Date:
20070911
Docket:
T-1001-07
Citation:
2007 FC 896
[ENGLISH TRANSLATION]
BETWEEN:
SUNCOR
ENERGY INC.
Applicant
and
MMD DESIGN AND
CONSULTANCY LIMITED
and
ALAN
POTTS
Respondents
REASONS FOR
ORDER
PROTHONOTARY MORNEAU
[1]
This
is a motion by the respondents (collectively MMD Design) under Rules 208(d)
and 221 of the Federal Courts Rules (the Rules) to strike the
statement of claim by the applicant, Suncor Energy Inc. (Suncor), on the
grounds that this Court does not have jurisdiction for the cause of action
raised by Suncor.
[2]
MMD
Design also notes in support of the desired striking that there is lis
pendens between this docket and an action brought by Suncor before the
Court of Queen’s Bench in Alberta (the Alberta dispute).
Background
[3]
The
statement of claim in this Court shows that, in 2003, Suncor entered into an
agreement with MMD Design, among others, for the latter to develop and build a
certain type of equipment to help Suncor in the exploitation of the oil sands.
During the development and eventual testing of the equipment, there would be
some interaction between employees of MMD Design and Suncor.
[4]
That
contact between employees of the two corporations apparently led MMD Design to
learn of confidential information regarding another type of technology that
Suncor employees were developing at the same time, technology that, in Suncor’s
project, would eventually supplant the equipment or technology being developed
by MMD Design.
[5]
With
that confidential information and the trade secrets thus stolen by MMD Design,
the latter apparently filed a patent application regarding the very invention
developed at the same time by Suncor employees.
[6]
Outraged
by those steps by MMD Design, Suncor launched two proceedings on June 1, 2007,
namely this case in the Federal Court (the Federal Court dispute) and the
Alberta dispute.
[7]
In
paragraph 1 of its statement of claim in Federal Court, Suncor is seeking a
declaration that it, not MMD Design, is the owner of the invention in question
and is asking the Court to order that the records at the Patent Office be
corrected accordingly and that Suncor employees be identified in those records
as the true inventors.
[8]
Following
is the text of paragraphs 1 a. and b. of that statement of claim in
the Federal Court dispute, which I feel is sufficient for the purposes of our
review:
1.
The
Plaintiff claims:
a. A declaration that the
plaintiff Suncor Energy Inc. is the owner of the subject matter described and
claimed in Canadian Patent Application No. 2,558,059;
b. An order pursuant to
s. 52 of the Patent Act, R.S.C. 1985, c. P‑4, as
amended, directing that the records of the Patent Office relating to Canadian
Patent Application No. 2,558,059 be varied to:
i. strike the current listed
owner and applicant, and identify the plaintiff Suncor Energy Inc. as the sole
owner and applicant; and
ii. strike the current listed
inventor and identify Brad Bjornson, Doug Cox, Paul MacDougall and Garth Booker
as inventors.
[9]
It
is interesting to note right away that, in the Alberta dispute, in addition to
the various types of damages sought from the respondents, including MMD Design,
Suncor is also seeking a declaration of ownership of the invention. The
statement of claim in the Alberta dispute includes the following conclusions in
this regard:
a. A declaration
that Suncor is the owner of, and that Suncor’s employees are inventors of, the
subject matter disclosed and claimed in, the following:
i. Canadian Patent
Application No. 2,558,059;
ii. the foreign patent
applications from which Canadian Patent Application No. 2,558,059 claims
priority; and
iii. all patent applications
or corresponding patents, in all jurisdictions, derived from the above priority
applications and/or the PCT application filed as Canadian Patent Application
No. 2,558,059;
e. In the
alternative, if this Honourable Court does not issue a declaration that Suncor
is the owner of the subject matter described and claimed in Canadian Patent
Application No. 2,558,059, an order that Suncor be declared a co-applicant
of the patent application or, in the further alternative, that the application
be declared invalid and void.
Analysis
[10]
Regarding
conclusion l a. in the Federal Court dispute, it seems plain and obvious
to me from the teachings of the Federal Court of Appeal in Cellcor Corp. of
Canada Ltd. et al. v. Kotacka, (1977), 27 C.P.R. (2d) 68 (Cellcor)
that this Court does not have jurisdiction regarding a preliminary
determination of ownership of an invention.
[11]
In
Cellcor, the Federal Court of Appeal examined a dynamic similar to the
one before us here. After considering the text of what is now section 52 of the
Patent Act, R.S.C., 1985, c. P-4, as amended, (the Act) and the
text of section 20 of the Federal Courts Act, R.S.C. 1985, c. F-7, as
amended, Pratte J. stated the following at pages 73–74:
The
respondent’s contention is, in my view, ill-founded. Assuming that the
declaration sought in this action is a remedy respecting a patent of invention,
within the meaning of s. 20, I am nevertheless of opinion that, in
the circumstances of this case, it is not a relief that the Federal Court has
power to grant because I agree with the appellants’ view that there is no
legal basis for it. Under the Patent Act, the official who must first
decide whether a patent may issue to an applicant is the Commissioner. The Act
does not empower the Courts to give him directions on the decision he should
reach; it is only if he is alleged to have made a wrong decision that, under
the statute, the Courts may be seized of the matter. In my view, it would be
contrary to the scheme of the Patent Act for the Courts to assume the
power, in a case like the present one, to make the declaration sought.
In my opinion, the power of the Court, under Rule 1723, to make “binding
declarations of right” cannot be exercised in respect of letters patent of
invention when its exercise is not expressly or impliedly contemplated by the Patent
Act or another statute within the legislative jurisdiction of
Parliament.
I
know that my conclusion may be difficult to reconcile with the statement made
by Mr. Justice Rinfret (as he then was) at p. 250 of his reasons for
judgment in Kellogg
Co. v. Kellogg (1941),
1 C.P.R. 30, [1941] 2 D.L.R. 545, [1941] S.C.R. 242. However, I find that
statement equally difficult to reconcile with the subsequent decision of the
Supreme Court in Radio
Corp. of America v. Philco Corp. (Delaware) (1966), 48 C.P.R. 128, 56 D.L.R.
(2d) 407, [1966] S.C.R. 296.
(Emphasis
added)
[12]
Regarding
conclusion 1 b. in the Federal Court dispute, it is, like the other
conclusions sought by Suncor, related to section 52 of the Act. That section is
at the very end under the heading “Assignments and Devolutions” in the Act. In
fact, that heading contains sections 49 to 52, which read as follows:
ASSIGNMENTS AND
DEVOLUTIONS
Assignee
or personal representatives
49. (1)
A patent may be granted to any person to whom an inventor, entitled under
this Act to obtain a patent, has assigned in writing or bequeathed by his
last will his right to obtain it, and, in the absence of an assignment or
bequest, the patent may be granted to the personal representatives of the
estate of the deceased inventor.
Assignees may object
(2) Where an applicant
for a patent has, after filing the application, assigned his right to obtain
the patent, or where the applicant has either before or after filing the
application assigned in writing the whole or part of his property or interest
in the invention, the assignee may register the assignment in the Patent
Office in such manner as may be determined by the Commissioner, and no application
for a patent may be withdrawn without the consent in writing of every such
registered assignee.
Attestation
(3) No assignment shall
be registered in the Patent Office unless it is accompanied by the affidavit
of a subscribing witness or established by other proof to the satisfaction of
the Commissioner that the assignment has been signed and executed by the
assignor.
R.S., 1985, c. P-4,
s. 49; R.S., 1985, c. 33 (3rd Supp.), s. 19.
|
CESSIONS ET DÉVOLUTIONS
Cessionnaire ou représentants personnels
49. (1) Un brevet peut
être concédé à toute personne à qui un inventeur, ayant aux termes de la
présente loi droit d’obtenir un brevet, a cédé par écrit
ou légué par son dernier testament son droit de l’obtenir. En l’absence d’une
telle cession ou d’un tel legs, le brevet peut être concédé aux représentants
personnels de la succession d’un inventeur décédé.
Opposition au retrait de la demande
(2) Si le demandeur d’un
brevet a, après le dépôt de sa demande, cédé son droit d’obtenir le brevet,
ou s’il a, avant ou après le dépôt de celle-ci, cédé par écrit tout ou partie
de son droit de propriété sur l’invention, ou de son intérêt dans l’invention,
le cessionnaire peut faire enregistrer cette cession au Bureau des brevets, en la forme fixée par le commissaire; aucune
demande de brevet ne peut dès lors être retirée sans le consentement écrit de
ce cessionnaire.
Attestation
(3) La cession ne peut
être enregistrée au Bureau des brevets à moins d’être
accompagnée de l’affidavit d’un témoin attestant, ou à moins qu’il ne soit
établi par une autre preuve à la satisfaction du commissaire, que cette
cession a été signée et souscrite par le cédant.
L.R. (1985), ch.
P-4, art. 49; L.R. (1985), ch. 33 (3e suppl.), art. 19.
|
|
Patents to be assignable
50. (1) Every patent issued for an
invention is assignable in law, either as to the whole interest or as to any
part thereof, by an instrument in writing.
Registration
(2) Every assignment of
a patent, and every grant and conveyance of any exclusive right to make and
use and to grant to others the right to make and use the invention patented,
within and throughout Canada or any part thereof, shall be registered in the
Patent Office in the manner determined by the Commissioner.
Attestation
(3) No assignment,
grant or conveyance shall be registered in the Patent Office unless it is
accompanied by the affidavit of a subscribing witness or established by other
proof to the satisfaction of the Commissioner that the assignment, grant or
conveyance has been signed and executed by the assignor and by every other
party thereto.
R.S., 1985, c. P-4, s. 50;
R.S., 1985, c. 33 (3rd Supp.), s. 20.
|
Les brevets sont cessibles
50. (1) Tout brevet délivré pour une invention est cessible en droit,
soit pour la totalité, soit pour une partie de l’intérêt, au moyen d’un acte
par écrit.
Enregistrement
(2) Toute cession de
brevet et tout acte de concession ou translatif du droit exclusif d’exécuter
et d’exploiter l’invention brevetée partout au Canada et de concéder un tel
droit à des tiers sont enregistrés au Bureau des brevets selon ce que le
commissaire établit.
Attestation
(3) L’acte de cession,
de concession ou de transport ne peut être enregistré au Bureau des brevets à
moins d’être accompagné de l’affidavit d’un témoin attestant, ou à moins qu’il
ne soit établi par une autre preuve à la satisfaction du commissaire, qu’un
tel acte de cession, de concession ou de transport a été signé et souscrit
par le cédant et aussi par chacune des autres parties à l’acte.
L.R. (1985), ch. P-4, art. 50;
L.R. (1985), ch. 33 (3e suppl.), art. 20.
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When
assignment void
51. Every assignment affecting a patent for invention, whether it is
one referred to in section 49 or 50, is void against any subsequent assignee,
unless the assignment is registered as prescribed by those sections, before
the registration of the instrument under which the subsequent assignee
claims.
R.S., c.
P-4, s. 53.
|
Nullité de la cession, à défaut d’enregistrement
51. Toute cession en vertu des articles 49 ou 50 est nulle et de nul
effet à l’égard d’un cessionnaire subséquent, à moins que l’acte de cession n’ait
été enregistré, aux termes de ces articles, avant l’enregistrement de l’acte
sur lequel ce cessionnaire subséquent fonde sa réclamation.
S.R., ch.
P-4, art. 53.
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Jurisdiction of Federal Court
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.
R.S., c. P-4, s. 54; R.S., c.
10 (2nd Supp.), s. 64.
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Juridiction de la Cour fédérale
52. La Cour fédérale est compétente, sur 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.
S.R., ch. P-4, art. 54; S.R.,
ch. 10 (2e suppl.), art. 64.
|
[13]
According
to MMD Design, it is plain and obvious that a patent — not simply a patent
application — must be at issue for this court to be able to order the Patent
Office to vary or expunge an entry in the records.
[14]
A
reading of the text of section 52 seems to support that interpretation by MMD
Design.
[15]
However,
Suncor cites a 1989 decision by this Court in Love v. Claveau,
[1990] 1 F.C. 64 (Love) to claim that the Court in that decision refused
to strike an application for judicial review filed under section 52 of the Act
in which the applicants were asking that an entry in the records of the Patent
Office recognizing a corporation as assignee be expunged. As in this Federal
Court dispute, no patent had yet been issued in Love. However, in Love,
there was an assignment of the right to apply for a patent, an assignment that
was recorded by the Commissioner of Patents.
[16]
At
page 67 in his analysis in Love, Dubé J. cited, in addition to section
52 of the Act, the text of the three sections of the Act that precede section
52 because, in his view, those sections must be taken into consideration to
understand the intent of the legislator under the heading that ends with section
52.
[17]
In
my view, it is plain and obvious that that approach by Dubé J. and the
statements cited below show that section 52 of the Act can extend to a patent
application, not just a patent that has been issued, but only where the dynamic
in question involves an assignment or devolution of the right to obtain a
patent. That is not the case in this Federal Court dispute.
[18]
At
the end of page 67, Dubé J. noted as follows that the heading that includes
section 52 refers to any assignment of rights, whether that assignment occurs
before or after a patent is issued.
A
reading of these sections shows that section 49 deals with the assignment of a
right to a patent before the patent has been granted. Section 50 provides for
the assignment of an issued patent. Section 51 refers to every assignment “affecting
a patent for invention, whether it is one referred to in section 49 or 50”. The
aforementioned section 52 establishes the jurisdiction of the Federal Court to
expunge “any entry in the records of the Patent Office relating to the title to
a patent”.
The
central issue to be resolved is whether those words limit the jurisdiction to a
patent which has been issued or are broad enough to include any entry relating
to a pending application for a patent. (…)
[19]
After
reviewing certain decisions, including Cellcor, Dubé J. focuses his
analysis as follows at pages 71–72:
It
should be noted that as a result of the assignment of the right to the
application having been registered by the Commissioner of Patents, the applicants are now
deprived of their former right to prosecute their application. Should the
alleged assignees of the application, the respondents, be negligent in their
prosecution of the application, the patent may not be granted. Should they
withdraw the application, the patent will not be granted. In my view, if the
purported assignment is a forgery, as claimed by the applicants, they are
entitled to a remedy for the wrong inflicted upon them.
The
respondents argue that this is a matter for a provincial superior court,
presumably an Ontario court since the document in question is purported to have
been signed in Toronto. However, I fail to see how an Ontario court could order
a federal board, which the Patent Office clearly is, to vary or to expunge or
to otherwise deal with the matter. Clearly, this problem calls for a more
appropriate solution.
In
my view, the solution is to be found in the wide powers granted to the Court by
section 52 of the Patent Act. That section, properly read within the
scheme of the Assignments and Devolutions chapter of the Patent Act,
means that the Court may order that any entry [emphasis by Dubé J.] in
the records be varied or expunged as long as the entry relates to the title to
a patent. That language necessarily includes assignments of a right to
obtain a patent. All assignments, although dealt with separately in sections 49
and 50, are grouped together in section 51, and remain so grouped in the
culminating section 52.
(Emphasis
added)
[20]
I
therefore do not feel that the decision by this Court in Love, without
an assignment or devolution of rights in a patent application, allows us to
consider that section 52 of the Act can be used as claimed by Suncor at
paragraph 9 of its written submissions:
(…)
to rectify the application documents now on file in the Patent Office to
reflect the true inventors and hence the true owner of the application.
(Emphasis
added)
[21]
It
is therefore plain and obvious, in my view, that this Court does not have
jurisdiction over the cause of action raised by Suncor. Suncor’s statement of
claim shall therefore be struck, and its action dismissed, without leave to
amend. Given that conclusion, there is no need for me to address the lis
pendens aspect raised by MMD Design.
[22]
I
would add, however, that had I not reached the previous conclusion, I would
nonetheless have struck conclusion 1 a. of the same statement and
suspended the rest of the Federal Court action, as that conclusion 1 a.
clearly duplicates the Alberta dispute.
[23]
I
would also add here that, although recourse is allowed under section 52 of the
Act, it seems to me, based on Rule 300(b) and section 52 of the Act that such
recourse must be initiated by an “application” under Part 5 of the Rules, not
by an action. However, it must be noted that Rule 57 does not make such a
situation a case to be struck.
“Richard
Morneau”
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