FC Determines Use of Xpresspost(TM) is Delivery to a Designated Establishment

FC Determines Use of Xpresspost(TM) is Delivery to a Designated Establishment

Biogen Idec Ma Inc v Canada (Attorney General), 2016 FC 517

Patent applicants and holders using XpresspostTM need only submit correspondence for CIPO to a Canada Post location by the deadline, rather than ensure physical delivery is completed by the deadline. In this case, the Federal Court (“FC”) overturned the decision of the Commissioner of Patents (the “Commissioner”), which had determined that delivery using XpresspostTM was not afforded the same benefits as delivery by Registered Mail Service. Overturning this decision saved Biogen Idec Ma Inc.’s (“Biogen”) response to a requisition in a conflict proceeding from being deemed abandoned. [1]

Biogen’s Application History

Biogen filed Canadian Patent Application No. XXX,497 on December 21, 1979. [5] At this time, the system for awarding patents was “first to invent” rather than the current “first to file” system. [1] In 2000, the Commissioner notified Biogen that a conflict existed between their application and 12 co-pending applications. [6] On July 24, 2014, Biogen’s patent agent took their evidence for the conflict proceeding to the Canada Post office to send it by registered mail to the Commissioner. [10] As the evidence weighed 12.5kg and the weight limit on registered mail is 500g, the agent sent the package that day using the XpresspostTM service of Canada Post, rather than dividing the evidence into 25 packages to comply with the weight restriction. [10] The evidence was physically received by the Commissioner on July 28, 2014, four days after the submission deadline. [11]

The Commissioner advised Biogen by letter that XpresspostTM is distinct from Registered Mail Service. [13] The Commissioner has the ability to designate establishments that can accept delivery of correspondence sent to the Canadian Intellectual Property Office (“CIPO”). [26] Registered Mail Service is a designated establishment, and as such, the submission date is the date the package was submitted to Canada Post. XpresspostTM being distinct from the Registered Mail Service means that the submission date is the date the package was physically received. [12] The Commissioner determined that by not meeting the submission deadline Biogen had abandoned their conflict claims. [12]

The core issue that was addressed by the FC was whether the Commissioner properly used his discretion in deciding that XpresspostTM is not a designated establishment.

Standard of Review: Reasonableness

In Alberta (Information and Privacy Commissioner) v Alberta Teachers’ Association) the SCC articulated that when a decision-maker is interpreting their home statute the standard of review is presumptively reasonableness. [38] The FC found no basis to rebut this presumption, and as such, the standard was deemed reasonableness for all issues to be determined. [43-45]

Biogen’s Application Properly Filed

A preliminary issue argued by the AG was that this application was not properly before the court, as it was not made within 30 days of the decision, pursuant to subsection 18.1(2) of the Federal Courts Act. [55] The FC found that a letter sent by the Commissioner after its initial decision was not simply a courtesy letter, but the Commissioner’s final decision. [61] As Biogen’s application was filed within 30 days of this letter, the FC determined that the application was properly before the court. [62]

The Commissioner’s Discretion: Unreasonable

The Attorney General (“AG”) argued that use of XpresspostTM would “impose an additional administrative layer” for CIPO. [91] The FC however, rejected this argument, finding that whether CIPO receives the materials by way of Registered Mail or XpresspostTM, the staff are simply required to confirm the date stamped by Canada Post on the materials. [95] The FC also rejected the AG’s argument that capitalizing the words “Registered Mail Service” demonstrates that the Commissioner intended to exclude all forms of registered mail. [97] The FC rejected the AG’s third argument, that other parties would challenge the decision if the Commissioner took a helpful position towards Biogen. The FC determined that the Commissioner “is required to consider matters and act to the best of his ability in accordance with the legislation regardless of whether he will be challenged or not.” [99]

The central question for the FC was whether the Commissioner reasonably interpreted his authority to designate establishments that could accept delivery of correspondence sent to CIPO. [102] The guiding principle for the exercise of discretion in patent law is that it must be compatible with, and promote, the object and purpose of a statute. [104] The FC determined that the primary purpose of the regulation was to create a convenient and accessible system for filing with CIPO. [109]

The FC then referred to Sullivan on the Construction of Statutes, which states:

“If adopting an interpretation in favour of a plausible alternative would lead to absurdity, the courts may reject that interpretation in favour of a plausible alternative that avoids the absurdity.” [127]

The categories of absurdity, being “Purpose is defeated”, “Irrational distinctions” and “Consequences that are self-evidently irrational or unjust” were assessed. [128]

The FC concluded that all three categories of absurdity were apparent in the Commissioner’s interpretation. It was found to be self-evident that it was not convenient to divide one box of documents into 25 separate envelopes in order to comply with the 500g weight limit on registered mail, and therefore the Commissioner’s interpretation to exclude XpresspostTM defeated the purpose of convenience. [136] There is essentially no difference for CIPO when receiving regular registered mail versus XpresspostTM. As the Commissioner’s distinction is therefore based on the name of the service rather than the features it provides, the FC found the distinction to be irrational. [141] Finally, the consequences of the Commissioner’s interpretation were found to be extreme for Biogen, as they lost their right to be found “first to invent” for their claims that were in conflict. [142] This was deemed to be unjust as the sealed envelopes left the hands of the parties to the conflict at the same time, thereby giving Biogen no advantage by using XpresspostTM. [143]

The FC rejected the Commissioner’s interpretation in favour of the interpretation that delivery using XpresspostTM qualified as delivery made to a designated establishment as set out in rule 5(4) of the Patent Rules. [144] As the evidence was deemed not to be late, the remaining issues, regarding an extension of time to make submissions and abandonment of Biogen’s claims, did not need to be addressed, however, the FC dealt with each one briefly. [146]

Extension of Time: Refusing an Extension Not Reasonable

Biogen argued that the Commissioner had discretion to grant an extension of time to make submissions after determining that Biogen’s submission was late and the Commissioner’s refusal to do so was unreasonable. [149] The AG argued that a retroactive extension could not be granted. [150] The FC looked at the wording of the new and old Patent Rules and concluded that the Commissioner had discretion to retroactively grant an extension of time, and that failing to exercise it was an unreasonable fettering of such discretion. [156]

Failure to File Evidence in Conflict Proceedings Does Not Lead to Abandonment

Biogen vigorously argued that late delivery of their evidence does not result in their claims in the conflict proceedings being abandoned. [159] The FC found no authority for the proposition that failure to file an affidavit under section 43(5) of the old Patent Act will lead to abandonment, loss or removal of a claim from conflict proceedings. [165] Rather, in such circumstances, the party must rely only on their previous filings in the conflict proceeding. [165]