T-3439-76
Robert W. Alexander (Applicant)
v.
Deputy Attorney General of Canada (Respondent)
Trial Division, Walsh J.—Ottawa, November 9
and 23, 1976.
Patents—Crown liability Hardship caused by interruption
of postal services—Whether applicant took reasonable steps to
comply with time limit allowed by Patent Act Whether
application for relief made without undue delay Postal Ser
vices Interruption Relief Act, R.S.C. 1970, c. P-15, ss. 2 and
3—Patent Act, R.S.C. 1970, c. P-4, ss. 3, 28(2), 29(1).
Applicant seeks relief under sections 2 and 3 of the Postal
Services Interruption Relief Act, claiming that a postal strike
prevented him from filing an application for a patent within the
time limit allowed by sections 28 and 29 of the Patent Act. He
seeks further relief under section 3 of the Patent Act which
empowers the Court to waive the time requirement.
Held, the application is dismissed. The relief sought comes
within the ambit of the Postal Services Interruption Relief Act,
but the applicant failed to take reasonable steps to comply with
the requirements of section 3(b) of the Patent Act and further
failed to apply for relief without undue delay pursuant to
section 3(c) of the Act.
Knapsack Actiengesellschaft v. Deputy Attorney General
of Canada [1968] 2 Ex.C.R. 59, discussed.
APPLICATION for declaratory judgment.
COUNSEL:
Theodore P. Metrick, Q.C., for applicant.
R. Côté for respondent.
SOLICITORS:
Theodore P. Metrick & Associates, Ottawa,
for applicant.
Deputy Attorney General of Canada for
himself.
The following are the reasons for judgment
rendered in English by
WALSH J.: This is an application under the
provisions of the Postal Services Interruption
Relief Act' for relief in respect of Canadian
' R.S.C. 1970, c. P-15.
Patent Application No. 241949. The motion as
originally drawn and produced on September 2,
1976, was presented for oral hearing on November
9, 1976. It was supported by two affidavits of
Allan Newman who describes himself as Realtor
and Consul-General for Peru residing in Burnaby,
British Columbia, dated respectively July 9 and
September 24, 1976, and by an affidavit by the
inventor who describes himself as a citizen of the
United States presently residing at Britannia
Beach, British Columbia, which affidavit was
taken in the State of California on January 22,
1976. The motion as originally drafted seeks an
order:
(a) declaring that the applicant has suffered loss or hardship
as .a result of an interruption of normal postal services;
(b) declaring that the twelve month time requirement con
tained in Section 29(1) of the Patent Act within which
Canadian Patent Application Serial No. 241,949 can be filed
in the Canadian Patent Office in order to be entitled to
protection under the term of any treaty or convention relat
ing to patents to which Canada is a party be waived;
(c) declaring that the 18th day of November, 1975 be and
the same is hereby fixed as the day on or before which
Canadian patent application Serial No. 241,949 should have
been filed in order to be entitled to protection under the term
of any treaty or convention relating to patents to which
Canada is a party;
(d) declaring that the twelve month period described in
Section 29(1) of the Patent Act within which Patent
Application Serial No. 241,949 must be filed in order to be
entitled to protection under the terms of any treaty or
convention relating to patents to which Canada is a party be
and the same is hereby extended to expire on the 18th day of
December, 1975;
(e) declaring that Canadian Patent Application Serial No.
241,949 may be prosecuted by the applicant in the Canadian
Patent Office as an application filed within the said twelve
month period referred to in Section 29(1) of the Patent Act;
(f) granting such other relief as may be appropriate.
At the hearing of the motion, with consent of
counsel for the respondent who opposed the motion
orally and had also made written representations
on October 12, 1976, opposing it pursuant to the
provisions of Rule 324 by virtue of which the
motion had originally been presented, an amend
ment was made so as to add an additional para
graph (f), with the paragraph (f) in the original
motion now becoming paragraph (g). The new
paragraph (f) which was added at the suggestion
of counsel for respondent so that petitioner could
also seek relief under section 28(2) of the Patent
Act reads as follows:
(f) declaring that the applicant shall be entitled to relief
under Section 28(2) of the Patent Act permitting him to file
his patent notwithstanding the lapse of time within which he
was prevented from so filing.
The sections of the Postal Services Interruption
Relief Act which are relevant read as follows:
2. Where as a result of the interruption of normal postal
services that occurred between the 22nd day of July and 7th
day of August 1965 or where as a result of any subsequent
interruption of normal postal services in Canada of more than
forty-eight hours duration however caused, a person has suf
fered loss or hardship by reason of his failure to comply with
any time requirement or period of limitation contained in any
law of Canada, he may, on fourteen days notice in writing to
the Deputy Attorney General of Canada and to any other
person who he has reason to believe may be affected by any
order made pursuant to section 3 as a result of an application
by him under this section, apply to a judge of the Exchequer *
Court of Canada for relief.
3. If the judge to whom an application under section 2 is
made is satisfied
(a) that the applicant has suffered loss or hardship as a
result of any interruption described in that section,
(b) that the applicant took such reasonable steps as were
open to him to comply with the time requirement or period of
limitation without avail, and
(c) that the application was made without undue delay,
the judge may, after affording to any person who may be
affected by any order made pursuant to this section as a result
of the application an opportunity to be heard on the application
or to make representations in connection therewith, and subject
to such conditions, if any, as to him seem just,
(d) make an order waiving the time requirement or period of
limitation in relation to the applicant and fixing such other
time requirement or period of limitation in relation thereto as
in his opinion the circumstances warrant, and
(e) make such further order as, in his opinion, is necessary to
permit the applicant effectively to do any thing or exercise
any right that he would have been able to do or exercise if he
had not failed to comply with the time requirement or period
of limitation, including, where the time requirement or
period of limitation with which the applicant failed to comply
relates to the commencement or carrying on of any proceed
ing authorized or provided for under any law of Canada,
such order as he considers necessary to enable the proceeding
to be commenced and continued or to be carried on as
though the applicant had not failed to comply with that time
requirement or period of limitation.
* Now Federal Court—see R.S.C. 1970 (2nd Supp.) c. 10, s.
64(2).
The sections of the Patent Act 2 from the operation
of which relief is sought are as follows:
28. (2) Any inventor or legal representative of an inventor
who applies in Canada for a patent for an invention for which
application for patent has been made in any other country by
such inventor or his legal representative before the filing of the
application in Canada is not entitled to obtain in Canada a
patent for that invention unless his application in Canada is
filed, either ,
(a) before issue of any patent to such inventor or his legal
representative for the same invention in any other country, or
(b) if a patent has issued in any other country, within twelve
months after the filing of the first application by such
inventor or his legal representative for patent for such inven
tion in any other country.
•
29. (1) An application for a patent for an invention filed in
Canada by any person entitled to protection under the terms of
any treaty or convention relating to patents to which Canada is
a party who has, or whose agent or other legal representative
has, previously regularly filed an application for a patent for
the same invention in any other country that by treaty, conven
tion or law affords similar privilege to citizens of Canada, has
the same force and effect as the same application would have if
filed in Canada on the date on which the application for patent
for the same invention was first filed in such other country, if
the application in this country is filed within twelve months
from the earliest date on which any such application was filed
in such other country or from the 13th day of June 1923.
The facts as disclosed by the affidavits in the file
are as follows.
In Mr. Alexander's affidavit of January 22,
1976, he states that he is the inventor of patent
covered by United States Patent No. 3913004
issued on October 14, 1975, at which time he
resided in California. Although his affidavit refers
to a copy of the patent as being attached and
marked as Schedule "A", this copy is not in the
record and there is no indication in the affidavit or
elsewhere as to the date on which he applied for
the patent in the United States. Nevertheless he
states that he was aware that the time within
which to register the patent within Canada had to
be on or before the 14th day of November, 1975.
During the hearing counsel for respondent indicat
ed that actually the date for filing the Canadian
application did not expire until November 18,
1975. Mr. Alexander continues in his affidavit
2 R.S.C. 1970, c. P-4.
stating that he was advised by Mr. Newman on or
about October 26, 1975, that a postal strike was in
process in Canada and that he therefore could not
apply for registration in Canada by way of post.
He travelled to British Columbia arriving in Van-
couver on or about October 24, 1975, at which
time he states the mail strike was still in progress.
(There would appear to be some contradiction here
if he was only first advised of this on October 26
but the difference in date is not significant since it
was common ground at the hearing that the postal
strike lasted from October 21 until December 4,
1975.) His affidavit continues that he could not
take the time nor incur the expense to travel to
Ottawa at the time and was not aware of any
means by which an application for registration of a
patent in Canada could be delivered. On Novem-
ber 25, 1975, Mr. Newman advised him that he
would be travelling to Ottawa on December 3,
1975, so he requested and authorized him to make
the application on his behalf. Mr. Newman attend
ed at the office of the Registrar of Trademarks
[sic] at Ottawa and filed an application for regis
tration although the time within which it had to be
made had expired. He concludes that he would
have applied to file the patent with the Registrar
of Trademarks [sic] at Ottawa within the time
limit if the mail strike had not made it impossible
to do so.
Mr. Newman's first affidavit of July 9, 1976,
states that he has known Mr. Alexander for
approximately one year and that in May, 1975, he
visited him in California and was advised that he
had applied to the Commissioner of Patents and
Trademarks for the United States for the patent
which was eventually issued under No. 3913004
and he states that Mr. Alexander told him that
when the patent was issued in the United States he
intended to register it in Canada. He states that on
or about October 24, 1975, he was requested by
Mr. Alexander to make the application on his
behalf in Canada and advised him that a postal
strike was in process so that the application for
registration could not be submitted by regular
post. On November 25, 1975, he advised Mr.
Alexander that he would be attending Ottawa on
or about December 3, 1975, and Mr. Alexander
then requested him to make application for regis
tration while he was there. He states that on
December 3, 1975, he attended at the Patent
Office and made application to register the patent
and was advised that there would be technical
difficulties in completing it and that he should seek
legal advice which he then did. Application to file
the patent was made in Ottawa under No. 241949.
He states that he believes that the application
would have been made within the time limit but
for the labour dispute in the postal service. He
states that he has read Mr. Alexander's affidavit
and confirms the statements therein.
Mr. Newman's second affidavit on September
24, 1976, states that he was consulted on or about
October 26, 1975, by Mr. Alexander respecting
the patent and informed that it would have to be
registered in Ottawa on or before November 18,
1975. He personally attended at the main Post
Office in Burnaby, British Columbia, Victoria,
British Columbia, and Vancouver, British
Columbia, and was advised by the officials there
not to attempt to post any documents as mailable
matter was being vandalized and in any event no
mail was moving because of the strike but he states
that he then attempted to find someone who would
be going to Ottawa but was unable to find some
one who would undertake to file the application
with the Patent Office. After personally discussing
the matter with the postal officials at Burnaby,
Victoria and Vancouver who refused to accept the
documents he was left with no alternative but to
arrange to go to Ottawa and the earliest he could
do so was on December 3, 1975. He states that had
the postal service been in operation on or about
October 26, 1975, the application would have been
mailed in the normal way and would have been
received by the Commissioner of Patents in good
time to effect the registration.
Application was opposed by counsel for respond
ent on several grounds. First he states that since
the postal services were not in fact used in this
case but an alternative method of delivery was in
fact adopted the Postal Services Interruption
Relief Act can have no application. I do not accept
this argument, since the wording of the Act is
sufficiently broad to cover any case of loss or
hardship resulting from the interruption of normal
postal services and should not I believe be confined
to cases where a letter has actually been placed in
the mail and then has not been delivered within a
normal delay as the result of interruption of such
services. This is all the more true in the present
case where it was on the advice of postal officials
that the application was not placed in the mail as
they refused to accept same. The second argument
is however far stronger, respondent contending
that applicant failed to provide satisfactory evi
dence that either he or his agent, Mr. Newman,
took such reasonable steps as were open to him to
comply with the time requirement or period of
limitation. It is clear that an alternative method of
delivery was not only considered but in fact even
tually was carried out although not until Decem-
ber 3, 1975, long after the expiration of the delay.
The Postal Services Interruption Relief Act was
carefully examined and interpreted in the judg
ment of Chief Justice Jackett (then President) in
the case of Knapsack Actiengesellschaft v. Deputy
Attorney General of Canada'. After expressing
some doubts as to whether the twelve-month
period in section 29(1) of the Patent Act is a "time
requirement or period of limitation" within the
meaning of those words in the Postal Services
Interruption Relief Act and also whether section 3
of that Act authorizes the Court to make an order
that waives the "time requirement" and substitutes
as a "time requirement" a time that has already
gone past he finally concludes that, giving the
widest possible sense to the language employed, it
may have been intended to apply the statute to
both classes of case, especially since a judge acting
under the statute is persona designata and there
may therefore be no appeal from a refusal to make
an order sought under the statute. He was careful
to point out (at page 64) that in construing the
statute he was without the advantage of argument
by counsel for a party who might be adversely
affected and that in the event of being met with
such an argument in some other case in future he
would not consider himself bound by the decision
he was making. He still insisted, moreover, on the
fulfilment of the requirement that the application
should be made without undue delay as required
by section 3(c) of the Act and required the filing
of material to satisfy him as to that question.
Earlier in the judgment (at page 61) he had
3 [1968] 2 Ex.C.R. 59.
indicated that he was satisfied that, if it had not
been for the interruption in postal service, the
application would have been filed in time to have
made section 29(1) of the Patent Act applicable to
it, that he was satisfied that being deprived of
whatever advantages that provision confers is a
hardship within the meaning of the Postal Services
Interruption Relief Act, and that the applicant
took such reasonable steps as were open to it to file
its Canadian application within the twelve-month
period referred to in section 29(1).
Each case must depend on its own facts and in
the present case I am also satisfied with the first
point, namely, that if there had been no postal
strike it is likely that the application would have
been mailed and received in time to have made
section 29(1) of the Patent Act applicable that is
to say before November 18, 1975. I am also
satisfied that applicant will suffer hardship if he
cannot obtain the advantages of that provision as
well as of section 28(2) of the Patent Act. I am far
from satisfied however that the applicant took all
reasonable steps open to him to file his Canadian
application before November 18, 1975, nor that
the present application has been made without
undue delay. While such an application for a
patent in Canada would probably most frequently
be made by mail, especially in the case of a
non-resident applicant or of an applicant residing
in Canada at some considerable distance from
Ottawa, it can, of course, also be made by personal
attendance of the applicant or a representative at
the office of the Commissioner of Patents in
Ottawa, as was in fact done in this case although
after the time period had expired. During postal
services interruptions which have become all too
frequent in this country it is a matter of common
knowledge that businessmen requiring delivery of
important documents have been forced to adopt
alternative methods. Air express is frequently used
as well as various courier services. It would also
not have been impossible for applicant to have
done as many people did and take the application
to a point in the United States near the British
Columbia border such as Seattle from where it
could have been mailed to an attorney or agent in
some place not too distant from Ottawa such as
Massena or Syracuse with instructions to deliver it
in person from there to the Commissioner of Pat
ents in Ottawa. The applicant did not even see fit
to employ an attorney or patent agent experienced
in these matters in order to make the application
but instead relied on Mr. Newman who appears to
be a friend and did what he could to help Mr.
Alexander, but who does not appear to have any
special qualifications or experience in this field. A
very substantial period elapsed between October
24 or 26, as the case may be, and November 18,
during which arrangements might have been made
for delivery of the application to Ottawa by other
means than by post, but while both Mr. Newman
and Mr. Alexander appear to have been aware
that it should have been filed by November 18,
1975, neither appears to have been greatly con
cerned about the consequences of not filing it until
December 3, 1975.
I cannot conclude therefore that the applicant
took "such reasonable steps as were open to him to
comply with the time requirement or period of
limitation without avail" as is required by section
3(b) of the Act. Applicant's contentions give little
weight to this section and seem to be based on his
having concluded at the time that the only reason
able method of filing the application in time was
by use of the Canadian postal service. The situa
tion in the present case differs entirely from those
cases where an application was in fact mailed in
time to arrive before the expiration of the deadline
if normal delivery had taken place, but is in fact
not so delivered, because of interruption in the
postal service, the delay in delivery being beyond
the control of the sender. In the present case where
the application had not been mailed and in fact
that applicant's agent was prevented from mailing
it, there was still a period of some 25 days in which
to take reasonable steps "to comply with the time
requirement or period of limitation" within the
meaning of section 3(b) of the Act. In fact no steps
whatsoever were taken within this period.
Furthermore, although this conclusion is suffi
cient to justify the dismissal of the application
there is another ground for doing so, since the
present application was clearly not made without
undue delay within the meaning of section 3(c) of
the Act as it was not produced until September 2,
1976, some nine months after the time when it
should have been made if it had been made with
out "undue delay".
In view of the conclusion which I reached on
these points it is unnecessary to deal with the
further objection which was raised that there is
nothing to indicate that notice was given to "any
other person who he has reason to believe may be
affected by any order made pursuant to section 3
as a result of an application by him under this
section" as required by section 2 of the Act nor is
there any statement in any of the affidavits that
applicant has no knowledge of any such person.
Section 3 of the Act requires the judge to afford
"to any person who may be affected by any order
made pursuant to this section as a result of the
application an opportunity to be heard on the
application or to make representations in connec
tion therewith". Such representations were in fact
made on behalf of the Deputy Attorney General of
Canada when the application was served and while
it may be correct to conclude that there is no other
person who might be interested, the judge should
not be expected to so conclude if the affidavit of
applicant does not contain a statement to this
effect as has been done in connection with previous
applications under this statute. In dismissing the
application however I prefer not to rely on this
somewhat technical ground, but to base the dis
missal on the failure to take reasonable steps to
comply with the time requirement or period of
limitation, in the Patent Act, and, subsequently to
make the present application without undue delay.
The application will therefore be dismissed with
costs.
ORDER
The application is dismissed with costs.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.