Bayer’s patent priority request rejected by Canadian court
Pharmaceutical company Bayer‘s attempt to amend the priority date on a Canadian patent registration which covers a method of reducing seed dust has been unsuccessful.
Canada’s Federal Court of Appeal delivered judgment on April 13.
The patent at the centre of the dispute covers a method for reducing seed dust when treating seeds with chemicals. It is registered under US patent number 61/619,691; Patent Cooperation Treaty (PCT) filing number PCT/US2013/031888; and Canadian patent number 2,907,271.
Bayer’s crop science division filed the patent application at the US Patent and Trademark Office (USPTO) on April 3, 2012. The office then asked for accompanying diagrams, which Bayer submitted on April 19. The USPTO assigned the application a filing date of April 19.
In March 2013, Bayer filed a PCT application at the World Intellectual Property Organization (WIPO). The application claimed priority from the filing date of April 3, 2012.
Bayer was asked to correct the priority claim after WIPO noted the inconsistency in the filing date. In response to this, Bayer asked the USPTO to alter the date on its record. The USPTO said it erred in its request for the diagrams and changed the filing date to April 3.
In June 2015, Bayer asked the USPTO to alter the date of its PTC priority claim. The USPTO said it could not change the PCT application date as the matter was covered by PCT rules, which allowed 16 months from priority for any correction or addition of a priority claim.
Bayer applied to enter the PCT application in Canada and requested that April 3, 2012 be used as the filing date. The commissioner of patents in Canada recorded the filing date as April 19, 2012, as that was the date noted on the PCT application and no changes had been requested within the 16-month period.
In 2017, during judicial review sought by Bayer, the Federal Court of Canada confirmed that the commissioner was correct. Bayer had claimed that since April 3 was the correct filing date, the commissioner was duty bound to have it entered as the priority date.
On appeal, Bayer asked the Federal Court of Appeal to clarify whether the Federal Court erred in its conclusion that no error was made by the commissioner and in its determination that the commissioner had no statutory obligation to amend the claim’s filing date after the 16-month period.
The court confirmed that the commissioner had not erred, and that to accept Bayer’s argument would be to “completely disregard” the 16-month period prescribed in law.
“That simply cannot be”, the court said, as it would result in “unacceptable uncertainty”.
“There is no error for the commissioner to correct”, the court added, and rejected the appeal.
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