Date:
20080108
Docket:
A-68-07
Citation:
2008 FCA 4
CORAM: DÉCARY
J.A.
LÉTOURNEAU J.A.
NADON
J.A.
BETWEEN:
DISTRIMEDIC
INC.
Appellant
and
RICHARDS
PACKAGING INC.
Respondent
REASONS FOR JUDGMENT OF THE
COURT
(Delivered
from the Bench at Montréal, Quebec, on January 8, 2008)
LÉTOURNEAU
J.A.
[1]
The
respondent filed an alleged disclaimer with the Canadian Intellectual Property
Office pursuant to subsection 48(1) of the Patent Act, R.S.C. 1985, c.
P-4 as amended.
[2]
The
Commissioner of Patents (Commissioner) refused to record the alleged disclaimer
on the basis that it was not a disclaimer because it attempted to broaden,
rather than narrow, the scope of at least one claim of the “045 Patent”.
[3]
The
respondent successfully sought judicial review before the Federal Court.
Relying basically on this Court’s decision in Monsanto Co. v. Canada
(Commissioner of Patents), [1976] 2 F.C. 476 (F.C.A.), Martineau J.
(judge) ruled that the Commissioner or an examiner possesses no discretion
under section 48 of the Act to make any inquiry or to take any decision with
respect to a disclaimer submitted by a patentee in the prescribed form and
manner: see paragraph 27 of his reasons for judgment.
[4]
The
judge set aside the decision of the Commissioner and ordered the “disclaimer
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”: see
paragraph 2 of the Order. Hence the appeal from that decision.
[5]
The
appeal raises the following five issues as stated by the appellant in its
memorandum of fact and law:
Did Mr. Justice
Martineau err in concluding that the Commissioner did not have the power to
refuse the filing or recordal of the Alleged Disclaimer?
Did Mr. Justice
Martineau err in concluding that the Commissioner did not have the power to
refer the Alleged Disclaimer to an examiner?
Did the Commissioner
review the Alleged Disclaimer in order to determine whether it was, in fact, a
disclaimer?
Was the Commissioner
correct in concluding that the Alleged Disclaimer was not a disclaimer?
In concluding that the
Alleged Disclaimer was not a disclaimer, did the Commissioner fail to observe a
principle of natural justice or procedural fairness?
[6]
The
appellant agrees that issue no. 1 is the central issue which needs to be
determined. Consequently, this Court does not have to address the other four
issues if it concludes that the judge did not err on issue no. 1.
[7]
The
appellant’s position is that the Commissioner has the duty under section 48 of
the Act to accept only those disclaimers which are, in actual fact, disclaiming
part of the invention. In other words, implicit by necessary implication in the
obligation to verify that a disclaimer is in the proper form is the power to
refuse to record a disclaimer.
[8]
As
is often the case when a claim of implied power is made, the Court is asked to
read and find in the provision a power of which there is simply no mention.
[9]
Indeed,
not only is there no mention of such power in the provision, the Act, and more
specifically section 48, as well as the Rules, provide no administrative and
procedural framework to properly and effectively allow a substantive
consideration of the contents of a disclaimer. This is in contrast with
numerous other situations where an administrative structure is provided and
authority is given to the Commissioner or delegate to act: see for example
section 35 (request for examination), Rule 30 (procedural guarantees), section
65 and ff. (abuse of rights under patents).
[10]
We
believe that it is in vain that the appellant has tried to distinguish the
earlier ruling of this Court in the Monsanto case. Thirty-two
years have elapsed since that decision and Parliament has not seen fit to amend
section 48 to include the power that this Court denied then and that the
appellant now claims. When legislating, Parliament is presumed to know the law
as interpreted by the courts. The warning of Bastarache J. in Atco Gas &
Pipelines Ltd. v. Alberta (Energy Institute &
Utilities Board), [2006] 5 W.W.R. 1, at paragraph 86 (S.C.C.) is apposite
here. He wrote:
This Court’s
role in this case has been one of interpreting the enabling statutes using the
appropriate interpretive tools, i.e. context, legislative intention and
objective. Going further than required by reading in unnecessary powers
of an administrative agency under the guise of statutory interpretation is not
consistent with the rules of statutory interpretation. It is particularly
dangerous to adopt such an approach when property rights are at stake.
[11]
Giving
the Commissioner the power claimed by the appellant entails significant
procedural differences. It means that the Commissioner’s decision must be
reviewed summarily, without disclosure, by way of judicial review, rather than
by way of a claim or a defence in an action with all the procedural guarantees of
a full trial at which oral evidence can be given as to the proper scope of the
invention and the claim in issue as well as to whether the disclaimer is a
disclaimer.
[12]
Finally,
if the Commissioner does not possess the power to refuse to record a disclaimer,
as is presently the case, the appellant recognizes that it suffers no loss of
rights and no prejudice other than having the trouble and bearing the cost of
litigating the effect of the disclaimer. Once the possibility of recording a
disclaimer is given to a patentee, possible litigation as to the effect of the
disclaimer is something inherent to the very fact that a disclaimer is made and
sought to be recorded.
[13]
In
view of the conclusion that we reached on issue no. 1, we did not hear from the
appellant on the remaining grounds of appeal.
[14]
For
these reasons, the appeal will be dismissed with costs.
“Gilles Létourneau”
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