The Federal Court of Appeal’s decision in Canada (Attorney General) v. Matco Tools Corporation, 2025 FCA 156, made it clear that everyone involved in looking after a patent asset—whether it’s the patent owner, their Canadian agent, their lawyer in another country, or even a company that helps pay fees—has an important role to play in making sure deadlines are met.

If a required maintenance fee and any ancillary late fee for a patent is missed, getting the patent back (reinstatement) is only possible if everyone involved can show they did everything a careful and responsible person would do.

Case summary

Matco Tools Corporation’s Canadian patent application was deemed abandoned after Matco failed to pay a required maintenance fee and late fee by the deadline. The missed payment resulted from an administrative error during a transition between maintenance fee service providers, resulting from a data migration problem. The Canadian patent agent sent official notices about the missed payment to Matco’s U.S. counsel, but following standing instructions, those notices were not forwarded to Matco.

Matco later sought to reinstate the patent application, arguing that the failure to pay occurred despite all due care, pointing to the data migration error and the communication chain among its representatives. The Commissioner of Patents refused reinstatement, finding that due care had not been demonstrated, especially regarding the handling of the notice period after the missed payment.

The Federal Court set aside the Commissioner’s decision, but the Federal Court of Appeal restored it, holding that all parties involved must take all reasonable steps to ensure the applicant is informed of critical deadlines. The court explained that it’s not enough for one person to pass along a notice or rely on someone else to handle things.

For example, if the Canadian agent sends a warning about a missed payment to a lawyer in another country, but the patent owner never gets the message, that’s not good enough. Everyone in the chain must make sure the patent owner is actually informed about important deadlines. 

What this means for patent owners

  • The due care standard is applied strictly in Canada. Despite its name, the reinstatement period offers only a remote chance of reinstatement. Patent owners should assume that failure to pay by the “as of right” or “late payment” deadline will result in the permanent loss of patent rights.
  • Many people may be involved in managing your patent, and each one must be careful and responsible.
  • If a mistake happens, like a missed payment or a message that doesn’t get through, it could be very hard to get your patent back.
  • It’s important to keep track of who is handling your patent and make sure you are getting all important notices directly.
  • The reinstatement period should not be viewed as a safety net; any risk of entering this period should be managed with full awareness. The “as of right” deadline is the critical date for maintaining rights.

How does the Canadian standard compare to other jurisdictions?

According to the European Patent Office’s case law (see “Case Law on Due Care and Representation in EPO Proceedings”), the “all due care” standard requires that all persons involved, including applicants, professional representatives, and even non-authorized agents—must show that they took all reasonable steps to avoid missing a deadline.

The EPO examines whether everyone in the chain acted as a careful and diligent person would. If a representative or agent fails, that failure is generally treated as a failure by the patent owner as well. (Source: EPO Case Law, III.E.5.5.1-5.5.3)

According to the United States Patent and Trademark Office’s Manual of Patent Examining Procedure, a patent may be reinstated if the delay in payment of a maintenance fee was “unintentional” or, in rare cases, “unavoidable.”

For “unintentional” delay, the patent owner must state that the delay was not intentional. For “unavoidable” delay, the owner must show that reasonable care was taken to ensure timely payment. (Source: MPEP Chapter 2500, Sections 2590 and 2591)

Bottom line

Protecting a patent is a team effort. In Canada, the Federal Court of Appeal has confirmed that everyone involved must work together and communicate clearly to avoid missed deadlines and lost rights. If something goes wrong, it’s not enough to blame someone else; everyone must show they did their part to protect the patent.

Practically speaking, the reinstatement period should be regarded as a period of significant risk, not as a fallback. All warnings should be communicated broadly and urgently, with explicit instructions about the consequences of inaction. Any party can pay the required fee before the due care period begins; do not rely solely on annuity services or others if there is any risk of missing the “as of right” deadline. 

If you have any questions about the Federal Court of Appeal’s decision and how it relates to your patent strategy, please contact the authors or a member of Gowling WLG’s patent team.