Supreme Court Refuses Leave to Appeal in Dutch Industries Case 

On December 11, 2003 the Supreme Court of Canada ruled on an application for leave in the Barton No-Till Disk Inc. v. Dutch Industries Ltd. case. Barton had sued Dutch Industries claiming patent infringement. Dutch had countered with the claim that Barton’s patent was invalid, as the required maintenance fees had been improperly paid. Barton had been incorrectly paying fees as a small entity, when in fact the large entity fee should have been paid.

The Commissioner of Patents had accepted a correction payment from Barton, but Dutch successfully argued at trial that the Patent Act and Regulations did not provide the Commissioner with the discretion to accept top-up payments.

On appeals, the Federal Court of Appeal overturned the trial decisions, deciding that the Commissioner could accept top-up payments. Dutch sought leave to appeal this decision to the Supreme Court.

The Supreme Court refused leave to hear the appeal. Possibly significant in the decision was the acceptance of additional evidence from Barton. The added evidence was a reference made by the Minister of Industry that, based on the "uncertainty" created by the Dutch decision, revisions to the Patent Act would be forthcoming to deal with the uncertainty created by the current wording of the Act as it deals with entity status and fee payments, and the procedure to follow in case of an incorrect payment.

As it stands, the decision of the Court of Appeal is the last word on this issue, and therefore where there has been an error in payment of fees due to a mis-characterization of an entity as a small entity, the Commissioner will be permitted to accept a top-up payment to rectify the deficiency.

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