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Xpresspost and Registered Mail: Two Sides of the Same Coin

In Biogen v Attorney General of Canada, Justice Elliott held that use of the Xpresspost service of Canada Post constitutes delivery to a “designated establishment”.

This case involves a conflict proceeding under the Old Patent Act, for a patent application filed prior to October 1, 1989. Under the “old” Act, patents were awarded to the “first to invent”. When multiple applicants claim the same or similar subject matter, a conflict proceeding is initiated to determine which party is entitled to a patent for the claimed subject matter. Parties to a conflict proceeding may file evidence with the Commissioner to establish their dates of invention. The Canadian Patent Office Record describes that the Commissioner may receive evidence by registered mail:

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 …

On the day its evidence was due to be filed, the Applicant attempted to deliver its evidence to the Commissioner by registered mail. Canada Post refused to accept the evidence because its weight, 12.5 kilograms, exceeded the 500 gram limit for registered mail. The Applicant instead sent the evidence by Xpresspost, and the Commissioner received it four days later.

The Commissioner advised the Applicant that the evidence was considered to have been submitted four days late and that the patent claims that were subject to the conflict proceeding were considered abandoned. The Applicant requested reconsideration of the Commissioner’s decision and a four-day extension of time in which to file the Evidence. The Commissioner refused the requests.

The Applicant then applied to the Federal Court for judicial review of the Commissioner’s refusals. Justice Elliott characterized the issue as whether the Commissioner’s interpretation of the registered mail requirement was reasonable and concluded that it was not. Justice Elliott held that use of Xpresspost constituted delivery to a designated establishment and that the date of delivery to the Commissioner was not relevant. As a result, Justice Elliott concluded that the evidence was not submitted late.

Although this finding decided the outcome of the judicial review, Justice Elliott also addressed other issues that were raised. Justice Elliott concluded that the Commissioner had discretion to extend time and to reinstate abandoned claims and that the Commissioner lacked the authority to find that the Applicant’s claims were abandoned.

A copy of the decision may be found here.