Biogen Idec Ma Inc. v. Canada (Attorney General)

Biogen Idec Ma Inc. v. Canada (Attorney General)
Court (s) Database
Federal Court Decisions
Date
2016-05-09
Neutral citation
2016 FC 517
File numbers
T-2639-14
Notes
Digest
Decision Content
Date: 20160510
Docket: T-2639-14
Citation: 2016 FC 517
Ottawa, Ontario, May 10, 2016
PRESENT: The Honourable Madam Justice Elliott
BETWEEN:
BIOGEN IDEC MA INC.
Applicant
and
ATTORNEY GENERAL OF CANADA
Respondent
JUDGMENT AND REASONS
I. Nature of the dispute [1] This is an application for judicial review of a decision of the Commissioner of Patents (Commissioner) dated December 4, 2014 that determined the Applicant did not respond in time to a requisition because they delivered correspondence by XpresspostTM, not the Registered Mail Service of Canada Post. As a result their patent application, first filed in 1979, has been removed from conflict proceedings. Any of the Applicant’s claims in conflict are considered to have been abandoned and will not be considered when patents are awarded for those claims.
II. BACKGROUND [2] In 1989 the Patent Act was significantly and fundamentally modified. The system in Canada for awarding patents changed from “first to invent” to “first to file”. The former legislation is variously referred to as the “Old Act” or “pre-October 1, 1989 Act”. The current Patent Act is referred to as the New Act. The Old Act continues to apply to the patent that is the subject of this application.
[3] The facts are simple. They are not in dispute. The Applicant delivered by Xpresspost™, on the day it was due, correspondence containing affidavit evidence (Evidence) required to be sent in the course of conflict proceedings under the Old Act.
[4] The Commissioner determined that delivery by Xpresspost™ was not delivery by registered mail and as such it was not received until it physically arrived in the office four days after the deadline. The Registered Mail Service of Canada Post is the establishment designated by the Commissioner of Patents (Commissioner) to receive correspondence as if it had been physically delivered to the Commissioner.
[5] I am advised that this might be the last case to be decided under the Old Act. Nonetheless, delivery is now governed by the New Act so my review of the decision by the Commissioner will have an ongoing impact. It will affect more than patents. The Copyright Regulations, Industrial Design Regulations, Trademarks Regulations and Integrated Circuit Topography Regulations, all of which are overseen by the Commissioner, employ the same delivery process of “designated establishment”.
III. Background facts A. Chronology of Events [6] On December 21, 1979 the Applicant filed Canadian Patent Application No. XXX,497 (the 497 Application) entitled “Recombinant DNA Molecules and their Method of Production”. No patent has yet been issued.
[7] In November, 2000, the Commissioner notified the Applicant pursuant to section 43(2) of the Old Act that a conflict existed between the ‘497 Application and 12 co-pending applications.
[8] On November 15, 2012 the Commissioner set the time for filing the Evidence in the conflict proceedings as six months from that date. Ten copies of the Evidence were required.
[9] The filing date was extended twice by orders of this Court. The most recent extension was by Order of Mr. Justice Beaudry dated January 24, 2014. He extended the filing time for one of the conflicting applicants as six months from the date of the Order.
[10] On January 31, 2014 the Commissioner notified all remaining parties to the conflict that the deadline for submission of section 43(5) evidence was extended to July 24, 2014.
[11] On July 24, 2014 the Applicant’s patent agent took the Evidence to the office of Canada Post in Montréal in order to send it by registered mail to the Commissioner in accordance with subsection 5(4) of the rules under the New Act (New Rules). The Evidence weighed 12.5kg. It exceeded the Canada Post weight limit of 500g for registered mail therefore they refused to accept it for such delivery. As a result, the patent agent sent it that day using the Xpresspost™ service of Canada Post.
[12] On July 28, 2014 the Evidence was physically received by the Commissioner at the Canadian Intellectual Property Office (CIPO) in Gatineau, Quebec.
[13] On September 29, 2014 the Commissioner advised the Applicant by letter that Xpresspost™ was distinct from the Registered Mail Service of Canada Post so the Evidence was not considered to have been submitted on July 24, 2014 when sent but rather on the date it was physically received, July 28, 2014. The Commissioner concluded the Applicant had failed to respond to a requisition within the time limits set. He deemed the Applicant had abandoned their conflict claims and claims not patentably distinct (NPD) therefrom and removed the Applicant’s claims from the conflict proceedings.
[14] On October 21, 2014 the Applicant requested reconsideration of the September 29, 2014 decision and petitioned for reinstatement of the claims deemed abandoned. They requested a four day extension of the time within which to file the Evidence.
[15] On December 4, 2014 the Commissioner refused to reconsider the original decision. He denied reinstatement to the conflict proceedings and refused to provide an extension of time.
B. The Application for Judicial Review [16] The application, filed December 31, 2014, seeks to have the Commissioner’s decisions quashed. They also seek various alternate forms of relief effectively curing any procedural defect with the filing of the Evidence, restore the Applicant’s patent application to the conflict proceeding and, if necessary, obtain an order pursuant to subsection 18.1(2) of the Federal Courts Act (FC Act) granting an extension of time to file the application, nunc pro tunc.
IV. CONFLICT PROCEEDINGS [17] The purpose of conflict proceedings is to determine who was the first to invent the subject matter of the patent application. With multiple parties, as here, some may be first with respect to certain claims but not first with respect to other claims. At the hearing of this application counsel for the Respondent indicated the Commissioner would not move the conflict proceedings forward until a final determination has been made on this application. The next step, when it occurs, will be to open all the sealed envelopes received from parties to the conflict, in order to determine who was the first to invent each claim.
A. Overview [18] Under the Old Act, the actual date of filing an application for a patent was not determinative of receiving a patent. The date of invention of the matter for which patent protection was claimed governed awarding the patent. If two or more applicants claimed patent protection over substantially the same invention or components thereof those applications would be in conflict. When there was a conflict, section 43, attached as Annex A to these reasons, contained the process to be followed to resolve it. For ease of reference, set out below are the relevant parts of the two subsections of section 43 that explain the purpose and use of the Evidence sent by the Applicant:
43(5) Formal declaration of conflict—Where the subject matter of the claims described in subsection (3) is found to be patentable and the conflicting claims are retained in the applications, the Commissioner shall require each applicant to file in the Patent Office, in a sealed envelope duly endorsed, within a time specified by him, an affidavit of the record of invention . . .
(6) Opening envelopes containing record of invention—No envelope containing any affidavit mentioned in subsection (5) shall be opened, nor shall the affidavits be permitted to be inspected, unless there continues to be a conflict between two or more applicants, in which event all the envelopes shall be opened at the same time by the Commissioner in the presence of the Assistant Commissioner or an examiner as witness thereto, and the date of the opening shall be endorsed on the affidavits.
43(5) Si l’objet des revendications visées au paragraphe (3) est reconnu brevetable et que les revendications concurrentes sont maintenues dans les demandes, le commissaire exige de chaque demandeur le dépôt, au Bureau des brevets, dans une enveloppe scellée portant une souscription régulière, dans un délai qu’il spécifie, d’un affidavit du relevé de l’invention. . . .
(6) Aucune enveloppe contenant l’affidavit mentionné au paragraphe (5) ne peut être ouverte, et il n’est pas permis d’examiner les affidavits, à moins que ne subsiste un conflit entre deux ou plusieurs demandeurs, auquel cas toutes les enveloppes sont ouvertes en même temps par le commissaire en présence du sous-commissaire ou d’un examinateur en qualité de témoin, et la date de l’ouverture des enveloppes est inscrite sur les affidavits.
[19] In Mycogen Plant Science, Inc. v. Bayer Biosciences N.V., 2010 FC 124 (Mycogen) Mr. Justice Hughes provided a useful overview of conflict proceedings. In this excerpt, I have underlined the portions most germane to this dispute:
[7] Under the “first to invent” system when there was only one application for a patent before the Patent Office, the person named as inventor was assumed to be the first person to invent the subject matter of the application. However, as happens from time to time, there may be two or more applications filed with the Patent Office which appear to be directed to the same subject matter. In such circumstances the Commissioner of Patents was required to decide who was the first person to invent. That person was to be granted a patent for the subject matter to the exclusion of the other applicants.
[8] Section 43 of the pre-October 1, 1989 version of the Patent Act specifically addressed conflict proceedings. Those provisions remain in force today to deal with the very few remaining conflict proceedings. A copy of section 43 of the pre-October 1, 1989 Patent Act is appended to these reasons. There are no specific Patent Rules or Federal Courts Rules dealing with such proceedings. Previously the pre-1998 version of the Federal Court Rules had specific rules dealing with such proceedings but they have not been carried forward.
[9] Essentially the conflict process began when the Patent Office examiners perceived that there were two or more applications pending before the Office that appeared to be directed to the same subject matter. Under the pre-October 1, 1989 system all patent applications were confidential and not available to the public. That remains the case with the applications at issue here. The Patent Office would select claims from the applications that appeared best to cover the subject matter common to all applications, or even draft such claims. These common claims would be presented to each of the applicants who could choose to remain in the conflict proceedings by including some or all of these claims in their application if they were not there already. The applicants were then invited to submit affidavits setting out facts that would establish the date of invention by their named inventors. Some would choose to rely only on the filing date of the application in Canada or a foreign country if the Canadian application claimed priority from such application. When all evidence was in, the Commissioner of Patents would review the evidence and make a determination as to which inventors had first made the invention as described in the subject matter of the conflict claims. Sometimes some inventors were first in respect of some of the claims and other inventors in respect of other claims. The claims would be awarded by the Commissioner to the application of the first inventor of each claim at issue and all the applications would proceed to final examination. However any party to the conflict could, after receipt of the Commissioner’s decision, if dissatisfied, commence an action in the Federal Court for a re-determination as to first to invent and consequent award of claims. This is not an appeal nor a judicial review but an action in which a fresh determination is made. In such an action redrafted claims (so-called substitute claims) could be proposed for resolution in the conflict. The Federal Court action would proceed as any other action and would be subject to appeal in the usual way.
[20] In Mycogen the issue was whether the Commissioner could grant an extension of time to a party to determine under subsection 43(4) whether to add or retain claims in conflict in order to remain in the conflict proceedings. That is the step before the section 43(5) issue in this matter. The sections are similar enough though that Mycogen will be addressed later in these reasons when dealing with whether the Commissioner could have extended the time to file the Evidence.
B. The Old Act and Old Rules [21] Although the Old Act applies in this case the rules that existed under the Old Act (Old Rules) were completely repealed on October 1, 1996 with passage of the New Rules. No transitional rules relevant to this matter were put in place.
[22] The repealed rules under the Old Act dealt specifically with conflict proceedings in rules 66 to 74. Rules 138 to 140 gave the Commissioner power to fix and extend time, both before or after it expired. Unfortunately although those rules would otherwise have applied and might have made this application unnecessary, they are now only of historical interest.
[23] Given the repeal of the Old Rules, the parties agree that there are no rules in place governing the conflict proceedings.
[24] In addition to rules, there were procedures written to guide examiners in implementing the Old Act and the Old Rules. The Canadian Patent Office Manual of Patent Office Practice (MOPOP) dated January 1990 and the Handbook of Patent Examination (HOPE) dated February, 1993 were both submitted by the Commissioner as part of the Certified Tribunal Record (CTR) as being documents the Commissioner considered relevant. They are referred to later in these reasons.
C. The New Act and New Rules [25] Section 78.1 of the New Act stipulates that applications for patents filed before October 1, 1989 shall be dealt with and disposed of under the Old Act.
[26] A few of the New Rules apply to this matter although not to the conflict proceedings. Part I of the New Rules contains “Rules of General Application”. These rules apply to aspects of this application such as Communications and Time within which to take certain actions.
[27] On January 13, 1994 a new section 10(b) was added to the rules by SOR/94-30. It is now rule 5(4) in the New Rules. The part most relevant to this matter provides that “Correspondence addressed to the Commissioner may be physically delivered to an establishment that is designated by the Commissioner” and “the correspondence shall be considered to be received by the Commissioner on that day” provided that it is a day that the Patent Office is otherwise open for business.
[28] Prior to the amendment in 1994, the Commissioner could only designate “any office of the Government of Canada” as an office to which mail addressed to CIPO could be delivered. With the amendment, the Commissioner could designate simply “an establishment” to receive such deliveries by setting it out in the Canadian Patent Office Record (CPOR).
[29] Section 15 of the CPOR, Vol. 143, No. 2, January 13, 2015 (effective May 8, 2012) deals with “Correspondence Procedures”. Subsection 15.2 of the CPOR is entitled “Registered Mail Service of Canada Post”. It sets out that:
For the purposes of subsections 5(4) and 54(3) of the Patent Rules, . . . the Registered Mail Service of Canada Post is a designated establishment or designated office to which correspondence addressed to the Commissioner of Patents . . . may be delivered.
Correspondence delivered through the Registered Mail Service of Canada Post will be considered to be received on the date stamped on the envelope by Canada Post, only if it is also a day on which the CIPO is open for business. If the date stamp on the Registered Mail is a day when CIPO is closed for business, the Registered Mail will be considered to be received on the next day on which CIPO is open for business.
[30] More will be said about the 1994 Amendment and the CPOR provisions later in these reasons when examining whether the Applicant complied with rule 5(4).
V. ISSUES A. Overview of the Issues [31] The Applicant, who insists delivery was in time, accuses the Commissioner of wrongfully refusing to exercise discretion.
[32] The Respondent says the Commissioner has no discretion to provide any relief as strict compliance with the Act is required.
B. Applicant’s Statement of Issues [33] The Applicant submits the issues to be decided are:
i. What is the standard of review?
ii. Was the Commissioner’s conclusion that XpresspostTM is a distinct establishment from the “Registered Mail Service of Canada Post” unreasonable?
iii. Was the Commissioner’s decision to refuse to grant an extension of time pursuant to Rule 26 of the Patent Rules unreasonable?
iv. Did the Commissioner exceed his jurisdiction when he deemed the Applicant’s conflict claims abandoned?
v. Did the Commissioner erroneously fetter or fail to exercise his discretion by refusing to even consider reinstatement of the Applicant’s conflict claims?
C. Respondent’s Statement of Issues [34] The Respondent submits the issues to be decided are:
i. Was the Applicant out of time to apply for judicial review?
ii. If not, was the Commissioner correct in concluding the Applicant, by operation of law, had missed the deadline upon concluding that XpresspostTM is not a “designated establishment”.
iii. Whether the Commissioner had any discretion to extend the time fixed by Order of this Court for delivery of the evidence? If so, whether the decision to refuse to extend the time was reasonable.
iv. Whether the Commissioner or the Court has power to “reinstate” claims removed from an application.
D. Statement of Issues as Framed by the Court [35] As can be seen, the parties are largely in agreement as to the issues although they approach them somewhat differently. I have reformulated the issues and will consider them this way, in this order:
i. What is the applicable standard of review?
ii. Is the application properly before the Court in accordance with section 18.1 of the Federal Courts Act?
iii. If delivery of the Evidence was late, did the Commissioner have the power to grant an extension of time and, if he did, was that power exercised properly?
iv. What consequences flow from a party’s failure to file evidence in a conflict proceeding?
VI. Standard of Review A. The Position of the Parties [36] The Applicant submits that the standard of review for all matters, including any matters of statutory interpretation, is reasonableness as the Commissioner is dealing with his home statute and rules. The Applicant however says the Commissioner’s decisions are not justifiable, transparent, intelligible or defensible in respect of the facts and the law.
[37] The Respondent did not address the standard of review in their written materials. At the hearing, relying on the patent cases dealing with small entity fees and authorized correspondents, they submitted that the Commissioner’s interpretation of subsection 5(4) of the New Rules at the time he created the designated establishments is reviewable on a correctness standard as the Court is in as good a position as the Commissioner to make the determination. They then say that the application of that interpretation is subject to a reasonableness review.
[38] Ultimately, the Respondent says that all the issues – timeliness of the delivery of the evidence, whether an extension of time can be granted, the consequences of not filing in the conflict proceedings – come down to the same thing. Either there was no discretion possessed by the Commissioner because of operation of law or, he had discretion and exercised it and is entitled to deference. That of course is the reasonableness standard.
B. Analysis and Decision [39] Regardless of the position of the parties it falls to the Court to determine the standard of review. When a decision-maker is interpreting their home statute the standard of review presumptively is reasonableness. (Alberta (Information and Privacy Commissioner) v. Alberta Teachers’ Association), 2011 SCC 61 (Alberta Teachers’) at paragraph 39).
[40] If the standard of review has previously been satisfactorily determined it is not necessary to conduct another analysis. (Dunsmuir v New Brunswick, 2008 SCC 9 (Dunsmuir) at paragraph 62.)
[41] However, prior decisions of this Court and the Federal Court of Appeal, decided before Alberta Teachers’, have held that the Commissioner’s interpretation of the New Rules is reviewable on a standard of correctness. (Belzberg v. Canada (Commissioner of Patents), 2009 FC 657 at paragraph 34; Dutch Industries Ltd. v. Canada (Commissioner of Patents), 2003 FCA 121 at paragraph 23).
[42] Similarly, prior decisions have found the Commissioner’s interpretation of the governing legislation whether considering the Old Act or New Act is also reviewable on a standard of correctness. (Bayer Schering Pharma Aktiengesellschaft v Canada (Attorney General), 2010 FCA 275 at paragraph 19.)
[43] The Respondent put forward no basis upon which to rebut the presumption of reasonableness other than that the Court is in as good a positon as the Commissioner to make the determination. I find no basis to rebut the presumption exists. This case does not involve constitutional questions or questions of law that are of central importance to the legal system as a whole and that are outside the adjudicator’s expertise. Nor is there any true question of jurisdiction or vires raised.
[44] The Commissioner’s interpretation of rule 5(4) at the time he designated the establishment is therefore reviewable on a standard of reasonableness. The application of that interpretation to the facts, being a question of mixed fact and law, is also reviewable on a standard of reasonableness. (Karolinska Institutet Innovations AB v. Canada (Attorney General), 2013 FC 715 at paragraph 20).
[45] The consequential issues of extension of time, deemed abandonment and reinstatement to the conflict proceedings are also matters of statutory interpretation that arise from the Commissioner’s home statute. They will also be reviewed on a standard of reasonableness.
[46] A decision is reasonable if the decision-making process is justified, transparent and intelligible and the decision is within a range of possible, acceptable outcomes, defensible in respect of the facts and law. (Dunsmuir paragraph 47.)
VII. is the application properly filed under s.18.1(2) of the fc aCT? [47] A preliminary issue is whether this application is properly before the court. The Respondent says it is out of time with respect to the XpresspostTM delivery issue because the September 29, 2014 letter from the Commissioner dealt with the matter and the December 4, 2014 letter was merely a courtesy letter.
[48] The Respondent acknowledges the issue of whether an extension of time should or could have been granted and the consequential decisions of abandonment and no reinstatement to the conflict proceedings were raised only in the second letter and are brought within time.
[49] However, the Respondent next alleges there is no decision capable of review because all the other issues - late delivery, abandonment of the proceeding, no extension of time - arose purely by operation of law. In particular they say the late delivery issue was not only out of time, it was also not a decision in any event because it arose by operation of law in that it did not comply with the designation made by the Commissioner. After that the other matters also unfolded by operation of law.
A. Reconsideration or Courtesy Letter? (1) The Applicant’s Position [50] After receiving the September 29, 2014 letter the solicitors for the Applicant wrote to the Commissioner on October 21, 2014. The three-page letter asked the Commissioner to reconsider the original decision. In support of that request they filed an affidavit that detailed the reasons for using Xpresspost™ and made legal arguments that the Applicant had fully complied with the requirements of the legislation. The letter also contained a request for reinstatement to the conflict proceedings should the Commissioner still consider the evidence to have been filed late. In the alternative the Applicant requested an extension of time to file to July 28, 2014 and submitted legal arguments supporting that request.
[51] It is the Commissioner’s December 4, 2014 response to the October 21, 2014 letter that the Applicant says was the final decision and started the judicial review time period clock running.
[52] The Applicant relies on both Independent Contractors & Business Assn. v Canada (Minister of Labour), [1998] FCJ No. 352 (FCA) (Independent Contractors) and Merham v Royal Bank of Canada, 2009 FC 1127 (Merham) to say that (1) when the matter is reconsidered on the basis of new facts it is a new decision and (2) the reconsideration itself is a reviewable decision. I accept both those propositions are accurate statements of the law.
[53] In Independent Contractors the Court of Appeal at paragraph 19 adopted what Mr. Justice Noël said in Dumbrava v Canada (Minister of Citizenship and Immigration) (1995), 101 FTR 230 (Dumbrava) at page 236 (citations omitted):
Whenever a decision maker who is empowered to do so agrees to reconsider a decision on the basis of new facts, a fresh decision will result whether or not the original decision is changed, varied or maintained. (omitted citation) What is relevant is that there be a fresh exercise of discretion, and such will always be the case when a decision maker agrees to reconsider his or her decision by reference to facts and submissions which were not on the record when the original decision was reached.
[54] The Applicant submits new facts and submissions were made by them and were considered by the Commissioner so there was a fresh decision, not just a simple courtesy letter.
(2) The Respondent’s Position [55] The Respondent takes the position that the Applicant’s October 21, 2014 letter seeking a reconsideration and requesting an extension of time and reinstatement to the conflict proceedings does not “reset the clock” with respect to the question of whether there was “late delivery” of the Evidence.
(3) Analysis and Decision (a) Overview [56] Subsection 18.1(2) of the FC Act provides that an application for judicial review in respect of a decision shall be made within 30 days after the decision was first communicated. Not surprisingly, the Applicant says the second letter is the final decision and starts time running under section 18.1(2) while the Respondent says the first letter is the decision with respect to delivery and the second letter was merely a courtesy letter.
[57] This matter can be resolved by examining only the second letter. If it is a reconsideration of the “late delivery” then the application was filed in time. If it is merely a courtesy letter with respect to the “late delivery” then the application was filed outside the 30 days. If that is the case then the Applicant’s request that I grant an extension of time nunc pro tunc pursuant to section 18.1(2) of the FC Act will be considered.
(b) The Letters [58] The October 21, 2014 letter from the solicitors for the Applicant contained new evidence in the form of an affidavit by the patent agent of record. Although the affidavit itself was not in evidence, it is clear from the cover letter that the affidavit supported the fact that the evidence for the conflict proceeding was boxed and delivered to Canada Post and a request was made to an employee that it be delivered by Canada Post’s Registered Mail Service. However, the employee refused to accept the box for delivery. The letter (and presumably the affidavit) then details the 500g weight issue and the decision by the Applicant’s agent to use XpresspostTM to effect delivery. That is new evidence, the details of which the Commissioner would not have known on receiving the box by XpresspostTM.
[59] The letter from counsel then makes submissions and argues that “[b]y physically delivering the Section 43(5) evidence to Canada Post on July 24, 2014 and requesting that it be sent by the Registered Mail Service, the Applicant fully complied with the requirements of rule 5(4) of the Patent Rules”. It goes on to explain their rationale, which is that they used a “registered” parcel service of Canada Post.
[60] The response letter specifically addresses the new facts and argument made with respect to the weight of the box and the submission that the inability to avail themselves of the Registered Mail Service was not reasonably avoidable. The balance of the letter deals with the other requests that the Respondent is not challenging have been brought within time.
[61] The Commissioner’s December 4, 2014 letter directly addresses the evidence and submissions in the October 21, 2014 letter with respect to the delivery by XpresspostTM. It restates and responds substantively to the issues raised by the Applicant and contains language such as “having considered Applicant’s arguments” and “in conclusion, the Office takes the final position that the affidavits and evidence received in the Patent Office on July 28, 2014 continue to be considered not to have been timely submitted.”
[62] Despite use of the word “continue” I find the December 4, 2014 letter is a more thorough and detailed explanation and analysis of the reasons provided in the September 29, 2014 letter. In my opinion it clearly, in the words used by Justice Noël in Dumbrava, “referred to facts and submissions that were not on the record when the original decision was made”. It expressly dealt with the additional facts and evidence submitted by the Applicant.
(c) Conclusion [63] I conclude the application filed December 31, 2014 that seeks review of “the final decision of the Commissioner of Patents set out in a letter dated December 4, 2014” was filed within time under subsection 18.1(2) of the FC Act. Accordingly it is not necessary to address the nunc pro tunc relief sought by the Applicant.
B. Operation of Law or Discretion – is there a Reviewable Decision? [64] One of the determinative factors in resolving the matters in dispute and also a major difference between the parties is the question of whether the Commissioner had any discretion or whether everything simply unfolded by operation of law.
[65] This question of whether there was discretion or consequences arose by operation of law applies to each of the findings of delivery of the Evidence, refusal to grant an extension of time, deemed abandonment and refusal to reinstate. The Respondent has conceded that the application to review the extension of time, abandonment and reinstatement findings are all brought within time. The question for each of those matters is whether the Commissioner was exercising discretion or, was each outcome determined by operation of law? This will be separately addressed for each matter beginning with the “late delivery” finding.
(1) The Respondent’s Position [66] The Respondent says there was no decision involved when the Evidence arrived by Xpresspost™. Because it was not delivered by the designated establishment it was automatically late by operation of law.
[67] The Respondent’s position is clear. In their written submissions they say:
[8] Neither the Court nor the Commissioner have any power to relieve the Applicant from the consequence of its failure to contest priority with respect to conflicting subject matter by failing to provide timely delivery of the evidence mandated by ss. 43(5) of the Old Act in accordance with the statutory scheme and the Order of Justice Beaudry. Accordingly, this application for judicial review should be dismissed with costs.
They conclude their submissions with:
[51] This case is thus just another long [sic] line of patent cases where the most “elemental precautions” were not taken and, while “unfortunate”, the Applicant’s right to pursue the grant of a patent which includes its conflict claims has been lost by operation of the Patent Act following a reasonable decision of the Commissioner to not retroactively grant the Applicant an extension of time.
[68] In support of this position, the Respondent relies on DBC Marine Safety Systems Ltd. v Canada (Commissioner of Patents), 2008 FCA 256 (DBC Marine) and other cases dealing either with payment of maintenance fees or corresponding only with authorized agents. For example, in DBC Marine at paragraph 2 the Court of Appeal said:
[2] The regime for patent applications is firmly established by the Patent Act and the Patent Rules. Together, the various legislative provisions set out a complete code governing the duties of an applicant for a patent, the consequences of a failure to comply with those duties, and the steps that may be taken to avoid those consequences.
(2) The Applicant’s Position [69] The Applicant’s general position is that the jurisprudence upon which the Respondent relies is distinguishable because it was determined under the New Act where the legislative wording is quite specific as to the consequences of a failure to comply. There is no such specific consequence in the Old Act according to the Applicant. Without the strict legislative consequence, there is no operation of law. This position also applies with respect to the consequential issues of extension of time, abandonment and reinstatement.
[70] In terms of late delivery, the Applicant’s position is that there was no operation of law and the Commissioner made a decision that was unreasonable. They add that, in any event, the reasons provided do not meet the Dunsmuir requirements of justification, intelligibility and transparency and they are not defensible on the facts and law as the Commissioner simply stated a conclusion.
(3) Analysis and Decision [71] The jurisprudence relied upon by the Respondent was determined under very different legislation – either the New Act or the Patent Act that was in place for applications filed after October 1, 1989 and before October 1, 1996. In considering whether consequences arose by operation of law it will be important to examine the provisions of the Old Act.
[72] The Respondent’s position that there is no reviewable decision with respect to the delivery by XpresspostTM depends on whether the Commissioner’s literal interpretation of the designation of the Registered Mail Service of Canada Post as an establishment distinct from XpresspostTM was reasonable. In other words, did delivery comply with rule 5(4)?
C. Did the Applicant Comply with subsection 5(4) of the New Rules? (1) The Commissioner’s Decision [73] The Commissioner’s reason for finding the Applicant’s evidence was not delivered in accordance with rule 5(4) and therefore was late is expressed in his letter of September 29, 2014 this way:
Applicant has submitted one box of documents pertaining to the present conflict using Canada Post’s Xpresspost service. While the date stamped on the box is July 24, 2014, this service of Canada Post is held by the Office to be an establishment distinct from the Registered Mail Service of Canada Post and thus, is not regarded as a designated establishment by the Commissioner of Patents pursuant to sections 5(4) and 54(3) of the Patent Rules. Therefore, correspondence sent to the Patent Office using Xpresspost will only be considered received on the date it is physically delivered to the Patent Office in Gatineau. Therefore, the Office considers the date of receipt of the submitted documents to be July 28, 2014.
(my emphasis)
[74] In his letter of December 4, 2014 the Commissioner added that:
Despite Applicant’s attempts to effect timely delivery using the Registered Mail Service of Canada Post, the Commissioner does not conclude that a failed attempt to timely deliver the evidence can equate to a successful delivery. All parties to the conflict were subject to the same requirements for delivery of the affidavits and evidence; any further extension of time would constitute a favourable treatment of one party over another.
(my emphasis)
(2) The Applicant’s Position [75] The Applicant makes several arguments regarding this core issue. Firstly, the Applicant says by physically delivering the evidence to Canada Post on July 24, 2014 and with Canada Post date stamping the parcel on that day they have complied with rule 5(4) as it is written. They say it was unreasonable for the Commissioner to limit the types of registered delivery services provided by Canada Post that satisfy the requirement for proof of mailing and delivery. The Applicant submits it was unreasonable for the Commissioner to conclude that registered delivery by the Canada Post product marketed as “Xpresspost” is a “distinct establishment” from registered delivery by the Canada Post product marketed as “Registered Mail”.
[76] The Applicant notes that although the CPOR speaks of the “Registered Mail Service”, Canada Post does not use that term. It simply refers to “Registered Mail” as part of a category of delivery services that provides proof of receipt, tracking and delivery. They say that XpresspostTM is also a type of service in that category.
[77] The Applicant submitted uncontradicted evidence that XpresspostTM offers the same benefits and features as registered mail (a tracking number, delivery confirmation, delivery updates) but they say it is overall a superior service to registered mail as it provides faster, guaranteed delivery times.
[78] The Applicant urges that as both Registered MailTM and XpresspostTM are types of service in a category provided by Canada Post there is no reasonable basis for the Commissioner to find that they are different establishments.
[79] The Applicant points to the fact that there is no definition of “Registered Mail Service” in the New Act (or the Old Act) or in the New Rules or the CPOR or even in the Canada Post Corporation Act. They also point out that the names of the products and services Canada Post offers are established by Canada Post, not the Commissioner. Canada Post can change those names from time to time without consultation with the Commissioner.
[80] The Applicant relies on the case Biggs and Nova Scotia (Director of Occupational Health and Safety), 2014 NSLB 243 (Biggs) in which the issue was whether service of documents by the Director under the Occupational Health and Safety Act had been complied with when made by XpresspostTM given that subsection 40(2)(b) of that legislation provided:
40(2) An order, notice, document or other communication may be served or delivered for the purpose of this Act or the regulations by
(b) registered mail to the last known address of the addressee;
and, the Nova Scotia Labour Board, at paragraph 12 of their decision “accepts that Canada Post Xpresspost is a form of registered mail”.
(3) The Respondent’s Position [81] The Respondent points out that the Applicant has been involved in the conflict proceedings since the year 2000 but waited until the day the materials were due to deliver its evidence. If the Applicant had delivered its evidence to any one of the five Industry Canada Offices or, had sent it by the Registered Mail Service of Canada Post it would have obtained a same-day delivery date just as if it had been filed directly with the Patent Office. But, by not doing so, they were not able to avail themselves of what the Respondent calls the “Hail Mary” provisions of a designated establishment.
[82] The Respondent’s written submissions state:
[13] . . . Patent Rule 5(4) was enacted to assist applicants who choose to wait until the last day to file materials by considering delivery to a prescribed “designated establishment” to be the “same d