Federal Court Holds Issued Patent Valid Despite Erroneous Issue Fee Payment

In a February 4, 2016 decision, Apotex Inc v Pfizer Inc ("Apotex"), 2016 FC 136, the Federal Court found that an erroneous underpayment of a "final fee" to issue a patent did not invalidate the issued patent. In so doing, the Court distinguished between substantive breaches of the statute that go to the heart of the patent and administrative breaches of the statute in dealings with the Canadian Intellectual Property Office (CIPO).

Background

Once a patent application is deemed to comply with the Patent Act and the Patent Rules, CIPO issues a notice of allowance which requires the applicant to pay a final fee for issuance of the patent. The Rules currently outline two tiers of fees, one for "small entities" and a higher fee for entities other than small entities, i.e., "large entities". If the final fee is not paid within six (6) months of the notice of allowance, the application is "deemed abandoned" under s. 73(1)(f) of the Act.