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 [4]), it is of more general interest because the applicable rules under the Old Act were repealed without transitional provisions [20], so the case was decided under the “Rules of General Application” of the new Rules.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.
Subsection 5(4) provides that “Correspondence addressed to the Commissioner may be physically delivered to an establishment that is designated by the Commissioner in the Canadian Patent Office Record,” and this triggers the deemed delivery. Subsection 15.2 of the CPOR designates the establishment as follows (my emphasis) [28]:
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.
The main issue was what is meant by “Registered Mail Service of Canada Post”? Does it include the Xpresspost™ service or only the Registered Mail™ service?
The uncontested facts were that Biogen’s patent agent took evidence relevant to the conflict dispute to the office of Canada Post in MontrĂ©al
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. [10]
The evidence was physically received by CIPO on July 28, 2014 [11]. The Commissioner subsequently advised Biogen “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 Biogen had failed to respond in a timely fashion and it was removed from the conflict proceedings [12].
It was undisputed that Xpresspost™ offers the same benefits and features as Registered Mail™, namely a tracking number, delivery confirmation and delivery updates [76]. In particular, the Commissioner acknowledged that the parcel in question was date stamped when delivered to Canada Post in the same manner as Registered Mail™ [72].
The Commissioner’s strongest argument on the issue turned on capitalization:
[85] The Respondent [Commissioner] submits that if the Commissioner had intended to
permit filing by any kind of registered mail service that could have been done by using
more general language rather than specifying “Registered Mail Service” of Canada Post.
They also point to the capitalization of the words saying a meaning must be ascribed to
the capital letters.
Elliott J dismissed this, saying:
[97] I am not prepared to find that by capitalizing the words “Registered Mail Service”
the Commissioner intended to exclude all forms of registered mail. No authority was
provided to support that proposition.
In addition, as Biogen pointed out [75], if capitals really are important, there is no such thing as “Registered Mail Service” of Canada Post. Canada Post says “Registered Mail is a service” but so far as I can tell, it never refers to “Registered Mail Service.”
Having considered and dismissed this textual point, Elliott J thoroughly considered purposive arguments, particularly in light of the reasons for the rules set out in the RIAS [106] to the amendment introducing the new rule, noting that the purpose of the provision was to create “an accessible system of conveniently filing with CIPO” [134]. With this purpose in mind, Elliott J completely dismantled all of the Commissioner’s policy arguments. She noted that it would be irrational if the marketing words used by Canada Post – which Canada Post might change at any time, without consulting the Commissioner – should determine whether a particular service fell with the statutory definition, as opposed to the functional features of the service [141]. She noted that Xpresspost™ provides a clear date stamp, like Registered Mail™, and including Xpresspost™ in the definition would further the purpose of the regulation in a number of ways. If only Registered Mail™ could be used, the parties would have to divide their submissions into separate envelopes of less than 500g – in this case, that would have meant more than 25 envelops for Biogen’s evidence at issue, not to mention the other parties. This would defeat the stated purpose of the amendment by increasing the administrative burden on both CIPO and clients [136].
In the result, Elliott J held that the Commissioner’s interpretation of “Registered Mail Service of Canada Post” was unreasonable, and therefore the evidence was not late [144, 146].
Elliott J’s analysis strikes me as entirely compelling. I find it difficult to understand why the Commissioner took such a clearly unreasonable position. The motivation may have been that the Commissioner felt that Biogen had brought the problem on itself by waiting until the day the materials were due to deliver its evidence and should not be allowed to avail itself of the “Hail Mary” of the designated establishment provisions [80]. But that view is no more than disagreement with the policy behind the designated establishment. Whether or not the Commissioner agrees with the legislative policy, the Commissioner’s duty is to carry out that policy, not to try to defeat it with an unreasonable interpretation of the legislation.
Elliott J also addressed several other issues, such as whether the commission had discretion to grant an extension of time and whether failure to file evidence resulted in abandonment of the conflict claims, “for completeness.” in case she was found to be in error on the main issue [147]-[172]. While her reasons were brief, they were considered, and will be helpful authority in future cases on these issues. Elliott J ruled against the Commissioner on all these other points. Elliott J also considered a preliminary issue as to when the Commissioner made a “final decision” and ruled against the Commissioner on that point as well [62].
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