decision of the Commissioner of Patents allowing amendments to claim 9 of Canadian letters patent No. 2094313 under the provisions of section 8 of the Patent Act, R.S.C., 1985, c. P‑4;
AND UPON a motion made by the applicant returnable at the same time to strike the affidavit of Robert H. Barrigar from the record of the respondent Varco, L.P.;
AND UPON reviewing the records filed and hearing submissions from counsel for the applicants and for the respondent Varco, L.P., the Commissioner having made no submissions;
AND FOR the reasons delivered herewith;
THE COURT ADJUDGES THAT:
1. An extension of time to file this application, if any is needed, is granted, nunc pro tunc;
2. The certificate of correction issued by the Commissioner of Patents dated May 30, 2005, in respect of Canadian patent No. 2094313, to the extent that it provides for amendments to claim 9 of that patent, is quashed and set aside;
3. The affidavit of Robert H. Barrigar submitted as part of the record of Varco, L.P. herein, and the transcript of the cross‑examination therein, shall be removed from the records in these proceedings;
4. The applicants are entitled to recover costs from the respondent Varco, L.P. to be taxed at the middle of Column III.