In Unicrop Ltd. v. Canada (Attorney General) (2010 FC 61), the Federal Court (FC) upheld the Commissioner of Patents' decision finding Canadian Patent Application No. 2,531,185 (the '185 Application) abandoned. The FC confirmed that only the "authorized correspondent" could act on behalf of the applicant to pay fees and request reinstatement. The FC also held that equitable relief was not available where granting it would be contrary to statutory requirements.

Unicrop's representative filed the '185 Application on January 3, 2006, and duly paid the first two annual maintenance fees, but not the third. Unicrop then submitted a reinstatement fee and the third and fourth maintenance fees through a different representative on June 23, 2008. The Canadian Intellectual Property Office (CIPO) acknowledged reception of the payments but advised Unicrop that the payments were rejected because no Appointment of Representative had been signed. Unicrop had failed to submit this form, which it had signed, to CIPO. CIPO then advised that the payment could not be accepted as the period for reinstatement had elapsed and that the '185 Application was deemed abandoned and dead pursuant to s.73(1) of the Patent Act ("the Act")

The FC first held that the standard of review on this question of law was correctness, following Dutch Industries v. Canada (Commissioner of Patents) (2003 FCA 121).

The FC noted that, pursuant to section 6(1) of the Patent Rules, CIPO will only communicate with the authorized correspondent, as defined in section 2 of those Rules, for the purpose of prosecuting or maintaining an application. As in Sarnoff Corporation v. Canada (Attorney General) (2008 FC 712, aff'd 2009 FCA 142), the FC noted the Act and Rules are silent on when a Notice of Appointment must be submitted and its effect on actions taken, but section 6(1) of the Rules should not be read so restrictively as to prohibit an agent from engaging in routine matters such as payment of maintenance fees. Thus each case must be determined on its own merit.

Unlike Sarnoff, the evidence clearly established that the new representative failed to file a Notice of Appointment or clearly establish legal representation prior to the reinstatement deadline. CIPO had no communication history with this representative, and another authorized correspondent was on file at the time. The FC held that no omissions or ambiguities in the complicated maintenance fee regime could be resolved in favour of Unicrop. The new representative is not Unicrop's representative merely because it purports to be, even if such was indisputably Unicrop's intention. The FC held that CIPO cannot be deemed to have knowledge of a change of representative as such an interpretation would render pointless the definition of "authorized correspondent" in the Rules and create uncertainty coupled with an administrative burden for CIPO. Therefore the FC held that it was reasonable for the Commissioner of Patents to refuse the payment of fees and reinstatement of the '185 Application.

The FC also considered section 3.1 of the Patent Rules, which requires CIPO to provide notice of problems with the payment of fees to the applicants in certain situations. The FC held that this provision is subject to section 6(1) of the Rules and therefore requires that the proper representative request reinstatement. Thus as per its findings above, this provision was of no assistance to Unicrop.

Finally, the FC held the doctrine of relief against forfeiture to be inapplicable in this case because Unicrop failed to comply with the statute and no error was committed by CIPO. Granting equitable relief in this case would nullify the time limit provided by statute and contradict its plain terms. Following F. Hoffman-LaRoche AG v. Canada (Commissioner of Patents) (2003 FC 1381, aff'd 2005 FCA 399), the FC held that it could not give equitable relief when a forfeiture results from a statutory rule since a judge must give effect to the statute. The Court would otherwise substitute its own deadline for the one enacted by Parliament.