Digests

[2016] 4 F.C.R. D-7

Patents

Practice

Judicial review of Commissioner of Patents’ decision determining that applicant not responding in time to requisition because delivering correspondence by Xpresspost^TM, not Registered Mail Service of Canada Post — Thus, applicant’s patent application removed from conflict proceedings; claims in conflict considered abandoned, not to be considered when patents awarded for those claims — Patent Act, R.S.C., 1985, c. P-4 (Act) significantly modified in 1989 — Patent awarding system in Canada changing from “first to invent” to “first to file” — Former Patent Act (Old Act) (pre-October 1,1989) applying to patent at issue in present case — Applicant delivering by Xpresspost^TM on day due correspondence containing affidavit evidence required to be sent in conflict proceedings under Old Act — Commissioner determining that delivery by Xpresspost^TM not delivery by registered mail, thus not received until physically arriving in office four days after deadline — Registered Mail Service of Canada Post constituting establishment designated by Commissioner of Patents to receive correspondence as if physically delivered to Commissioner — In 1979, applicant filing Canadian Patent Application No. XXX497 (‘497 application) but no patent yet issued — Applicant later notified that under Old Act, s. 43(2) conflict existing between ‘497 application, 12 co-pending applications — Time for filing evidence set in conflict proceedings; deadline extended twice — Last deadline for submitting evidence under Old Act, s. 43(5) extended to July 24, 2014 — Applicant’s patent agent bringing evidence to Canada Post Office on day of extended deadline (July 24, 2014) to send by registered mail to Commissioner in accordance with Patent Rules, SOR/96-423, r. 5(4) (Rules) — Because package exceeding weight limit for registered mail, patent agent sending evidence using Canada Post Xpresspost^TM service — Evidence physically received by Commissioner at Canadian Intellectual Property Office (CIPO) July 28, 2014 — After finding that applicant failing to respond to requisition within time limits set, Commissioner removing applicant’s claims from conflict proceedings since applicant deemed abandoning conflict claims — Commissioner subsequently refusing to reconsider earlier decision, denying applicant’s request for reinstatement to conflict proceedings –– At issue, what is applicable standard of review herein; whether application properly before court in accordance with Federal Courts Act, R.S.C., 1985, c. F-7, s. 18.1; if delivery of evidence late, whether Commissioner having power to grant extension of time - if so, whether power exercised properly; what consequences flowing from party’s failure to file evidence in conflict proceeding — When decision maker interpreting home statute, standard of review presumptively reasonableness — No basis herein to rebut presumption; therefore, Commissioner’s interpretation of Rules, r. 5(4) at time designating establishment reviewable on standard of reasonableness — Consequential issues of extension of time, deemed abandonment, reinstatement to conflict proceedings also matters of statutory interpretation arising from Commissioner’s home statute; thus, to be reviewed on standard of reasonableness — Commissioner finding applicant’s evidence not delivered in accordance with Rules, r. 5(4); therefore, evidence late because while date stamped on box July 24, 2014, Xpresspost^TM service of Canada Post considered establishment distinct from Registered Mail Service of Canada Post; thus not regarded as designated establishment — While obtaining signature at CIPO confirming delivery considered prudent, not required pursuant to Rules, r. 5(4) — Commissioner’s designation cannot change legislation to add requirement for signature upon delivery to CIPO in lieu of deemed receipt by CIPO set out in r. 5(4) — Staff at CIPO receiving materials simply required to confirm date stamped by Canada Post on materials, must then apply r. 5(4) to determine whether day upon which Canada Post received, date stamped materials also date when CIPO open for business — If so, date stamped by Canada Post constituting date of receipt by CIPO — Nothing more required — Central question being whether Commissioner reasonably interpreting authority given thereto in 1994 by SOR/94-30 to designate establishments to accept delivery of correspondence sent to CIPO — Based on evidence, creating accessible system of conveniently filing with CIPO primary object, purpose of introducing change to provide Commissioner with power to designate establishments — In context of Rules, r. 5(4), distinction between registered mail, Xpresspost^TM artificial — Justifying, compounding distinction by saying no extension of time could be given because, in particular, all parties to conflict subject to same requirements for delivery of evidence, etc. not standing up to minimal scrutiny — Consequence imposed to applicant violating Court’s conception of what constituting fair, good, sensible — Thus, Commissioner’s narrow, strict interpretation of Registered Mail Service of Canada Post unreasonable; rejected in favour of plausible interpretation of applicant that by using Xpresspost^TM, delivery made to designated establishment as set out in r. 5(4) — Date-stamping on receipt interpretation complying with requirements of r. 5(4) — Evidence not considered late — For completeness, other findings of Commissioner addressed — Commissioner having discretion to extend time to file to accept physical receipt in CIPO of delivery of applicant’s evidence; refusal thereof not reasonable — Under Rules, r. 26(1) Commissioner authorized to extend time fixed thereby subject to extension being applied for, fee set paid — Rule 26(1) not stating extension must be applied for prior to expiry — Commissioner having discretion to extend time under Rules but believing having no such discretion, failing to exercise it, which amounting to unreasonable fettering of discretion — Regarding consequences of failure to file evidence, no reference or authority in Old Act found indicating that failure to file affidavit under s. 43(5) leading to abandonment, loss or removal from conflict proceedings — For Commissioner to find application removed from conflict proceedings, clear legislative authority required but non existing — As for reinstatement, Commissioner bound by Owens-Illinois Inc. v. Koehring Waterous Ltd. (1978), 40 C.P.R. (2d) 72 (F.C.T.D.), involving conflict proceedings — By not considering Owens-Illinois, Commissioner unreasonably concluding having no authority to reinstate application to conflict proceedings based on reading of Act, s. 30 (Old Act, s. 32) whereas Owens-Illinois holding to contrary; stating that Commissioner having power to extend time, alternatively reinstate claims — In conclusion, applicant’s use of Xpresspost^TM considered delivery to designated establishment under Rules, r. 5(4) of Registered Mail Service of Canada Post; thus applicant’s evidence delivered on July 24, 2014, filed on time; no basis to remove applicant’s evidence from conflict proceedings — Application allowed.

Biogen Idec Ma Inc. v. Canada (Attorney General) (T-2639-14, 2016 FC 517, Elliott J., judgment dated May 10, 2016, 59 pp.)