IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application 524,633, having been deemed abandoned under
Subsection 30(1) of the Patent Act, the Applicant has asked that
the matter be reviewed by the Commissioner of Patents. The status
of the application has consequently been reviewed by the Patent
Appeal Board and the Commissioner of Patents. The findings of the
Board and the ruling of the Commissioner are as follows:
Agent for the Applicant
Fetherstonhaugh & Co.,
55 Metcalfe Street, Suite 900,
Ottawa, Ontario,
K1P 5Y6
This decision deals with the Applicant's request for review by
the Commissioner of Patents of the status of application serial
number 524,633 (Class 167-227) filed on December 5, 1986 and
assigned to Ciba-Geigy AG which was deemed abandoned for failure
of the Applicant to restore the application within the time limit
set by Subsection 73(2) of the Patent Act. The application is
entitled RESINATE SUSTAINED RELEASE DEXTROMETHORPHAN COMPOSITION
and the inventors are Franz X. Fischer and Satish C. Khanna.
The examiner in charge of the application allowed the application
on April 25, 1990 and a notice of allowance was mailed on June
19, 1990. The Applicant failed to pay the final fee by the due
date of December 19, 1990 with the result that the application
became forfeited pursuant to Subsection 73(1) of the Act. The
Applicant did not restore the application within the time limit
of June 19, 1991 set by Subsection 73(2) of the Act and on March
2, 1992 the Office sent a letter to the Applicant stating that
the application was deemed to be abandoned as of December 19,
1990. On March 31, 1992 subsequent to receiving the notice of
abandonment the Applicant wrote requesting that the application
be reinstated and providing an affidavit of Patrick K. Sloan, the
Office Manager of Applicant's agent explaining that the failure
to both pay the final fee and to restore the application within
the respective time limits was due to a misinterpretation of the
Applicant's instructions.
On April 24, 1992 a supplementary letter was submitted by the
Applicant enclosing both a final fee and a restoration fee in the
amount of $1,100.00 and on June 15, 1992 the Applicant submitted
a memorandum of fact and law setting forth its position in the
matter. At the Applicant's request a hearing was held on May 26,
1993 at which the Applicant was represented by Mr. J. Bochnovic
and Mr. D. Hill and the members of the Board were F.H. Adams,
Chairman, M. Howarth, member and M. Wilson, member. The hearing
was held concurrently with a hearing on a similar case in which
the applicant was represented by Mr. D. Watson of Cowling,
Strathy & Henderson.
This decision deals with Patent Office procedure concerning
forfeiture rather than the subject matter of the application.
Under the provisions of Subsection 73(1) of the Act an applicant
has six months from the date of the, notice of allowance in which
to pay the final fee. If the applicant fails to pay the final fee
within the time limit the application becomes forfeited and the
applicant then has a further six months under the provisions of
Subsection 73(2) to restore the application by the payment of a
restoration fee along with the original final fee. When an
applicant fails to restore an application within the time limit
it has been the practice of the Office to deem the application to
be abandoned and to give the applicant 12 months from the date on
which the application became forfeited to reinstate the
application under the provisions of Section 30 of the Act, i.e.
the applicant is given a further six months from the time limit
for restoration in which to revive the application. The question
before the Board is whether or not to change the date of the
application's deemed abandonment as established by the
longstanding Office policy.
In this instance the application was forfeited and not restored
and it was not until the Applicant became aware that the
application was deemed abandoned that action was taken to revive
the application. Thus on December 19, 1990 the application became
forfeited and under present policy the Applicant had until
December 19, 1991 in which to reinstate. However since the
Applicant did not become aware that the application was deemed to
be abandoned until early March, 1992, too late to reinstate
according to the time limit set out in Subsection 30(2) of the
Act the Applicant has submitted that the date of deemed
abandonment be changed to June 19, 1991 so that the final date
for reinstatement would be June 19, 1992.
The Board has carefully considered the Applicant's written and
oral arguments and has concluded that the date of deemed
abandonment should not be changed. The Board therefore recommends
that Applicant's request that the date of the application's
deemed abandonment be changed from December 19, 1990 to June 19,
1991 be refused.
F.H. Adams M. Howarth M. Wilson
Chairman Member Member
Patent Appeal Board Patent Appeal Board Patent Appeal Board
I concur with the recommendation of the Patent Appeal Board and
refuse to grant the Applicant's request that the date of the
application's deemed abandonment be changed from December 19,
1990 to June 19, 1991.
M. Leesti
Commissioner of Patents
Dated at Hull, Quebec
this l5thday of July, 1993