Canada: Sending Correspondence By Xpressposttm To The Commissioner Of Patents Is Found To Be Effected On The Date Of Delivery, Not On The Date Of Receipt (Intellectual Property Weekly Abstracts Bulletin — Week Of May 16)

Last Updated: May 19 2016
Article by Chantal Saunders, Beverley Moore and Adrian J. Howard

Most Read Contributor in Canada, September 2016

Patent Decisions

Sending correspondence by XpresspostTM to the Commissioner of Patents is found to be effected on the date of delivery, not on the date of receipt
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.

Copyright Decisions

No copyright infringement in writing a book based on the facts in a film documentary
Maltz v. Witterick, 2016 FC 524

The Applicants are the producers and directors of a documentary film which they alleged was infringed by the Respondents, an author and publisher of a book. The evidence provided that the Respondent author saw the documentary and it inspired her to write the book.

Although the author used the real names and facts she learned from the documentary, she said she targeted the book at young adults and the style was influenced by novels such as the Hunger Games.

The Applicants pointed to what they alleged are at least 30 similarities between the documentary and the book, which amounted to a substantial taking. The Applicants further acknowledged that while well-known "large" historical facts are open to use by anyone, the 30 similarities are "small facts" not documented anywhere but in the documentary.

The Court did not agree that there is a distinction between "large" and "small" facts, stating that no one owns copyright in facts no matter what their relative size or significance. Furthermore, the Court did not find that the book was a substantial taking from the documentary. As stated by the Court, since facts are not protected by copyright, they are not part of a work's originality.

The Court then contrasted the copying of a work with fictional characters compared with real people, finding that there cannot be copyright over a real person, whether dead or alive. Therefore, although the framing of the story and certain phrases or words might have been taken from the documentary, this was not considered to be the same as a copying of fictional characters brought to life in the documentary.

Ultimately the Court found that the book and the documentary both tell the story of the same real person, but considered that the book is not a mere imitation or substantial taking from the documentary.

Class action by land surveyors against Teranet dismissed as copyright found to have been assigned to the province
Keatley Surveying v Teranet, 2016 ONSC 1717

A class action brought by land surveyors against Teranet, the private sector company that manages Ontario's electronic land registry system, has been dismissed. This class action was brought on behalf of 350 land surveyors who alleged breach of copyright and unlawful appropriation of the class members' work.

Documents prepared by land surveyors are registered in the land registry system. On-line copies of registered plans of survey are provided by Teranet to members of the public for a fee prescribed by statute, but Teranet does not pay any fees or royalties to the land surveyors.

The surveyors understood and accepted that the province had the right to copy and sell the plans of survey once they were registered or deposited at the land registry under the old paper-based system. The twist in this class action was the allegation that there is now a for-profit third-party that has inserted itself between the government and users of land registration services. It was alleged that Teranet reaps substantial profits at the expense of class members.

The class members argued that the transfer of ownership in the survey documents does not necessarily affect the ownership of the copyright in the document. However, the Court found that the relevant legislative provisions made clear that when plans of survey are registered or deposited at the land registry office, the province takes full ownership of the property in these works which includes the right to make copies.

This finding that the registration or deposit of the plans of survey in the land registry office transfers copyright to the province was determinative. There could not be any copyright infringement by Teranet who was publishing the surveys "by or under the direction or control of Her Majesty".

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