Date: 20070416
Docket: T-1236-01
Citation: 2007
FC 396
Vancouver, British Columbia, April 16, 2007
PRESENT: Roger R. Lafrenière, Esquire
Prothonotary
BETWEEN:
EDWARD GRENKE and
GRENCO INDUSTRIES LTD.
Plaintiffs
(Defendants by Counterclaim)
and
CORLAC INC., NATIONAL-OILWELL CANADA
LTD.,
and NATIONAL OILWELL INCORPORATED
Defendants
(Plaintiffs by Counterclaim)
REASONS FOR ORDER AND ORDER
[1]
The
only issue to be determined on this motion is whether the Defendants should be
granted leave to add the Commissioner of Patents (Commissioner) as a party to
the Counterclaim and make
consequential amendments to their Amended Statement of Defence and
Counterclaim.
[2]
For
substantive and practical considerations, I conclude that the Commissioner
should not be joined as a party to this action.
Background
[3]
In
their Statement of Claim, the Plaintiffs allege that the Defendants have
infringed Canadian
Patent Nos. 2,095,937 (the ‘937 Patent) and 2,098,324 (the ‘324 Patent). The
Defendants deny the allegations and have counterclaimed that the two patents
are invalid. They allege, in particular, that Art Britton (Britton) was the
true inventor or co-inventor of the ‘937 Patent. The Defendant, National Oilwell Canada Ltd., has
taken an assignment of Britton's rights in the '937 Patent.
[4]
At
paragraph 21 of their Counterclaim, the Defendants make a claim for the
following relief:
(a)
an
Order, pursuant to section 52 of the Patent Act that the entry in the records
of the Canadian Patent Office relating to the title of the '937 Patent be
expunged and that the title be varied to name Art Britton as the true inventor
and National-Oilwell Canada Ltd. as the owner of the Patent;
(b)
alternatively,
an Order, pursuant to section 52 of the Patent Act that the entry in the
records of the Canadian Patent Office relating to the title of the '937 Patent
be varied to name Art Britton as a co-inventor and National-Oilwell Canada Ltd.
as the co-owner of the Patent.
[5]
The
Defendants submit that, because the Defendants are seeking an order from the
Court to rectify the Patent Office Record pertaining to one of the patents at
issue in the action Section
52 of the Patent Act, R.S. 1985, c. P-4 (the Patent Act), the
Commissioner must be made a party to ensure that he is bound to give effect to
any order made by the Court.
[6]
Section 52 of the Patent
Act reads as follows:
|
52.
The Federal Court has jurisdiction, on the application of the Commissioner or
of any person interested, to order that any entry in the records of the
Patent Office relating to the title to a patent be varied or expunged.
|
52.
La Cour fédérale est compétente sure la demande du commissaire ou de toute
personne intéressée, pour ordonner que toute inscription dans les registres
du Bureau des brevets concernant le titre à un brevet soit modifiée ou
radiée.
|
Analysis
[7]
Rule
104 of the Federal Courts Rules (the Rules) allows for the
addition of a person who ought to have been joined or whose presence before the
Court is necessary to ensure that all matters in dispute in a proceeding may be
completely determined.
[8]
The Defendants rely on
two recent decisions of this Court as support for their position that the
Commissioner must be named as a party in order to ensure he will be bound by
the court order: the decision of Justice Konrad von Finckenstein in Axia Inc. v. Northstar
Tool Corp.
2005 FC 573
(Axia), and the decision of Justice
Carolyn Layden-Stevenson in Micromass UK Ltd. v. Canada (Commissioner of
Patents) 2006
FC 117 (Micromass).
[9]
In
Axia, Justice von Finckenstein was dealing with an application pursuant
to section
52 of the Patent Act for an order amending the ownership of two
Canadian patents. The application was based in part upon a decision of the
British Columbia Court regarding ownership of the counterpart U.S. patents.
Justice von Finckenstein held that the issue was not res judicata
because the B.C. decision did not cover the Canadian patents, and because no
declaration of ownership was made. He concluded, however, that the Federal
Court did not have jurisdiction because the issue was primarily a contract
dispute. At paragraph 25 of the decision, he expressed the view that where an
order is sought directing the Commissioner to amend the records of ownership,
the Commissioner should be a party. He stated as follows:
This action, however, was brought as a
section 52 application, not as a judicial review of the Commissioner's refusal
to change the register of the Canadian patents. I do not see how this Court can
order the Commissioner to do something when he is not a party before this
Court. I would think that to obtain an order directing the Commissioner to
change the register, as requested in the prayer for relief, it will be
necessary to make the Commissioner a party. This may be of little practical
difference and not prove fatal, as counsel for the Applicant was advised by the
Commissioner's counsel that the Commissioner would change the register when
served with a declaration of a Court that Axia is the owner of the Canadian
patents. However, I remain of the view that for an application under s. 52 of
the Patent Act, it would be proper to make the Commissioner a party to the
proceedings. As this point is not in issue, there is no need to dwell further
upon it.
[10]
In Micromass,
Justice Layden-Stevenson was also dealing with an application brought pursuant
to section 52 of the Patent Act. The Applicant sought an order to vary entries
in the records of the Patent Office with respect to the inventorship of a Canadian
patent. At paragraph 14 of her decision, Justice Layden-Stevenson commented regarding
the proper procedure to obtain relief pursuant to section 52 of the Patent
Act as follows:
An application under section 52 of the
Act may be brought by an assignee of a patent, with notice to the Commissioner,
by way of an originating process or by way of notice of motion during a pending
infringement case relating to the patent in question.
[11]
The decisions in Axia
and Micromass are of little assistance in determining whether the
Commissioner should be named as a party in an action seeking relief pursuant to
section 52 of the Patent Act.
[12]
To
begin with, both of the proceedings in Axia and Micromass were applications
brought under Part 5 of the Rules. The two decisions can therefore be
distinguished on the basis that the rules relating to joinder of parties, as
well as the notice requirements, are substantially different than those that
apply to actions under Part 4 of the Rules.
[13]
Further,
to the extent that the Court in Axia held that the Commissioner was a
proper party to that proceeding, the statement is clearly obiter. Justice von
Finckenstein acknowledges as much in the concluding sentence of paragraph 25 of
his decision. The issue of whether the Commissioner should properly be named as
a party in all proceedings where relief pursuant to section 52 of the Patent
Act is being sought was not before Justice von Finckenstein. Nor did he have
the benefit of affidavit evidence and submissions from the Commissioner as in
the present motion. In the circumstances, a mere passing remark, or
a statement or assumption on a matter that has not been argued may be persuasive,
but certainly not binding.
[14]
As
for the decision in Micromass, the key issue for the court to determine was
whether the Commissioner had any discretion under the Patent Act to
amend an issued patent. Justice Layden-Stevenson appears to be suggesting, at
most, that notice should be given to the Commissioner of the section 52
application by way of an originating process or by way of notice of motion. The
key point was the recognition of a notice requirement. It is trite to say that
the Commissioner can only give effect to that which he has knowledge of. In my
view, Micromass stands for the proposition that all that is required in order
for the Commissioner to give effect to a section 52 order is that he be given
notice of the order.
[15]
The Patent
Act clearly provides an express and exclusive role for the Federal Court in
relation to varying and expunging records in the Patent Office. As such, the
Commissioner has no power or jurisdiction to disobey or disregard orders made
in accordance with the Patent Act jurisdiction of the Federal Court.
[16]
In
performing its jurisdiction under section 52 of the Patent Act, the
Federal Court does not, and in fact, is not ordering the Commissioner to do
anything. The Federal Court is simply determining the rights of private parties
as reflected in the Patent Office records, and it is the statutory obligation
of the Commissioner to give effect to any such orders.
[17]
If
Parliament had intended the Commissioner to have the power to disregard or
second guess orders of the Federal Court, it would have had to provide for such
powers expressly in the Patent Act. No such residual jurisdiction has
been reserved to the Commissioner. Instead, Parliament has given exclusive
jurisdiction over varying and expunging the Patent Office records to the
Federal Court pursuant to section 52. The Commissioner has no more power or
authority than would a clerk of the Federal Court to refuse to give effect to
such a court order.
[18]
There
is no evidence to suggest that the Commissioner will refuse to give effect to a
court order. To the contrary, the evidence before me is that the Commissioner perceives
himself to be statutorily obligated to do so in connection which his mandate to
maintain the patent register.
[19]
The
duties of the Commissioner are set out in section 4(2) of the Patent Act.
They do not include taking a position on the merits of proceedings between
private parties. The Commissioner's exclusive role in connection with this
matter is to give effect to any order of the court under section 52 of the Patent
Act. I therefore conclude
that the Commissioner is not a person who ought to have been joined as a party
or whose presence before the Court is necessary to ensure that the matters in
dispute may be effectually and completely determined, within the meaning of
Rule 104.
ORDER
THIS COURT ORDERS that
1. Leave be granted to the Defendants to
serve and file a Freshly Amended Statement of Defence and Counterclaim amending
paragraph 17(a) and adding new paragraph 17(a)(iii) as set out in Schedule A to
the Notice of Motion on the provision that the plaintiffs will be entitled to
discovery on these amendments.
2. Leave to serve and file a Freshly
Amended Statement of Defence and Counterclaim adding the Commissioner of
Patents as a party to the Counterclaim and proposed new paragraph 22A as set
out in Schedule A to the Notice of Motion is denied.
3. There be no order as to
costs
“Roger
R. Lafrenière”
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