Monday, May 23, 2016

Blogging Break

I'll be taking a break from blogging for a couple of weeks. I'll resume in mid-June, starting with any cases I might have missed in the interim.

Wednesday, May 18, 2016

Xpresspost is a Designated Establishment

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

In Biogen v Canada (Attorney General) Elliott J held that use of Canada Post’s Xpresspost™ service is delivery to the designated establishment under s 5(4) of the Patent Rules, such that correspondence addressed to the Commissioner is deemed to be received by the Commissioner on the date of delivery to the designated establishment (or the next following business day that the Patent Office is open), as opposed to the date on which it is physically received by the Patent Office. While this application for judicial review arose in the context of a conflict proceeding under the Old Act (perhaps the last! [4]), it is of more general interest because the applicable rules under the Old Act were repealed without transitional provisions [20], so the case was decided under the “Rules of General Application” of the new Rules. The decision will also be relevant to Copyright Regulations, Industrial Design Regulations, Trademarks Regulations and Integrated Circuit Topography Regulations, all of which employ the same delivery process using a “designated establishment” [4].

Applying a deferential standard of review [43], Elliott J held that the Commissioner’s decision that only Registered Mail™ was permitted was unreasonable [144]. The broader question raised by this case is why the Commissioner adopted such an unreasonable position in the first place, particularly since, as detailed by Elliott J, the Commissioner’s interpretation would result in more cost and inconvenience for everyone, including the Patent Office as well as its clients.

Monday, May 9, 2016

FC Interpretation of Transitional Patent Listing Provisions Affirmed

Gilead Sciences Inc v Apotex Inc 2016 FCA 140 Boivin JA: Pelletier, Rennie JJA aff’g 2016 FC 295 (judgment), 2016 FC 231 (reasons) Heneghan J
            2,261,619 / tenofovir (PMPA) / TRUVADA

In brief reasons delivered from the bench, the FCA has affirmed Heneghan J’s decision in favour of Apotex (blogged here) which turned on the transitional provisions of the PM(NOC) Regulations relating to patent listing, saying “we see no error of law in the Federal Court Judge’s analysis and conclusions that would warrant this Court's intervention.” [1].