BETWEEN:
and
[1] This is a motion by the sole respondent to this case, the Commissioner of Patents (the Commissioner) under rules 3, 8 and 351 of the Federal Courts Rules (the rules) to submit in this appeal evidence on a question of fact.
[2] Same motion, through an amendment, also seeks an extension of the delay for the service and filing by the Commissioner of a memorandum of fact and law under rule 346(2). This latest aspect of the motion is not in dispute.
Background
[3] On April 15, 2004, Novozymes A/S (Novozymes) requested pursuant to section 48.1 of the Patent Act, R.S.C. 1985, c. P-4, as amended (the Patent Act) a re-examination of the patent numbered 2,093,422 issued to the appellant herein, Genencor International, Inc. (Genencor).
[4] Section 48.1 of the Patent Act reads as follows:
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48.1 (1) Any person may request a re-examination of any claim of a patent by filing with the Commissioner prior art, consisting of patents, applications for patents open to public inspection and printed publications, and by paying a prescribed fee. (2) A request for re-examination under subsection (1) shall set forth the pertinency of the prior art and the manner of applying the prior art to the claim for which re-examination is requested. (3) Forthwith after receipt of a request for re-examination under subsection (1), the Commissioner shall send a copy of the request to the patentee of the patent in respect of which the request is made, unless the patentee is the person who made the request. |
48.1 (1) Chacun peut demander le réexamen de toute revendication d'un brevet sur dépôt, auprès du commissaire, d'un dossier d'antériorité constitué de brevets, de demandes de brevet accessibles au public et d'imprimés et sur paiement des taxes réglementaires. (2) La demande énonce la pertinence du dossier et sa correspondance avec les revendications du brevet. (3) Sur réception de la demande, le commissaire en expédie un double au titulaire du brevet attaqué, sauf si celui-ci est également le demandeur. |
[5] A re-examination Board (the board) was in time convened by the Commissioner.
[6] On November 16, 2005, the board issued its decision wherein it concluded that all claims of the patent were anticipated and therefore canceled all said claims.
[7] On February 14, 2006, Genencor appealed to this Court the decision of the board and named the Commissioner as sole respondent.
[8] On May 30, 2006, Novozymes filed a motion to be added as a party respondent or as an intervener. Said motion was heard on June 5, 2006 and on July 13, 2006, I issued a decision by which I considered that Novozymes had to be seen within rule 338(1)(a) as a party in the first instance who was adverse in interest to Genencor in the within appeal. Therefore, I issued an order adding Novozymes as a respondent party in the within appeal.
[9] Said decision was however quashed by a judge of this Court on August 24, 2006. An appeal to the Federal Court of Appeal has been launched by Novozymes against this latest decision. At all relevant times, the Commissioner was not removed as a party respondent.
[10] In the factual background of my decision of July 13, 2006, I noted that throughout the process followed by the board, Novozymes received a copy of the communications issued by the board to Genencor. That apparently prompted Novozymes on two occasions, to wit on March 14, 2005 and September 29, 2005, to send submissions (the Novozymes’ submissions) to the board without copying Genencor with same. The record so far does not reveal or indicate what action the board took upon reception of the Novozymes’ submissions.
[11] Holding apparently that in rendering its November 16, 2005 decision the board did take into consideration the Novozymes’ submissions, Genencor was allowed and filed on August 8, 2006 an amended notice of appeal by which it alleges that the board had failed to follow the procedure set out in sections 48.1 to 48.4 of the Patent Act and had breached the principles of natural justice and procedural fairness. It was claimed, more specifically, that:
4. “In rendering its decision, the appellant submits that the Re-examination Board failed to follow the procedure set out in Sections 48.1 to 48.5 of the Patent Act. More particularly,
a. The Re-examination Board erred in accepting and considering the new material and evidence submitted by the requester Novozymes A/S after the initial request for re-examination under Section 48.1 was made.
5. In rendering its decision, the appellant submits that when the Re-examination Board accepted and considered the further submissions made by the requester Novozymes on March 14, 2005 and September 29, 2005, it breached the principles of natural justice and procedural fairness by failing to inform the appellant of said submissions.
6. In rendering its decision, the appellant submits that the Re-examination Board breached the principles of natural justice and procedural fairness in failing to provide the appellant with the opportunity to respond to adverse submissions made against them pursuant to Section 48.2(5) of the Patent Act.”
[12] Genencor’s supplemental appeal book was served on August 25, 2006 and its amended memorandum of fact and law on October 10, 2006. In a letter dated November 8, 2006, the Commissioner indicated initially that he would not submit a memorandum of fact and law but would file a motion to submit in this appeal evidence on a question of fact.
Analysis
[13] As I see the situation now, Genencor sustains that the board, established under the authority of the Commissioner, accepted and did consider the Novozymes’ submissions in coming to its decision of November 16, 2005.
[14] As alluded to earlier, the record before this Court does not indicate what the Commissioner indeed did with the Novozymes’ submissions.
[15] The following extract from the board’s decision of November 16, 2005 appears to indicate however that said submissions were not taken into consideration by the board in coming to its decision, and that the only documentation the board considered on behalf of Novozymes was the latter’s initial request for re-examination of November 15, 2004:
In accordance with Subsection 48.2(2) of the Patent Act, the Re-examination Board has further reviewed the request for re-examination of claims 1 to 21 of Patent number 2,093,422 as well as the patentee’s comments put forward in the responses dated December 3, 2004 and August 9, 2005. The Board has determined that the request still raises a substantial new question of patentability with regard to these claims.
(my underlining)
[16] As reflected at paragraph [37] of my decision dated July 13, 2006, the Commissioner did not intend, appropriately, to defend in the appeal herein the merits of the board’s decision.
[17] This is still his position and the evidence he now wants to submit in this appeal, to wit an affidavit dated November 24, 2006 of a Murray Wilson, the actual chairperson of the Patent Appeal Board with the Patent Office (the Wilson affidavit), does not change that situation.
[18] My understanding is that the Wilson affidavit brings what can be considered an objective description of the regulatory framework underlining the re-examination process and of the actual unfolding of the said process in this instance.
[19] Only the Commissioner, who appends in addition to be the actual sole respondent named by Genencor in this appeal, would possess the material information to inform the Court with respect to the view put forwards now by Genencor that the board did receive and consider Novozymes’ submissions.
[20] At paragraphs 6 to 8 of the Wilson affidavit, the Court would be inform of the following:
6. During the re-examination process, any correspondence that was sent to the patentee was also sent as a copy to the requestor as a courtesy. The requestor is routinely copied on correspondence from the re-examination board to the patentee to indicate that the re-examination process is ongoing. At no time after the re-examination process was initiated was correspondence directly addressed to the requestor nor was the requestor invited to respond to any courtesy correspondence that it received from the re-examination board.
7. During various stages during the re-examination process, the requestor did submit additional material at their own discretion. Receipt of this material was never confirmed in writing to the requestor by the re-examination board and generally, as any submissions relating to any patent file, these were place in the patent file.
8. The re-examination board did not consider the additional material in the subsequent submissions by the requestor. The Office has no control over the submissions of any person and routinely receives material, which is placed in the patent file without further consideration. Under section 10 of the Patent Act, there is a requirement for documents filed in connection with a patent to be open to public inspection in the Office, irrespective of any further consideration.
(my underlinings)
[21] My estimate is that the evidence contained in the Wilson affidavit is material to the new issues raised by Genencor on August 8, 2006 in that it informs the Court on the regulatory framework and the factual sequence of the re-examination process herein followed. That affidavit, from my point of view, does not venture inappropriately on any aspects the Commissioner should not tackle.
[22] As indicated by the Federal Court of Appeal in Genex v. Canada (Attorney General), 2005 FCA 283, at pars. 66 and 67:
[66] Whether in judicial review or appeal proceedings, the federal agency that made a decision is not authorized to come and defend the decision it made, still less to justify itself. As Mr. Justice Estey said in Northwestern Utilities Ltd. et al. v. City of Edmonton, [1979] 1 S.C.R. 684, at page 709 (where the agency had presented on appeal detailed and elaborate arguments in support of its decision), “[s]uch active and even aggressive participation can have no other effect than to discredit the impartiality of an administrative tribunal either in the case where the matter is referred back to it, or in future proceedings involving similar interests and issues or the same parties”.The agency is entitled to be represented on appeal, but its submissions must in principle be limited to an explanation of its jurisdiction, its procedures and the way in which they unfolded.
[67] Although the CRTC had the status of a respondent in the proceedings, this Court has at all times considered it as an intervener. At the hearing, at the request of the appellant and with the concurrence of the CRTC’s counsel, we accordingly agreed to limit the CRTC’s interventions to an objective description of its jurisdiction, the regulatory framework in which it operates, its procedure and the facts indicating how the proceeding before it had unfolded.
(my underlinings)
[23] Moreover, from my point of view, the unique situation at hand does not call for the application per se of the test set forth by the Federal Court of Appeal in BC Tel v. Seabird Island Indian Band, [2002] FCA 288, at par. 28 wherein a three-prong test for adducing new factual evidence under rule 351 was set forth:
“Generally, new factual evidence can be considered by an appellate court if it could not have been discovered earlier through reasonable diligence, is practically conclusive of an issue on appeal and, of course, is credible”.
[24] My understanding is that this test is appropriate when one party who was present at the first instance level seeks to introduce on appeal fresh evidence. This underpinning does not suit at all the situation of the Commissioner in view of the new allegations raised in August 2006 by Genencor.
[25] Finally, I do not consider that Genencor would be prejudiced by the late filing of the Wilson affidavit or by the production by the Commissioner of a memorandum of fact and law to assist the Court in its assessment of whether the re-examination process set out in the Patent Act is consistent with the rules of procedural fairness and natural justice.
[26] Considering that Genencor’s counsel expressed at the hearing the wish to proceed perhaps with a cross-examination of Mr. Wilson on his affidavit, I will allow such cross-examination to take place. However, since said request was only formulated at the hearing and was prompted, based on my understanding, on the alleged vagueness of the first sentence of paragraph 8 of the Wilson affidavit, said examination shall be restricted to said sentence.
[27] As no costs were requested by the Commissioner under this motion, none will be granted.
[28] A schedule for the completion of the various steps that flow from the instant decision will be provided in the attached order.
Prothonotary
Montréal, Quebec
January 3, 2007
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-262-06
STYLE OF CAUSE: GENENCOR INTERNATIONAL INC.
Appellant
and
COMMISSIONER OF PATENTS
Respondent
WRITTEN MOTION DECIDED IN MONTRÉAL WITHOUT APEARANCE BY PARTIES
REASONS FOR ORDER AND ORDER: PROTHONOTARY MORNEAU
Written submissions:
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Ms. Hélène D’Iorio
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FOR THE APPELLANT |
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Ms. Yolaine Williams
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FOR THE RESPONDENT |
SOLICITORS OF RECORD:
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Gowling Lafleur Henderson LLP Montréal, Quebec
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John H. Sims, c.r. Deputy Attorney General of Canada Montréal, Quebec
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