Date: 20100126
Docket: T-329-09
Citation: 2010 FC 86
Ottawa, Ontario,
January 26, 2010
PRESENT: The Honourable Madam Justice Tremblay-Lamer
BETWEEN:
FRÉDÉRIC PICARD
Applicant
and
THE COMMISSIONER OF PATENTS
and
THE CANADIAN INTELLECTUAL PROPERTY OFFICE
Respondents
REASONS FOR JUDGMENT AND
JUDGMENT
[1]
This is an application under subsection 77(1)
of the Official Languages Act, R.S.C. 1985, c. 31 (4th Supp.) by
Frédéric Picard (the applicant) against the Canadian Intellectual Property
Office (the Office) and the Commissioner of Patents (together, the
respondents).
FACTS AND LEGISLATIVE FRAMEWORK
[2]
A person who wishes to patent an invention in
Canada (an inventor) must file an application for a patent together with a
petition, an abstract summarizing the subject-matter of the invention and a
specification that contains “a claim or claims defining distinctly and in
explicit terms the subject-matter of the invention for which an exclusive
privilege or property is claimed” with the Commissioner of Patents, in
accordance with section 27 of the Patent Act, R.S.C. 1985, c. P-4. “[I]f
an application for the patent in Canada is filed in accordance with [the Patent Act] and all other
requirements for the issuance of a patent under this Act are met”, the
Commissioner shall grant a patent for the invention.
[3]
The patent application is prepared by the
inventor or a patent agent retained by the inventor. It may be filed in English
or French.
[4]
Once the application is filed, the inventor may
request that it be examined. When such a request is made, the Commissioner of
Patents causes the application to be examined by an examiner employed by the
Patent Office (ibid., s. 35). The examiner must be satisfied that
the invention to which the patent application relates meets the requirements of
the Patent Act in terms of patentability.
[5]
An examiner may communicate with the inventor regarding
any irregularities in the patent application or the accompanying documents. Inventors
may amend their applications in response to a communication, but examiners may
not make amendments themselves.
[6]
Under section 10 of the Patent Act, a
patent application is confidential for a period of 18 months, on expiry of
which the application and the documents relating to it, and the patents, may be
inspected.
[7]
When examination of the application has been
completed, a patent will be granted if the invention meets the requirements of
the Patent Act; otherwise, the application will be refused (ibid.,
section 40). A decision refusing a patent application may be appealed to
the Federal Court (ibid., section 41).
[8]
If a patent is granted to an inventor, the
inventor receives a certificate entitled “Canadian Patent”, containing certain
information required under sections 42 and 43 of the Patent Act (in
particular, the name or title of the invention covered, the filing date of the
application for the patent and the date on which the patent was granted). That
information is in both official languages. Attached to the certificate are a
copy of the petition, the abstract, the specification and the drawings, as
submitted by the inventor, and a cover page, produced by the Patent Office,
containing the name of the inventor and the name of the patent owner, a drawing
representing the invention (as submitted by the inventor) and the abstract
submitted by the inventor.
[9]
The result is that even when a patent
application becomes open to public inspection, it is in one official language
only, the language in which it was filed. Only certain information, none of
which allows the reader to understand how the invention covered functions and
the scope of the monopoly granted, is available in both official languages once
the patent is granted.
[10]
At the applicant’s request, the Office of the
Commissioner of Official Languages (the OCOL) investigated whether this
situation is consistent with the Official Languages Act, and in
particular with Parts II, IV and VII of that Act.
[11]
The OCOL submitted its final report on
January 6, 2009. It concluded that the Patent Office was not in violation
of Part II (relating to “Legislative and Other Instruments”) and Part IV
(relating to “Communications with and Services to the Public”) of the Act.
However, it recommended that the Office develop an action plan with a view to
making patent abstracts available in both official languages, so the Patent
Office would meet the objective of promoting linguistic equality in accordance
with Part VII of the Official Languages Act.
[12]
The Office approved three projects in response
to the recommendations made by the OCOL. It will make available bilingual
abstracts of patent applications from the international application system
under the Patent Cooperation Treaty and possibly provide an unofficial
automated translation of abstracts for all other patents. In addition, the
Office will make available to the public a bilingual keyword search system
capable of returning results in both languages in response to a search in one
language.
[13]
The applicant was not satisfied with the report
by the OCOL and the response from the Office and brought this application.
ISSUES
[14]
The applicant submits that patents and patent
applications must be bilingual to meet the requirements of the Official
Languages Act. The issue is therefore whether the fact that those documents
are available in only one of the two official languages violates
(1) Section 7 of the Official Languages Act;
(2) Section 12 of that Act;
(3) Section 22 of that Act; or
(4) Part VII of that Act (and in
particular section 41).
[15]
In the event that the answer to that question is
yes, the Court will have to consider the appropriate remedy in the
circumstances.
ANALYSIS
(1) Section 7 of the Official Languages Act
[16]
Section 7 of the Official Languages Act
reads as follows:
|
Legislative
instruments
7. (1) Any
instrument made in the execution of a legislative power conferred by or under
an Act of Parliament that
(a) is
made by, or with the approval of, the Governor in Council or one or more
ministers of the Crown,
(b) is
required by or pursuant to an Act of Parliament to be published in the Canada
Gazette, or
(c) is of
a public and general nature
shall
be made in both official languages and, if printed and published, shall be
printed and published in both official languages.
Instruments
under prerogative or other executive power
(2) All instruments made in the exercise of a prerogative
or other executive power that are of a public and general nature shall be
made in both official languages and, if printed and published, shall be printed
and published in both official languages.
…
|
Textes
d’application
7. (1) Sont
établis dans les deux langues officielles les actes pris, dans l’exercice
d’un pouvoir législatif conféré sous le régime d’une loi fédérale, soit par
le gouverneur en conseil ou par un ou plusieurs ministres fédéraux, soit avec
leur agrément, les actes astreints, sous le régime d’une loi fédérale, à
l’obligation de publication dans la Gazette du Canada, ainsi que les
actes de nature publique et générale. Leur impression et leur publication
éventuelles se font dans les deux langues officielles.
Prérogative
(2) Les actes qui procèdent de la prérogative ou de tout
autre pouvoir exécutif et sont de nature publique et générale sont établis
dans les deux langues officielles. Leur impression et leur publication
éventuelles se font dans ces deux langues.
…
|
Submissions by the Parties
[17]
In the applicant’s submission, this provision is
applicable to patents, which he submits are legislative in nature, in a manner
similar to regulations, to which section 133 of the Constitution Act,
1867, the requirements of which are reiterated in section 7 of the Official
Languages Act, applies, as the Supreme Court explained in Attorney
General of Quebec v. Blaikie, [1981] 1 S.C.R. 312, 123 D.L.R. (3d) 15.
[18]
The applicant submits that a patent meets the
criteria proposed by the Supreme Court of Canada in Reference re Manitoba
Language Rights, [1992] 1 S.C.R. 212, to determine whether
orders-in-council are “of a legislative nature” and so the constitutional
bilingualism requirement applies. In his submission, patents meet the formal
criterion, the requirement that the instrument in question be made by the
government or subject to its approval, because the Commissioner of Patents, who
approves patent applications, is appointed by the Governor in Council and his
seal is similar to the Great Seal of Canada. He submits that patents also meet
the content criterion because they embody rules of conduct, in this instance a
prohibition on making the product covered by a patent; they have force of law
because they bear the Commissioner’s seal; and they apply to an undetermined
number of persons.
[19]
He relies on Whirlpool Corp. v. Camco Inc.,
2000 SCC 67, [2000] 2 S.C.R. 1067, at paragraph 49, in which
Binnie J., writing for the Court, explains that once a patent is issued it
is a “regulation” within the meaning of the Interpretation Act, R.S.C.
(1985), c. I‑21.
[20]
The applicant also cited the decision of
the Supreme Court in Sinclair v. Quebec (Attorney General), [1992] 1 S.C.R.
579, 89 D.L.R. (4th) 500, in which the Court
concluded that “[t]he requirements
of s. 133 cannot be circumvented by the disingenuous division of the
legislative process into a series of discrete steps, and then claiming that
each of these steps, when examined in isolation, lacks a legislative
character”. The Court therefore held that a municipal corporation’s letters
patent, which the applicant believes are comparable to patents, had to be
published in both official languages.
[21]
The
applicant’s final argument is that patents are covered by the specific
provisions of section 7 of the Official Languages Act, because they
are letters patent and are made in the exercise of the executive prerogative.
[22]
The
respondents submit that section 7 of the Official Languages Act does
not apply to patents. In their submission, a patent is not an “instrument made
in the execution of a legislative power conferred by or under an Act of
Parliament”, and is rather title to property that defines private rights.
Notwithstanding the fact that those rights are published, a patent is a private
document.
[23]
In the opinion
of the respondents, patents do not meet any of the criteria relating to content
and effect proposed by the Supreme Court in Reference re Manitoba Language
Rights, supra at paragraph 18, that an instrument must meet in order
to be characterized as “legislative”. In their submission, a patent does not have
force of law, although, like any document defining private rights, it produces
legal effects. To have “force of law”, a rule must be unilateral, and this is
not the case for a patent since it is the inventor who creates the instrument.
In addition, a patent does not apply to an undetermined number of persons,
since it is granted to only one inventor. It is the Patent Act that
makes it enforceable against third parties.
[24]
In addition, the respondents draw an
analogy between a patent and a title deed, to show that the former is no more a
legislative instrument than the latter. The Patent Act sets out the process to be followed for obtaining
and publishing a patent, the exclusive privileges of the patent owner and the
remedies available to the patent owner to enforce those privileges. As well,
the Act sets out the rights of the owner and prohibits others from infringing
them. The rules relating to title deeds have force of law and apply to an
undetermined number of people, but each title deed is granted to only one
individual.
[25]
In the
respondents’ submission, the provisions of Book Nine of the Civil Code of
Québec (entitled “Publication of Rights”) have the same relationship with
title deeds to immovable property as the Patent Act has with the
documents submitted by the inventor. They govern the form of the documents and
make them enforceable on the conditions provided by the law. However, title
deeds need not be available in both official languages. Like patents, they
reflect private transactions, and neither section 133 of the Constitution
Act, 1867 nor the Official Languages Act applies to them.
[26]
As well,
patents do not meet the other criteria for section 7 of the Official
Languages Act to apply. For example, a patent is neither made under an Act
nor subject to the approval of one or more ministers or of the government (paragraph 7(1)(a)
of the English version of the Official Languages Act); rather, it is
issued by the Commissioner and is valid from that moment. A patent need not be
published in the Canada Gazette (paragraph 7(1)(b)). It is
not general in nature because it does not embody a rule of conduct that applies
to a large number of cases.
[27]
Last, the
respondents submit that the decisions of the Supreme Court on which the
applicant relies are not applicable in this case. They submit that the
definition in the Interpretation Act by which a patent is a “regulation”, to which Binnie J.
referred in Whirlpool, does not mean that a patent is made “in the
execution of a legislative power”. The requirement that an instrument be “made
in the execution of a legislative power” is an essential condition for
section 7 of the Official Languages Act to apply. In Sinclair,
supra, the legislative framework in question was very different from the
one in this case. The letters patent whose unilingualism was challenged
provided the entire legal framework within which the new municipality created
by what the Supreme Court described as a “‘shell’ statute” was to operate. The
respondents submit that the la Patent Act is not a “‘shell’ statute”,
and that the participation of the inventor and the Commissioner in the issuance
of the patent is not comparable to a legislative process. Accordingly, unlike
the letters patent in Sinclair, a patent is not a step in a legislative
process and is not subject to the obligation of legislative bilingualism.
Application in this Case
[28]
In my opinion, a patent does not meet the formal
criterion developed by the Supreme Court in Reference re Manitoba Language
Rights, supra, at p. 224, because it is not made by a
government or subject to approval by a government, and no positive action by
the government is required to breathe life into it. The Supreme Court
determined that the bilingualism requirement applied to instruments about which
it can be said that “positive action of the Government is required to breathe
life into them” in Blaikie, supra, at p. 329. If we read that decision, it is
clear that when the Supreme Court referred to “the Government” it was referring
to Cabinet, not the entire executive branch (see, in particular, pp. 319‑21).
No “positive action” by the federal Cabinet is required to “breathe life into”
a patent. The patent is effective once it is issued by the Commissioner.
[29]
A patent also does not meet the content
criterion because it does not have “force” of law in the sense in which the
Supreme Court used that expression, because it is not a unilateral rule. The
text of a patent is proposed by the inventor. The
Commissioner can neither create a patent on his own initiative nor even modify
a single word in a patent application
[30]
The requirement that an instrument be “made in the execution of a legislative power” is essential in order for subsection 7(1) of the Official
Languages Act to apply. Patents do not meet that requirement and so that
provision is not applicable in this case.
[31]
The applicant’s argument concerning
subsection 7(2) of the Official Languages Act, which makes it
mandatory for “[a]ll instruments made in the exercise
of a prerogative or other executive power that are of a public and general
nature” to be published in both official languages,
also cannot be accepted. The origin of patents, in English law, indeed “rests in the royal prerogative of granting
letters patent” (Adam Mossoff, “Rethinking the Development of Patents: An
Intellectual History, 1550-1800”, 52 Hastings L.J. 1255 at p. 1259), and a
patent was therefore, initially, “an instrument made in the exercise of a
prerogative”.
[32]
However, the rules relating
to Crown prerogative are merely common law rules, which can be ousted by
legislation. Accordingly, when a statute occupies a field formerly left to
Crown prerogative, the statute is the source of the executive power to do what
was formerly authorized by the prerogative. The Patent Act creates a
complete statutory scheme which, in Canada, replaces the Crown prerogative to grant a
patent for an invention. Accordingly, subsection 7(2) of the Official
Languages Act does not apply to patents.
(2) Section 12 of the Official Languages Act
[33]
Section 12 of the Official Languages Act
reads as follows:
|
Instruments directed to the public
12. All instruments directed to or intended for the notice of the
public, purporting to be made or issued by or under the authority of a
federal institution, shall be made or issued in both official languages.
|
Actes destinés au public
12. Les actes qui s’adressent au public et qui
sont censés émaner d’une institution fédérale sont établis ou délivrés dans
les deux langues officielles.
|
Submissions by the Parties
[34]
On the one hand, the applicant submits that this
provision applies to patents, which he stresses are public in nature. In his
submission, as letters patent, patents are “actes” or “legal
instruments”. In addition, a patent is “directed to or intended for the notice
of the public” in that it is used to disclose information in return for which
the public grants the inventor a monopoly.
[35]
He also relies on the English version of section 12
of the Official Languages Act since, in his submission, the wording “intended
for the notice of the public” refers to passive publication, which corresponds
to what the Patent Office does when it makes patents available for public
inspection, although it does not “actively” publish them, for example in the Canada
Gazette.
[36]
On the other hand, the respondents submit that section 12
of the Official Languages Act does not apply to patents, since they are
not directed to the public with the aim of informing the public and are not made or issued by or under the authority of a federal institution.
[37]
In their submission, patents are not directed to or intended for the notice of the public, but – as the Office of the Commissioner for Official Languages
acknowledged – inventors, although they are available for public inspection. As
did the Office of the Commissioner for Official Languages, the respondents
distinguished instruments “made available to the public”, to which Part IV
of the Official Languages Act applies, from instruments “directed to or
intended for the notice of” the public, which are governed by section 12 of
that Act. To be directed to or intended for the notice of the public, an
instrument must be [translation]
“actively brought to its attention”, as is the case, for example, with a notice
posted in a place or on an object to inform the public, and this is not the
case for a patent.
[38]
The respondents submit that it is the inventor,
not the Commissioner, who informs the public, by way of the patent, as set out
in the provisions of the Patent Act and the Patent Rules
governing the content of a patent application. Because it is the inventor who
chooses each word in the claims, supplies the drawings and, in general, retains
ownership and control of their application, the patent is made or issued by the
inventor. They cite Free World Trust v. Électro Santé Inc., 2000 SCC 66,
[2000] 2 S.C.R. 1024, in which the Supreme Court adopted the opinion of Thorson
P. in Minerals Separation North American Corp. v. Noranda
Mines, Ltd., [1947] Ex. Ct. 306 at p. 352.
[39]
Thorson P. wrote: “By his claims the inventor
puts fences around the fields of his monopoly and warns the public against
trespassing on his property.” The precise terms chosen by the inventor determine
the “fields of his monopoly”, and anyone who seeks to interpret a patent must
interpret those terms in the sense intended by the inventor. The respondents
submit that translating the terms chosen by an inventor would make the process
of issuing patents more uncertain because of the multiple possible meanings of
a single word, as noted by the Supreme Court in Free World, supra,
at paragraph 58.
Application in this Case
[40]
In my opinion, a patent is a hybrid instrument,
both private and public. Its authority derives from the approval by a public
institution, the Commissioner, but its content is determined by a private person,
the inventor. In exchange for disclosure of that content, the inventor obtains
a right that is characterized as both a monopoly and a private property right.
In the past a patent was a privilege deriving from royal favour, and today it
is a title deed confirming a right created by law.
[41]
I am not persuaded of the validity of the
distinction drawn by the parties between “active” publication and “passive”
publication of a document. The applicant seems to be saying that publication of
patents in the Canada Gazette would be “active”, but publication in a
registry kept by the Patent Office is not active because an effort must be made
to inspect them there. In fact, inspection of a document published in the Canada
Gazette also calls for a certain effort to find it.
[42]
The respondents suggest that a notice posted [translation] “in a place or on an
object” would be directed to or intended for the notice
of the public, while a notice published in a registry would merely be available
to the public. Here again, in both cases, a certain effort must be made to
inspect the notice. The difference, if any, is one of degree. (I also note that
the example proposed by the respondents would certainly not belong to the class
of “instruments” or “actes”, the only class to which section 12 of the Official Languages Act applies.)
[43]
Contrary to what the respondents argue, I am of
the opinion that patents are public documents. Although the issuance of patents
is now authorized by a statute and patents are issued on the conditions set out
in the statute, they are nonetheless letters patent. Blackstone explained that
letters patent are “open letters, literae patentes: so called,
because they are not sealed up, but exposed to open view, with the great seal
pendant at the bottom; and are usually directed or addressed by the king to
all his subjects at large” (William Blackstone, Commentaries on the Laws
of England: a Facsimile of the First Edition 1765 – 1769, Chicago,
University of Chicago Press, 1979, vol. 2 at p. 346; emphasis added). The
fact that a patent, like letters patent confirming any other royal grant, are
ostensibly intended for the owner does not change the fact that they are public
in nature.
[44]
It is also easy to understand the importance of
a patent being public. A patent is different from a title deed to movable or
immovable property in that it is a monopoly, which means that it grants “the
exclusive right, privilege and liberty of making, constructing and using the
invention and selling it to others to be used” (Patent Act, section 42).
It therefore creates an exception to the general principles of free commerce
and even of freedom itself, under which people should be free to “make,
construct and sell to others” anything in which there is no law prohibiting
commerce. An individual must therefore be able to know what they are not
entitled to “make, construct, use or sell”, when, hypothetically, they may do
that with anything that is not banned from commerce by law.
[45]
However, although a patent is directed to or
intended for the notice of the public, it is made or issued not by a federal
institution, but by the inventor. Notwithstanding the fact that it originates
in the discretionary exercise of Crown prerogative, a patent today represents
recognition of a right rather than the expression of the favour of the
sovereign. The role of the Commissioner of Patents is limited to ascertaining
that the patent application submitted by the inventor meets the requirements
laid out in Patent Act and the regulations made under that Act. Section 27
of the Patent Act gives the Commissioner no discretion in that regard:
if the requirements are met, he must issue the patent (Harvard College v. Canada (Commissioner of Patents), 2002 SCC 76, [2002] 4 S.C.R. 45, at paragraph 144).
[46]
When the Commissioner of Patents issues a
patent, he confirms the inventor’s right, but it is the inventor who defines
the scope of their right by writing the claims. The text of a patent, including
when it results from amendments made to the patent application, is proposed by
the inventor, and the inventor is responsible for it. If the inventor proposes
a text that is too restrictive, they will have to bear the potential loss of
profits resulting from the fact that the “field” of the monopoly granted to
them is too narrow; if they propose a text that is too vague, they risk having
the patent subsequently found by a court to be invalid. A patent is therefore
really made or issued by the inventor, not by the Commissioner of Patents. As a
result, section 12 of the Official Languages Act does not apply.
[47]
In addition, the translation of patents by the
Patent Office would lead to serious tensions between the various objectives of
the Canadian patent system and the Official Languages Act, and this
suggests to me that Parliament never contemplated that Act applying to patents.
[48]
For one thing, in that situation, an applicant
for a patent would, if they wished to retain control of the application, have
to understand and approve the translation done of the patent. That is in direct
contradiction with the objective of the Official Languages Act, which is
to implement the constitutional guarantee of everyone’s right to communicate
with federal institutions in either official language, at their option.
[49]
For another, if the inventor is required to
approve the translation of their application without understanding it, the
objective of the patent system, to give inventors control over their
applications and place full responsibility for the resulting patent on them,
would be compromised. In addition, where there was a discrepancy between the
two versions of the patent, an interpretation of the patent based on the
objectives of the inventor, as advocated by the Supreme Court in Free World,
supra, would become impossible, unless it were recognized that the
“original” version of the patent, the one in the language of the inventor’s
application, took precedence over the translation. The effect of such
recognition would be to cancel out any benefit for linguistic equality
resulting from the fact that both versions of a bilingual instrument are
equally authoritative, under section 13 of the Official Languages Act.
[50]
Given all these difficulties, we can draw a
parallel with the reasoning of Bastarache J. and the majority of the
Supreme Court in Harvard College, supra, at paragraph 167, and
conclude that the fact that the Official Languages Act and the Patent
Act, as they now stand, do not allow for proper handling of the translation
of patents is a sign that Parliament never intended that the words “instruments
directed to or intended for the notice of the public, purporting to be made or
issued by or under the authority of a federal institution” would cover patents.
(3) Section 22 of the Official Languages Act
[51]
Section 22 of the Official Languages Act
reads as follows:
|
Where
communications and services must be in both official languages
22. Every federal institution has the duty to
ensure that any member of the public can communicate with and obtain
available services from its head or central office in either official
language, and has the same duty with respect to any of its other offices or
facilities
(a)
within the National Capital Region; or
(b) in Canada or elsewhere, where there is significant demand for
communications with and services from that office or facility in that
language.
|
Langues
des communications et services
22. Il incombe aux
institutions fédérales de veiller à ce que le public puisse communiquer avec
leur siège ou leur administration centrale, et en recevoir les services, dans
l’une ou l’autre des langues officielles. Cette obligation vaut également
pour leurs bureaux — auxquels sont assimilés, pour l’application de la
présente partie, tous autres lieux où ces institutions offrent des services —
situés soit dans la région de la capitale nationale, soit là où, au Canada
comme à l’étranger, l’emploi de cette langue fait l’objet d’une demande
importante.
|
Submissions by the Parties
[52]
The applicant submits that the Patent Office is
in violation of section 22 of the Official Languages Act and of section 20
of the Canadian Charter of Rights and Freedoms, which gives the Canadian
public the right to which the obligation imposed on federal institutions by section 22
of the Official Languages Act gives effect. He submits that by making
the text of patent claims and abstracts available, including in “searchable”
text format on its web site, the Patent Office publishes that text and is
therefore communicating with the public in only one official language.
[53]
The respondents point out that an inventor may
submit their patent application and communicate with the Patent Office in the
official language of their choice. With each patent certificate, the Office
then issues a cover page on which all of the material created by the Office is
in both official languages. The Office thus meets its bilingualism obligations
in relation to communications with and services to the public under the Official
Languages Act and the Charter. They submit that the availability of
patents on the Patent Office web site is neither a “communication with” nor a
“service to” the public. The respondents draw a parallel with an access to
information request, in relation to which the government must make a document
public, but has no obligation to translate it.
Application in this Case
[54]
I agree with the respondents that publication of
certain components of patents on the Patent Office web site is not a distinct
“service” that, in itself, must be provided in both official languages. The
Office merely reproduces (in part) the text of the patents, as they exist. The
question of a violation of section 22 of the Official Languages Act
that is distinct from a violation of section 12 would arise if the patents
were bilingual but the Office published only one of the two versions of the
patents on its web site. That is not the case, and accordingly I am of the
opinion that the Office is not in violation either of section 22 of the Official
Languages Act or of the Charter.
(4) Part VII of the Official Languages Act
[55]
The most relevant provision of Part VII of
the Official Languages Act (Part VII) in this case is section 41,
which reads as follows:
|
Government
policy
41. (1) The Government of Canada is committed to
(a)
enhancing the vitality of the English and French linguistic minority
communities in Canada and supporting and assisting their
development; and
(b)
fostering the full recognition and use of both English and French in Canadian
society.
Duty of
federal institutions
(2) Every federal institution has the duty to
ensure that positive measures are taken for the implementation of the
commitments under subsection (1). For greater certainty, this implementation
shall be carried out while respecting the jurisdiction and powers of the
provinces.
…
|
Engagement
41. (1) Le gouvernement fédéral s’engage à
favoriser l’épanouissement des minorités francophones et anglophones du Canada et à appuyer leur développement, ainsi qu’à promouvoir
la pleine reconnaissance et l’usage du français et de l’anglais dans la
société canadienne.
Obligations des institutions fédérales
(2) Il incombe aux institutions fédérales de
veiller à ce que soient prises des mesures positives pour mettre en œuvre cet
engagement. Il demeure entendu que cette mise en œuvre se fait dans le
respect des champs de compétence et des pouvoirs des provinces.
…
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Submissions by the Parties
[56]
The applicant submits that the fact that a
disproportionate portion of Canadian patents are in English shows that Canadian
francophones are excluded from the “patent process”, in violation of section 41
of the Official Languages Act. The applicant notes that patents being
available in both languages would encourage the dissemination of the
information made available to the public by inventors and would help to avoid
infringement.
[57]
Although the Office of the Commissioner of
Official Languages shares that concern, the applicant is not satisfied with the
solution proposed by the OCOL, which consists of making the abstracts for
patents, but not necessarily the claims, available in both official languages.
In his submission, understanding the claims is crucial for avoiding
infringement. Accordingly, the claims in both patents and patent applications
must be available in both official languages.
[58]
In addition, if patents were available in both
official languages, francophone inventors would have a choice of language and
they would thus not have to assimilate. The applicant cites a passage from the
reasons of Charron J., writing for the unanimous Supreme Court, in DesRochers
v. Canada (Industry), 2009 SCC 8, [2009] 1 S.C.R. 194 at paragraph 55,
opening the door, in obiter, to the possibility that “services … of
equal quality in both languages but inadequate or even of poor quality, and
[that do not meet] the community economic development needs of either
community”, would be considered to be a “breach of the duties under Part VII”.
[59]
In the respondents’ submission, Part VII is
distinct from Parts I to V of the Official Languages Act in that it
does not implement a Charter requirement, and is therefore rather an addition to
the language rights protected by the Constitution. As well, the provisions of
Part VII do not grant individual rights to Canadians; they impose an obligation
on the government to work for the benefit of English and French linguistic
communities.
[60]
They submit that the manner in which the
government meets that obligation is left to its discretion, and when the courts
are asked to consider it, in a proceeding, they could not limit their analysis
to the factual circumstances relating to a specific decision, like the decision
not to translate patents. Instead, they should have regard to all of the
government’s activities in respect of official languages, while giving great
deference to the government’s discretionary choices. In particular, that
deference should be expressed in reluctance to order or direct the expenditure
of public funds, a matter within the authority of elected representatives.
[61]
They state that they are in compliance with
Part VII, because the federal government takes positive measures to enhance
the vitality of linguistic communities and promote the use of English and
French in Canadian society. Accordingly, the mere fact that patents are not
translated is not a violation of the respondents’ obligation to promote the use
of English and French. Part VII does not impose precise obligations on federal
institutions. Rather, it reflects a permanent commitment by the federal
government and the fact that measures must be taken, at the discretion of the
federal government, to implement that commitment. That discretion means that an
applicant does not have a right, under Part VII, to specific measures.
[62]
The respondents further point out that they
proposed measures to promote linguistic equality in the Canadian patent system
in response to the report of the Office of the Commissioner of Official
Languages. As a result, patent abstracts from international applications, which
already exist in English and French, will be available in both those languages.
For other patents, the Office is considering subscribing to an automated
translation system. In addition, a search system that produces results in one
official language in response to a keyword in the other will also be available
on its web site.
[63]
As we saw earlier, public access to patents is
important because all patents prohibit certain activities, even though they are
not prohibited by any law, and thus restrict the freedom of action of everyone
in Canada. In addition, one of
the public policy considerations that justify that restriction is the
dissemination of the scientific and technical knowledge on which patented
inventions are based.
[64]
Binnie J., dissenting but not on this
point, explained in Harvard College, supra, at paragraph 64,
that the effect of the Patent Act “is essentially to prevent others from
practising an invention that, but for the patent monopoly, they would be
permitted to practise. In exchange for disclosure to the public, the
patent protects the disclosed information from unauthorized use for a limited
time.” As Binnie J., writing for the Supreme Court, explained in Free
World, supra, at paragraph 42, “[t]he patent system is designed
to advance research and development and to encourage broader economic
activity”.
[65]
That objective can only be impeded if the
scientific and technical information in a patent is not available to the
portion of the Canadian public who do not speak the language in which the
patent in question was written. In short, therefore, the fact that patents
exist only in one official language deprives Canadians who do not speak that
language of information that is important in both legal and scientific terms.
[66]
In Forum des maires
de la Péninsule acadienne v. Canada (Food Inspection Agency), 2004 FCA 263, [2004] 4 F.C.R. 276, at paragraph 17, the
Federal Court of Appeal stressed that by creating the remedy in section 77
of the Official Languages Act, Parliament intended to ensure that the
Act “has some teeth, that the rights or obligations it recognizes or imposes do
not remain dead letters, and that the members of the official language
minorities are not condemned to unceasing battles with no guarantees at the
political level alone”.
[67]
For that reason, and with respect, I do not
share the respondents’ opinion that the fact that patents are not available in
both official languages cannot be a violation of Part VII, having regard
to the federal government’s efforts in relation to language policy.
[68]
However, I believe that the courts must limit
themselves to the factual circumstances relating to a particular decision
rather than examining the government’s entire language policy every time an
application under Part VII is brought before them. The courts are simply
not equipped to assess the government’s language policy as a whole: that
assessment is political in nature. Parliament is in a better position than the
courts to make that assessment. However, the courts are used to ruling
concerning the factual circumstances relating to a particular decision, and it
is logical to assume that by creating a legal remedy for violations of
Part VII, Parliament intended precisely to call on their expertise in the
matter.
[69]
I therefore conclude that the measures proposed
to date by the Patent Office are not sufficient to meet its obligation, as a
federal institution, to promote the use of both languages. That being said, the
consequences of a violation of Part VII of the Official Languages Act
and of the other provisions of that Act are not the same.
(5) Appropriate and just remedy in the circumstances
[70]
Where the Court is of the opinion that a federal
institution is not in compliance with the Official Languages Act, subsection 77(4)
of that Act authorizes the Court to grant such remedy as it “considers
appropriate and just in the circumstances”. Because I am of the opinion that
failing to make patents available in both official languages violates Part VII
of the Official Languages Act, the question of the remedy must be
answered.
Submissions by the Parties
[71]
The applicant makes no distinction between the
appropriate remedy for a violation of Part VII and for violations of the
other provisions of Official Languages Act. He is seeking a series of
declarations to require the Patent Office to make certain parts of patents (the
title, the abstract, the claims, the drawings and the specification) and certain
parts of patent applications (the title, the abstract and the claims) available
in both official languages. He is also seeking a declaration of invalidity
relating to all patents available in one official language only, to be
suspended to allow the respondents to make the invalidated patent applications
and patents available in both languages. In addition, in future, the date for
public access should be the date on which a patent or patent application becomes
available to the public in both official languages.
[72]
The applicant acknowledges that requiring
bilingualism in the Canadian patent system would be very costly. However, he
relies on the decisions in Re Manitoba Language Rights, [1985] 1 S.C.R.
721, 19 D.L.R. (4th) 1 and Devinat v. Canada (Immigration and Refugee Board), [2000] 2 F.C. 212, 181 D.L.R. (4th) 441 (F.C.A.), requiring that
all Manitoba legislation and
decisions of the Immigration and Refugee Board, respectively, be translated,
notwithstanding the expenses that would cause.
[73]
In the respondents’
submission, because the courts cannot rely on Part VII
of the Official Languages Act to order the government to remedy a
specific problem, no remedy is possible or appropriate in the circumstances.
They submit that because those provisions confer no right to have a particular
measure taken, it is up to the government to choose its priorities in relation
to promoting the use of English and French in Canadian society. In their
submission, the Commissioner of Official Languages went too far in recommending
that abstracts be translated, and the Court does not have the power to order
that remedy. In their submission, the role of the Court is limited to finding
that “positive measures” are being taken to promote linguistic equality.
[74]
In the
alternative, the respondents submit that the measures they proposed in response
to the report of the Commissioner of Official Languages are sufficient. They
stress the exorbitant costs of translating all patents, which would come to
about $825,000,000.
Ordering a remedy that costly would amount to the Court substituting itself for
Parliament in setting budget policy.
[75]
As I said earlier, in my opinion, a violation of
Part VII of the Official Languages Act cannot result in the same
remedies as violations of Parts I to V of that Act. Deciding otherwise
would amount to eliminating the difference between those provisions and denying
the effect of the precise limits that Parts I to V set on the government’s
obligations in respect of bilingualism. In addition, I agree with the respondents
that the decisions of federal institutions to give effect to the government’s
commitment under Part VII are entitled to a certain deference on the part
of the courts.
[76]
However, they cannot be conclusive; otherwise,
why would Parliament have made those provisions enforceable? Deciding that the
courts do not have the power to make orders forcing the government to take
specific measures to remedy violations of its obligations under Part VII
would make Parliament’s choice to “give it teeth” by making it enforceable
pointless and ineffective.
[77]
The remedies suggested by the applicant do not
take into account the difference between Part VII of the Official
Languages Act and the other provisions of that Act. Because I do not find
that the Commissioner is required to issue bilingual patents under
section 7, 12 or 22 of the Official Languages Act, I cannot declare
that he must do so in order to comply with his obligations under Part VII.
[78]
In DesRochers, supra, at paragraph 37,
the Supreme Court adopted the conclusion of the Federal Court of Appeal in Forum
des maires, supra, at paragraph 20,
which was that in an application under section 77
of the Official Languages Act, “[t]he remedy will vary according to
whether or not the breach continues”. In this case, the violation of Part VII is continuing, and the Court must therefore order a remedy
accordingly.
[79]
I would note that a patent is a document that is
directed to or intended for the notice of, and is for the information of, the
public. While it would be difficult to completely translate all patents, the
Patent Office must at least make abstracts of patents available
in both official languages, as the Office of the Commissioner of Official
Languages proposed.
[80]
Certainly, this will be an unofficial translation.
However, making it available will be a remedy that is “appropriate and just in
the circumstances”, within the meaning given to that expression in Doucet-Boudreau
v. Nova Scotia (Minister of Education), 2003 SCC 62, [2003] 3 S.C.R. 3 at paragraphs 55
to 58. It will therefore provide for the language rights of the applicant and
all Canadians to be defended effectively, by giving them a good idea of the
content of valid patents if they do a preliminary search in the official
language of their choice. Requiring that the Commissioner make bilingual
abstracts available does not overstep either the mandate of the Court in our
constitutional system or the limits of its expertise. In addition, this measure
does not impose great hardship on the Commissioner, because it essentially
confirms the measures he himself said he intended to take.
COSTS
[81]
Subsection 81(1) of the
Official Languages Act provides that, ordinarily, in an application
under section 77, costs will follow the event. However, subsection 81(2) provides
that “[w]here the Court is of the opinion that an
application under section 77 has raised an important new principle in relation
to this Act, the Court shall order that costs be awarded to the applicant even
if the applicant has not been successful in the result.”
[82]
Relying on that provision,
the applicant is seeking the costs of this case regardless of the result. He
submits that the issues raised in the case, in particular concerning the effect
of Part VII of the Official Languages Act and the content of the
bilingualism obligation in relation to delegated legislation (the class to
which patents belong, in his submission), are novel and important.
[83]
The respondents oppose
awarding costs to the applicant, but acknowledge the Court’s discretion in this
regard.
[84]
Notwithstanding the
applicant’s very partial success, he is entitled to his costs in this case
under subsection 81(2). Apart from all the technical details, the fact
that patents granted by a country that considers itself bilingual are
unilingual is an important question. Although this year marked the 40th
anniversary of the Official Languages Act, that question has never been
raised before now, and the applicant did Canadians a service by making it a
subject of public debate.
CONCLUSION
[85]
For these reasons, the
application by the applicant is allowed in part, with costs, for the sole
purpose of declaring that the Commissioner is not in compliance with his
obligations under section 41 of the Official Languages Act, and
that in order to be in compliance he must make available an unofficial
translation of the abstract of all patents he issues.
JUDGMENT
THE COURT
ORDERS that:
The application by the applicant is allowed in
part, with costs, for the sole purpose of declaring that the Commissioner is
not in compliance with his obligations under section 41 of the Official
Languages Act, and that in order to be in compliance he must make available
an unofficial translation of the abstract of all patents he issues.
“Danièle Tremblay-Lamer”
Certified true
translation
Brian McCordick,
Translator
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