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

The Federal Court has held that the use of XpresspostTM service of Canada Post is considered to be delivery to a designated establishment within rule 5(4) of the Patent Rules.

The Commissioner of Patents had determined that the Applicant did not respond in time to a requisition in a conflict proceeding because they sent their correspondence by XpresspostTM on the day it was due. According to the Commissioner, the Registered Mail Service of Canada Post is the establishment designated by the Commissioner to receive correspondence as if it had been physically delivered to the Commissioner, not XpresspostTM.

The Commissioner determined that in sending the evidence by XpresspostTM the delivery was not received until it physically arrived at the Patent Office four days after the deadline. This resulted in the Applicant's patent application, first filed in 1979, being removed from conflict proceedings. The Applicant's claims in conflict were considered to have been abandoned and were not considered when patents are awarded for those claims.

The Applicant argued that sending the evidence by XpresspostTM was appropriate; the decision to refuse to grant an extension of time was unreasonable; the Commissioner exceeded his jurisdiction when he deemed the Applicant's conflict claims abandoned; and the Commissioner erroneously fettered or failed to exercise his discretion by refusing to even consider reinstatement of the Applicant's conflict claims.

The Court generally found for the Applicant on all points. The Commissioner's narrow and strict interpretation of Registered Mail Service of Canada Post was found to be unreasonable by the Court. In the alternative, the Court held that the Commissioner had the discretion to extend the time for the delivery of the evidence and the decision to refuse an extension of time was not reasonable.

Also, had the Court not found the evidence was delivered on time, it would have set aside the Commissioner's determination that the application be removed from the conflict proceedings for a lack of legislative authority.

Thus, the application for judicial review was granted and the Commissioner's decision was set aside.

It is worthy to note that the Court found that this reasoning regarding the delivery by a "designated establishment" is also employed in the Copyright Regulations, Industrial Design Regulations, Trademarks Regulations and Integrated Circuit Topography Regulations.