Date: 20070105
Docket: T-92-06
Citation: 2007 FC 11
Ottawa, Ontario, January 5,
2007
PRESENT: The Honourable Mr. Justice Martineau
BETWEEN:
RICHARDS
PACKAGING INC.
Applicant
and
ATTORNEY
GENERAL OF CANADA
and
DISTRIMEDIC INC.
Respondents
REASONS FOR ORDER AND ORDER
[1]
At issue in
the present judicial review proceeding is the jurisdiction of the Commissioner
of Patents (the Commissioner) and the officers or employees of the Patent
Office to accept or refuse the filing or recordal of a disclaimer made or filed
by a patentee. Disclaimer is a statutory mechanism whereby a patentee (or
its assignee) may amend a patent to claim less than that which was claimed in
the original patent. The present proceeding concerns the refusal by an officer
or employee of the Patent Office to accept the filing of a disclaimer
purportedly made and filed by the applicant under section 48 of the Patent
Act, R.S.C. 1985, c. P-4, as amended (the Act), because the amended
claim would purportedly be broader than that of which is claimed in the
original patent.
[2]
This case calls for a correct interpretation and
application of section 48 of the Act, which reads as follows:
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48. (1) Whenever, by any
mistake, accident or inadvertence, and without any wilful intent to defraud
or mislead the public, a patentee has
(a) made a specification too
broad, claiming more than that of which the patentee or the person through
whom the patentee claims was the inventor, or
(b) in the specification,
claimed that the patentee or the person through whom the patentee claims was
the inventor of any material or substantial part of the invention patented of
which the patentee was not the inventor, and to which the patentee had no
lawful right,
the patentee may, on payment of
a prescribed fee, make a disclaimer of such parts as the patentee does not
claim to hold by virtue of the patent or the assignment thereof.
(2) A disclaimer shall be filed
in the prescribed form and manner.
(3) [Repealed, 1993, c. 15, s.
44]
(4) No disclaimer affects any
action pending at the time when it is made, unless there is unreasonable
neglect or delay in making it.
(5) In case of the death of an
original patentee or of his having assigned the patent, a like right to
disclaim vests in his legal representatives, any of whom may exercise it.
(6) A patent shall, after
disclaimer as provided in this section, be deemed to be valid for such
material and substantial part of the invention, definitely distinguished from
other parts thereof claimed without right, as is not disclaimed and is truly
the invention of the disclaimant, and the disclaimant is entitled to maintain
an action or suit in respect of that part accordingly.
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48. (1) Le
breveté peut, en acquittant la taxe réglementaire, renoncer à tel des
éléments qu’il ne prétend pas retenir au titre du brevet, ou d’une cession de
celui-ci, si, par erreur, accident ou inadvertance, et sans intention de
frauder ou tromper le public, dans l’un ou l’autre des cas suivants :
a) il a donné
trop d’étendue à son mémoire descriptif, en revendiquant plus que la chose
dont lui-même, ou son mandataire, est l’inventeur;
b) il s’est
représenté dans le mémoire descriptif, ou a représenté son mandataire, comme
étant l’inventeur d’un élément matériel ou substantiel de l’invention
brevetée, alors qu’il n’en était pas l’inventeur et qu’il n’y avait aucun
droit.
(2) L’acte de
renonciation est déposé selon les modalités réglementaires, notamment de
forme.
(3) [Abrogé,
1993, ch. 15, art. 44]
(4) Dans toute
action pendante au moment où elle est faite, aucune renonciation n’a d’effet,
sauf à l’égard de la négligence ou du retard inexcusable à la faire.
(5) Si le
breveté original meurt, ou s’il cède son brevet, la faculté qu’il avait de
faire une renonciation passe à ses représentants légaux, et chacun d’eux peut
exercer cette faculté.
(6) Après la
renonciation, le brevet est considéré comme valide quant à tel élément
matériel et substantiel de l’invention, nettement distinct des autres éléments
de l’invention qui avaient été indûment revendiqués, auquel il n’a pas été
renoncé et qui constitue véritablement l’invention de l’auteur de la
renonciation, et celui-ci est admis à soutenir en conséquence une action ou
poursuite à l’égard de cet élément.
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[3]
Subsection 48(2) of the Act as enacted by S.C. 1993, c. 15
(in force October 1, 1996: see SI / 96-81) replaces previous
subsections 48(2) and (3). The latter subsection was repealed by the c. 15
amendment. It has been held under the pre-1993 amendment version of subsection
48 (formerly section 51 of the Patent Act, R.S.C. 1970, c. P-4) that the
Commissioner has no discretion to refuse entry or recordal of a disclaimer. As
stated by the Federal Court of Appeal, this provision “does not empower the
Commissioner to make any decision; nor does it vest him with any discretion; it
merely imposes on him the duty to record certain documents. If the
Commissioner fails in that duty, mandamus lies against him” [emphasis
added]: Monsanto Co. v. Commissioner of Patents (1976), 28 C.P.R. (2d)
118 at 119 (F.C.A) [Monsanto Appeal].
[4]
I note in this regard that the judgment rendered in 1975 by
the trial judge in the Monsanto case (Monsanto Co. v. Commissioner of
Patents (1975), 18 C.P.R. (2d) 170 [Monsanto Trial]) was set aside
by the Federal Court of Appeal, which clearly dismissed the views taken below
that “it was not the intention of Parliament to cast upon the Commissioner an
imperative duty to file and record all documents purporting to be disclaimers”
(at 184) and that, before recording a disclaimer, the Commissioner “has to
determine whether the proffered document is in fact a disclaimer within the
scope of the section, whether the conditions for its recording have been met,
and (…) whether it definitely distinguishes the part of the invention that is
not disclaimed and is truly the invention of the disclaimant from other parts
thereof claimed without right…” (at 186). These views were based on the
supposition that the Commissioner was called upon to make a decision, i.e.
some sort of factual and legal determination. It must be remembered that the
trial judge’s erroneous conclusion to the effect that the Commissioner was
under an implied duty to act judicially in making a decision in respect of a
disclaimer was based on the trial judge’s view “that the determination of such
questions, a determination which can affect the legal right of the disclaimer,
is far from a mechanical or purely ministerial operation, it requires the
application of legal rules and objective standards to the facts, as opposed to
subjective standards of policy or expediency or administrative discretion…” (at
186). It is apparent that the trial judge endorsed the interpretation given by
the Commissioner to former section 51 “that it cannot be used as a means of
reformulating claims” and that “it cannot be contemplated that it was the
intention of Parliament that patentees could use s. 51 as a back door to
avoid the duties of the Commissioner to protect the public interest in seeing
that claims for which a monopoly is granted by the State are ones that properly
and clearly disclose patentable inventions” (at 177). The Federal Court of
Appeal clearly rejected these views and decided that the provision in question
did not empower the Commissioner to make any decision.
[5]
I note that despite having ample opportunity to do so since
Monsanto, Parliament has chosen not to amend the Act by giving the
Commissioner explicit jurisdiction to make factual or legal determinations in
the case of disclaimers or to refuse to accept the filing or recordal of a disclaimer
submitted in the proper form and manner. I also note that under the 1985
version of the Act, former subsection 48(3), which was repealed in 1993,
required that a disclaimer be “filed and recorded”. Subsection 48(2) of the Act
now provides that a disclaimer need only be “filed in the prescribed form and
manner”.
[6]
In this regard, section 44 of the Patent Rules,
SOR/96-423 (the Rules) prescribes the form and manner in which the disclaimer
shall be made:
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44. A disclaimer pursuant to
section 48 of the Act or of the Act as it read immediately before October 1,
1989 shall follow the form and the instructions for its completion set out in
Form 2 of Schedule I to the extent that the provisions of the form and the
instructions are applicable.
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44. L'acte de
renonciation visé à l'article 48 de la Loi ou de la Loi dans sa version
antérieure au 1er octobre 1989 est établi selon la formule 2 et les
instructions connexes figurant à l'annexe I, dans la mesure où les
dispositions de cette formule et ces instructions s'y appliquent.
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[7]
Form 2 of Schedule I contains the following form of
disclaimer and instructions:
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Disclaimer
1. The patentee of Patent No.
____________, granted on ________ for an invention entitled ____________,
has, by mistake, accident or inadvertence, and without any wilful intent to
defraud or mislead the public,
(a) made the specification too
broad, claiming more than that of which the patentee or the person through
whom the patentee claims was the (first) inventor; or
(b) in the specification, claimed
that the patentee or the person through whom the patentee claims was the
(first) inventor of any material or substantial part of the invention
patented of which the patentee was not the (first) inventor, and to which the
patentee had no lawful right.
2. The name and complete
address of the patentee is ___________.
3. (1) The patentee disclaims
the entirety of claim ___________.
(2) The patentee disclaims the
entirety of claim ____________ with the exception of the following:
____________.
Instructions
In section 1, the word
"first" may be included only for patents issued on the basis of an
application filed before October 1, 1989.
In section 2, the name and
address must be presented in the following order with a clearly visible
separation between the various elements: family name (in capital letters),
given name(s), initials, street name and number, city, province or state,
postal code, telephone number, fax number and country.
With respect to each claim
covered by the disclaimer, the patentee shall include in the disclaimer
either subsection 3(1) or (2).
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Acte de renonciation
1. Le
titulaire du brevet no _____________________, accordé le _________________ pour une
invention ayant pour titre ______________________, a par erreur, accident ou
inadvertance et sans intention de frauder ou de tromper le public :
a) donné trop
d'étendue au mémoire descriptif en revendiquant plus que la chose dont lui-même
ou son mandataire (la personne par l'entremise de laquelle il revendique) est
l' (le premier) inventeur;
b) dans le mémoire
descriptif, s'est représenté ou a représenté son mandataire (la personne par
l'entremise de laquelle il revendique) comme étant l' (le premier) inventeur
d'un élément matériel ou substantiel de l'invention brevetée, alors qu'il
n'en était pas l' (le premier) inventeur et qu'il n'y avait (légalement)
aucun droit.
2. Le nom et
l'adresse complète du breveté sont : ____________________.
3. (1) Le
breveté renonce à l'intégralité de la revendication suivante : ____________.
(2) Le breveté
renonce à l'intégralité de la revendication suivante : ________________ à
l'exception des éléments suivants : ________________.
Instructions
Dans l'article
1, les expressions « la personne par l'entremise de laquelle il revendique »,
« le premier » et « légalement » ne peuvent être utilisées qu'à l'égard des
brevets délivrés au titre d'une demande déposée avant le 1er octobre 1989.
Dans l'article
2, les nom et adresse sont présentés dans l'ordre suivant, les divers éléments
étant bien séparés : nom de famille (en majuscules), prénom(s), initiales,
numéro civique, rue, ville, province ou État, code postal, numéro de téléphone,
numéro de télécopieur et pays.
Pour chaque
revendication visée par l'acte de renonciation, le breveté inclut dans l'acte
de renonciation soit le paragraphe 3(1), soit le paragraphe 3(2).
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[8]
In addition, the fee payable in relation to a disclaimer is
found under item 13 of Schedule II of the Rules, which indicates that a fee of
$100.00 is payable “[o]n making a disclaimer to a patent under section 48 of the
Act, or of the Act as it read immediately before October 1, 1989”.
[9]
A patent shall, after a disclaimer has been filed in the
prescribed form and manner, be deemed to be valid for such material and
substantial part of the invention, definitely distinguished from other parts
therefore claimed without right (as is not disclaimed and is truly the
invention of the disclaimant). The disclaimant is entitled to maintain an
action or suit in respect of that part accordingly (subsection 48(6) of the
Act). The disclaimer is unconditional; the existing claims of the patent are
the claims as amended by virtue of the disclaimer, and the only invention
protected by the letters patent is that which is defined by such existing
claims: Canadian Celanese Ltd. v. B.V.D. Co. Ltd.,
[1939] 2 D.L.R. 289 at 294. It has also been held that where a disclaimer has
been entered, it does not matter that as a result, two or more claims have the
same scope, nor that the patent including the disclaimer is not the same
invention as was originally patented: Cooper & Beatty Ltd. v. Alpha
Graphics Ltd. (1980), 49 c.p.r.
(2d) 145 at 163-164 (F.C.T.D.). That being said, no disclaimer affects any
action pending at the time when it is made, unless there is unreasonable
neglect or delay in making it (subsection 48(4) of the Act): see Canadian
Celanese Ltd., above, at 293-295.
[10]
Therefore, once a disclaimer filed with the Patent Office
has been submitted in the proper form and manner, and the prescribed fee has
been paid, the Commissioner has no discretion to refuse entry or recordal of
same (Monsanto Appeal, above); but the propriety or validity of such disclaimer
may be reviewed by the Court if the patent is litigated: ICN Pharmaceuticals,
Inc. v. Canada (Patented Medicine Prices Review Board), (1996) 200 N.R. 376
at para. 70 (F.C.A.); Trubenizing Process Corp. v. John Forsyth Ltd., (1941),
2 C.P.R. 89 at 105, 2 Fox Pat. C. 11 (Ont. H.C.J.), aff’d (1942), 2 C.P.R.
89, [1942] 2 D.L.R. 539 (Ont. C.A.),
rev’d on other grounds (1943), 3 C.P.R.
1, [1943] 4 D.L.R. 577 (S.C.C.). Accordingly, a party to an action or a
proceeding instituted under the Act in respect of a patent is free to attack
the validity of a disclaimer and amended claims in the patent on the ground
that the requirements mentioned at section 48 of the Act have not all been
satisfied by the disclaimant. For instance, it could be submitted that contrary
to what is stated in the disclaimer, the patentee knowingly made a
specification in the patent that was too broad, or reformulated the invention
in the disclaimer in order to claim more than what has actually been claimed in
the patent issued.
[11]
With this legal framework in mind, I will now review the relevant
facts leading to the present judicial review application.
[12]
Patent No.
2,207,045, entitled “Kit and Process for the Manufacture of a Set of Individual
Pill Containers”, was issued on June 1, 1999. The original assignee of the
patent, Dispill Inc. (Dispill), assigned the patent to the applicant, Richards
Packaging Inc., on July 29, 2005. Through their representatives
and agents, on November 8, 2005, the applicant filed with the Patent Office a
document dated November 2, 2005, entitled “Disclaimer with respect to Canadian
Patent No. 2,207,045” (the applicant’s disclaimer). Accompanying the
applicant’s disclaimer was a covering letter dated November 7, 2005, addressed
to the Commissioner asking that “recordal of this Disclaimer be expedited” and
authorizing the levy of the prescribed fee of $100.00 from the account
indicated in same.
[13]
I note
that the applicant’s disclaimer is made in the form and manner prescribed by
section 44 of the Rules. First, paragraph 1 of the applicant’s disclaimer repeats
the exact wording mentioned at paragraph 1 of form 2 of Schedule I:
1. The patentee of Patent No. 2,207,045 granted
on June 1, 1999, for an invention entitled “Kit and Process for the Manufacture
of a Set of Individual Pill Containers”, has, by mistake, accident or
inadvertence, and without any wilful intent to defraud or mislead the public,
(a) made the specification too
broad, claiming more than that of which the patentee or the person through whom
the patentee claims was the inventor; or
(b) in the specification, claimed
that the patentee or the person through whom the patentee claims was the
inventor of any material or substantial part of the invention patented of which
the patentee was not the inventor, and to which the patentee had no lawful
right.
[14]
Second, paragraph 2 of the applicant’s disclaimer provides the name
and complete address of the applicant.
[15]
Third, paragraph 3 and paragraphs 5 to 9 of the applicant’s disclaimer use the
same introductory wording mentioned at paragraph 3(2) of Form 2 of Schedule I,
which is selected when the patentee wishes to disclaim only a portion of a
claim. Paragraph 4 of the applicant’s disclaimer uses the introductory wording
of paragraph 3(1) of Form 2, which is selected when the patentee wishes to
disclaim the entirety of a claim. In fact, the
applicant
disclaims the entirety of claims 15 to 21 of the patent, with the exception of
what is stated to be of a narrower scope at paragraphs 3 to 9 of the
applicant’s disclaimer.
[16]
Therefore, it is clear upon a plain reading of the document
filed on November 8, 2005 with the Patent Office, that it is a “disclaimer”.
However, as we will see below, the validity of the claims made in the original
patent and the exact scope and legal effects of the applicant’s disclaimer have
been the object of disagreement and litigation between the parties.
[17]
In the original patent, claim 15 reads as follows:
15. A kit for the manufacture
of a set of individual pill containers, said kit comprising:
a) a container-defining sheet
made of a plastic material, said container-defining sheet having a top surface
comprising a given number of evenly spaced apart cavities embossed therein,
each of said cavities being upwardly opened and thus defining a container, each
of said containers being surrounded by a flange of a given width provided with
a central dotted line punched therein, said dotted lines provided in all of
said flanges making it possible to detach each of the containers from the
container-defining sheet and from the adjacent containers;
b) a recessed support having a
top surface provided with a number of recesses at least equal to the number of
cavities embossed in the container-defining sheet, said recesses being
positioned, shaped and sized to receive the containers defined by said cavities
embossed in the container-defining sheet;
c) a container-sealing sheet
shaped and sized to cover at least all the containers and surrounding flanges
of the container-defining sheet, said container-sealing sheet being provided
with tearing lines making it possible to tear said container-sealing sheet into
a number of cover pieces corresponding to the number of said containers; and
d) positioning means provided
on at least the top surface of the container-defining sheet and on the
container-sealing sheet to ensure that, in use, after the container-defining
sheet is fitted onto the recessed support, the container-sealing sheet is
properly positioned on top of the top surface of the container-defining sheet
with its tearing lines in exact superposition on top of the dotted lines of the
container-defining sheet,
wherein the positioning means
comprises at least one upwardly projecting protuberance provided on the top
surface of the recessed support, at least one hole provided into the
container-defining sheet and at least one other hole provided in the
container-sealing sheet, said at least one hole and one other hole being sized
and positioned to correspond to and be engaged by said protuberance [emphasis
added].
[18]
On the other hand, at paragraph 3 of the applicant’s disclaimer, the
patentee disclaims the entirety of claim 15, with the exception of the
following:
15. A kit for the manufacture of a set of
individual pill containers, said kit comprising:
a) a container-defining sheet
made of a plastic material, said container-defining sheet having a top surface
comprising a given number of evenly spaced apart cavities embossed therein,
each of said cavities being upwardly opened and thus defining a container, each
of said containers being surrounded by a flange of a given width provided with
a central dotted line punched therein, said dotted lines provided in all of
said flanges making it possible to detach each of the containers from the
container-defining sheet and from the adjacent containers;
b) a recessed support having a
top surface provided with a number of recesses at least equal to the number of
cavities embossed in the container-defining sheet, said recesses being
positioned, shaped and sized to receive the containers defined by said cavities
embossed in the container-defining sheet;
c) a container-sealing sheet having
a top surface and a bottom surface and being shaped and sized to cover at
least all the containers and surrounding flanges of the container-defining
sheet, the bottom surface of said container-sealing sheet having bands that
are positioned, shaped and sized to exactly correspond to and fit over the
flanges of the container-defining sheet, with at least said bands being covered
with a self-adhesive material which is covered until use by a protective
peelable paper covering, and said container sealing sheet being provided
with tearing lines making it possible to tear said container-sealing sheet into
a number of cover pieces corresponding to the number of said containers; and
d) positioning means provided
on at least the top surface of the container-defining sheet and on the
container-sealing sheet to ensure that, in use, after the container-defining
sheet is fitted onto the recessed support, the container-sealing sheet is
properly positioned on top of the top surface of the container-defining sheet,
with its tearing lines in exact superposition on top of the dotted lines of the
container-defining sheet,
wherein the positioning means
comprises at least one upwardly projecting protuberance provided on the top
surface of the recessed support and engaging means provided on the
container-defining sheet and other engaging means provided on the
container-sealing sheet, said engaging means and other engaging means being
sized and positioned to correspond to and be engaged by said protuberance.
[19]
Following
the filing of the applicant’s disclaimer, their representatives and agents were
advised by letter dated November 23, 2005, signed by Line Roussel, Head Exam
Support, Team 3 & 4, Canadian Intellectual Property Office
(CIPO), of the following:
Reference is made to your
letter dated November 8, 2005, filing a Disclaimer on the Patent mentioned
above.
Your disclaimer request has
been referred to the examiner in charge of the class of the invention involved.
[20]
Despite the indication made in the second paragraph of the
letter quoted above, the applicant’s disclaimer was not analysed by the
examiner in charge of the class of the invention involved. Indeed, according to
the answer provided by Louis-Pierre Riel, a Senior Patent Examiner with the
Patent Office, who was cross-examined on June 13, 2006, “when you have a
disclaimer … this goes to a specific person who is treating these types of
cases…”. The specific person for such cases was apparently Felix Dionne, Patent
Project Officer, Patent Branch (Dionne), who refused the applicant’s disclaimer
by letter dated December 20, 2005 (the impugned decision).
[21]
The impugned decision reads as follows:
YOU ARE
HEREBY NOTIFIED OF A LETTER WRITTEN IN ACCORDANCE WITH SUBSECTION 48(2) OF THE PATENT
ACT REGARDING THE PRESCRIBED FORM AND MANNER FOR DISCLAIMER.
Correspondence,
requesting that a disclaimer for Patent # 2,207,045 be recorded, was received
in the Patent Office on November 8, 2005 in the name of Richards Packaging Inc.
Subsection
49(2) of the Patent Act sets out that the disclaimer must be filed in the
prescribed form.
In
submitted Form 2, the patentee has completed part 3(2) which is selected when
the patentee wishes to disclaim only a portion of a claim. In this instance,
Part 3(2) of the form disclaims the entirety of claims 15 to 21 with the
exception of what is alleged to be subject matter of narrower scope. However,
after reviewing the alleged disclaimer, this does not appear to be the case.
Amended
independent claim 15, part (c), is more specific than the claim in the original
patent, but the inclusion of the expression “engaging means,” following part
(d), renders the whole claim broader than originally allowed. The
original claim recited “at least one hole” and “at least one other hole being
sized and positioned to correspond to and be engaged by said protuberance.” The
expression “engagement means” can include subject matter other than a hole, for
example, a depression or a recess.
Consequently,
the amendment of claim 15 would result in claiming more than what
is currently protected in the claims of the patent. Therefore, Form 2 cannot
be considered a disclaimer and is refused.
For the
reasons above, the requested correction has not been entered. The fee
was levied for the consideration of matter by the Patent Office and is non refundable
under Section 4 of the Patent Rules [emphasis added].
[22]
On January 18, 2006, the applicant filed before this Court an
application for judicial review of the impugned decision seeking a writ of mandamus
against the Commissioner, certain declaratory relief and any other order this
Court sees just to make in the circumstances. The Attorney General of Canada
was designated as sole respondent in the notice of application. In same, the
applicant requested that the Commissioner send a certified copy of the original
file pertaining to the applicant’s disclaimer. Coincidently, by letter dated
January 20, 2006, the applicant’s representatives and agents were advised by
the Patent Office that a letter had been filed by Ogilvy Renault LLP (Ogilvy)
on or around December 21, 2005 against the entering of the applicant’s
disclaimer. While the letter dated December 21, 2005 was not sent on behalf of Distrimedic
Inc. (Distrimedic), Ogilvy is currently acting as its counsel in parallel legal
proceedings in which the applicant is a co-defendant with Dispill and also a
plaintiff by counterclaim against Distrimedic (Court file No. T-1591-05). The
Ogilvy letter was put on the public record by the Patent Office. On February
27, 2006, Prothonotary Richard Morneau allowed a motion made by Distrimedic to
be added as a respondent in the present judicial review proceeding (Richards
Packaging Inc. v. Attorney General of Canada, 2006 FC 257).
[23]
At this point, I note that on December 1, 2005, following
the filing with the Patent Office of the applicant’s disclaimer, but prior to
the making of the impugned decision, the applicant filed before the Court a
statement of defence and counterclaim in which it contends that various claims
in the patent are valid and that Distrimedic infringed these claims. Its allegations
rely in large part on the applicant’s disclaimer, filed on November 8, 2005. Following
a motion to strike brought by Distrimedic, on June 29, 2006, Prothonotary
Morneau ordered that the paragraphs of the applicant’s defence and counterclaim
making reference to the applicant’s disclaimer be struck out. Although this
Court had not yet addressed the legality of the impugned decision, Prothonotary
Morneau nevertheless concluded that “this notice of application for judicial
review does not for the time being change the fact that there is no valid
disclaimer now affecting the patent ’045 claims” (Distrimedic Inc. v.
Dispill Inc., 2006 FC 832 at para. 38) [emphasis added]. On October 17,
2006, my colleague Justice Max M. Teitelbaum maintained Prothonotary
Morneau’s order on appeal and agreed “that until the issue of the validity
and effect of the disclaimer has been judicially reviewed, the references
to the disclaimer should be struck out of the Defence and Counterclaim on the
grounds that they are immaterial and frivolous pursuant to Rule 221(1)(b) and
(c) of the Federal Court Rules” [emphasis added] (Distrimedic Inc. v.
Dispill Inc., 2006 FC 1229 at para. 56). That being said, Justice
Teitelbaum indicated, at paragraph 54, that should the applicant “be successful
in that judicial review proceeding, they may then move this Court to allow them
to amend their pleadings to reintroduce allegations based on the disclaimer
into the Defence and counterclaim”.
[24]
The present judicial review application was heard before me
on November 15, 2006. Having heard counsel and read their written
arguments and considered the relevant case law, I accept the applicant’s
submissions to the effect that: 1) Dionne had no jurisdiction under the
Act and the Rules either by way of delegation or otherwise to examine the
applicant’s disclaimer and to make the impugned decision; and 2) that the
Commissioner is not empowered under the Act and the Rules to refuse the filing
or recordal of the applicant’s disclaimer that was filed on November 8, 2005 in
the prescribed form and manner, as provided by subsection 48(2) of the Act and
section 44 of the Rules. Neither the Commissioner nor Dionne had jurisdiction
under the Act and the Rules to question the validity of the applicant’s
disclaimer and to render a decision on its scope and legal effect. The Patent
Office had the duty to enter the applicant’s disclaimer on the public record.
The present finding is consistent with the relevant case law on the subject
matter (see the cases cited, above). Given my conclusion on the jurisdictional
issue, it is not necessary to examine the procedural fairness or bias issue
raised subsidiarily by the applicant in its memorandum in relation to the
circumstances surrounding the filing by Ogilvy, on or around December 21,
2005, of a letter protesting against the entering of the applicant’s disclaimer.
This letter was sent following various inquiries and communications with CIPO
personnel in December 2005, prior to the making of the impugned decision.
[25]
Distrimedic has taken the view that in light of certain
policy considerations, the Court would be justified in recognizing the right of
the Commissioner or of the lawful delegate of the Commissioner to make factual
and legal determinations with respect to disclaimers. As stated by the Supreme
Court of Canada “[t]he scope of patent protection must not only be fair, it
must be reasonably predictable” (Free World Trust v. Électro Santé Inc.,
2000 SCC 66, [2000] 2 S.C.R. 1024 at para. 41). Accordingly, Distrimedic
submits that the Court’s adoption of the applicant’s position would render
patents unfair, impossible to predict and make them a “public nuisance”. Potential
competitors of the patentee would be in a constant state of uncertainty with
respect to the scope of the patent, since the patentee could broaden the claims
at any time by way of a document purporting to be a disclaimer. In my opinion,
this Court cannot rely on valid policy considerations to substitute itself for
Parliament. Canadian patent law is entirely statutory. A person’s right to
obtain a patent, as well as the requirements an applicant must satisfy to do
so, arise solely from the Act and the Rules promulgated thereunder (see Dutch
Industries Ltd. v. Canada (Commissioner of Patents), (2001) 14 C.P.R. (4th)
499 (F.C.T.D.), appeal allowed in part (2003), 24 C.P.R. (4th) 157
(F.C.A.), and also Johnson & Johnson Inc. v. Boston Scientific Ltd.,
2004 FC 1672, [2005] 4 F.C.R. 110 at paras. 5-14, appeal allowed on the limited
ground that after the judgment of the Federal Court in this instance,
Parliament adopted subsection 78.6 (1) of the Patent Act, R.S.C. 1985,
c. P-4 to alleviate the effect of Dutch Industries retroactively, 2006
FCA 195, 351 N.R. 87 at paras. 4-6 (F.C.A.).
[26]
Indeed, the Act and the Rules specify all aspects of the
application process and delineate the role and powers of the Commissioner in
receiving and processing patent applications and in issuing patents. Discretion
exists, when it exists, by the operation of the law alone. For instance, the
Commissioner is given explicit discretion under subsection 28(2) of the Act to
backdate a fee payment for the purpose of subsection 28(1) of the Act. Under
subsection 35(2) of the Act, the Commissioner may require an applicant for
a patent to make request for examination pursuant to subsection 35(1) of the
Act. In such a case, the application is “examined by competent examiners to be
employed in the Patent Office for that purpose”. The scope of such examination
is regulated by sections 28 to 30 of the Rules. However, no provision exists in
the Act or the Rules to allow the Commissioner to refer a disclaimer to an
examiner, nor to reject a disclaimer or to refuse to record a disclaimer having
been filed by a patentee with the Patent Office in the form and manner provided
in the Act and the Rules.
[27]
The failure to expressly mention the Commissioner or the
examiner in section 48 of the Act does not appear to be the result of careless
drafting or inadvertence by Parliament. Specifically, there are various
statutory methods under the Act whereby an issued patent may be amended: 1)
Clerical errors may be corrected with the permission of the Commissioner under section
8 of the Act; 2) Upon receipt of a request satisfactorily identifying the prior
art and the manner of applying it, upon conclusion of re-examination, a patent
in the manner indicated at section 48.4 of the Act shall be issued by the
re-examination board established by the Commissioner; 3) A defective or
inoperative patent may be surrendered and caused to be reissued by the
Commissioner under section 47 of the Act for the then unexpired term for which
the original patent was granted; and 4) Subsections 48(1) and (5) of the Act
entitle a patentee or its assignee, on payment of the prescribed fee, to
disclaim anything included in the patent by mistake, accident or inadvertence
at anytime during the term of the patent. In this regard, contrary to the aforementioned
provisions dealing with the correction of clerical errors, the re‑examination
of a patent on the basis of prior art and the reissue of a defective or
inoperative patent, section 48 of the Act confers no discretion to the
Commissioner or an examiner to make any inquiry or to take any decision with
respect to a disclaimer that has been submitted by a patentee for filing in the
prescribed form and manner.
[28]
There is no inherent discretion granted to the Commissioner
or an examiner to refuse to accept the filing or recordal of the applicant’s
disclaimer. As already indicated, their powers flow exclusively from statute or
valid regulations adopted by the Governor in Council. The Commissioner and the
examiners have simply no authority under the Act and the Rules to make a
decision on the validity of a disclaimer filed by a patentee (Monsanto
Appeal, above, at para. 3). This is a power that therefore belongs to the
courts and that may be exercised by them in the context of an action or
proceeding under the Act respecting the patent in issue. In this regard, a
judicial review proceeding under sections 18 and 18.1 of the Federal Courts
Act, R.S.C. 1985, c. F-7, is not the proper vehicle to obtain a judicial
declaration as to the validity or invalidity of a disclaimer filed by a
patentee with the Patent Office. For example, the impugned decision asserts
that by changing “at least one hole” to “engaging means” in a section of claim
15 of the disclaimer, the patent has been broadened to include subject matter
other than a hole. However, this issue must be left to a trial judge to decide
with the assistance of experts. A case in point is a decision of the Supreme
Court of Canada, submitted by the applicant, that purportedly found that a
recess and a hole fulfill exactly identical functions (see Lightning
Fastener Co. v. Colonial Fastener Co. [1933] S.C.R. 377 at 379). It is not
the function of this Court in the present judicial review proceeding to make
any final determination on this contested issue.
[29]
If the applicant is allowed in the future to amend its
defence and counterclaim, the Court, with the assistance of experts, may also
eventually be called upon in file no. T-1591-05, to assess the effects of the
limitations added in the applicant’s disclaimer with respect to claim 15, that
is:
a container-sealing sheet
having a top surface and a bottom surface and being shaped and sized to cover
at least all the containers and surrounding flanges of the container-defining
sheet, the bottom surface of said container-sealing sheet having bands that are
positioned, shaped and sized to exactly correspond to and fit over the flanges
of the container-defining sheet, with at least said bands being covered with a
self-adhesive material which is covered until use by a protective peelable
paper covering, and said container sealing sheet being provided with tearing
lines making it possible to tear said container-sealing sheet into a number of
cover pieces corresponding to the number of said containers.
[30]
Here, Dionne engaged in a comparative analysis of claim 15
and paragraph 3 of the applicant’s disclaimer respecting claim 15 and concluded
that the amendment would result in claiming more than what is currently
protected in the claims of the patent. This is undoubtedly a factual and legal determination on the merit of the disclaimer filed on
November 8, 2005. This finding served as a basis for Dionne to illegally refuse
the filing or recordal of the applicant’s disclaimer.
[31]
In conclusion, the words of section 48 of the Act are clear
and unambiguous. Their grammatical and ordinary sense accord with the scheme of
the Act, the object of the Act, and the clear intention of Parliament to limit
here the jurisdiction of the Commissioner in the manner already indicated in
the present reasons and in the applicable case law. In the exercise of the
discretion and powers granted to the Court under subsections 18.1(3) and (4) of
the Federal Courts Act, the impugned decision is set aside and the
applicant is entitled to a declaration that the applicant’s disclaimer was
filed and effective as of its filing date of November 8, 2005, subject to its
propriety or validity being questioned before a court of competent jurisdiction
in an action or proceeding under the Act respecting the patent in issue. In
view of the foregoing, it is not necessary to issue a writ of mandamus.
Moreover, in light of the general result of this proceeding and after
considering the positions taken in this case by both the Attorney General of
Canada and Distrimedic, the applicant is awarded costs against both respondents
individually.
ORDER
THIS COURT DECLARES AND ORDERS that:
1.
The
decision reported by letter dated December 20, 2006 refusing the filing or
recordal of the applicant’s disclaimer is set aside;
2.
The
applicant’s disclaimer was filed and effective as of its filing date of
November 8, 2005, subject to its propriety or validity being questioned before a court of competent jurisdiction in an action or
proceeding under the Act respecting the patent in issue;
3.
Costs of
this application are awarded to the applicant against both respondents
individually.
“Luc Martineau”
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