Docket: A-419-14
Citation:
2016 FCA 37
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CORAM:
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WEBB J.A.
BOIVIN J.A.
DE MONTIGNY J.A.
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BETWEEN:
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LOUIS BROWN
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2202240 ONTARIO
INC. d/b/a
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NOR
ENVIRONMENTAL INTERNATIONAL
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Appellants
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and
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HER MAJESTY THE QUEEN IN RIGHT OF CANADA
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and
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HDT TACTICAL
SYSTEMS, INC. d/b/a
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HDT ENGINEERED
TECHNOLOGIES
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Respondents
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and
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INTELLECTUAL
PROPERTY INSTITUTE OF CANADA/
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INSTITUT DE LA
PROPRIÉTÉ INTELLECTUELLE DU CANADA
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Intervener
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REASONS
FOR JUDGMENT
BOIVIN J.A.
[1]
This is an appeal from of a decision of a
Federal Court Judge (the Judge) dated August 29, 2014 (2014 FC 831), regarding a
motion for summary judgment by the Crown in a patent invalidity claim pursuant
to section 53 of the Patent Act, R.C.S., 1985, c. P-4. This motion arose
in proceedings brought by the appellants Mr. Brown and Nor Environmental International
(NOR) against the Crown and HDT Tactical Systems (HDT) for infringement of
Canadian Patent No. 2,285,748 (‘748 Patent). The Crown responded by seeking the
dismissal of the appellants’ claim and summary judgment for the invalidation of
Mr. Brown’s ‘748 Patent on the basis that he was a member of the Canadian Forces
when he filed the patent and, as such, breached his statutory obligations under
section 4 of the Public Servants Inventions Act, R.C.S., 1985, c. P-32
(PSIA) by failing to disclose his public servant status. This, the Crown
alleged, resulted in a material untrue allegation voiding the ‘748 Patent under
section 53 of the Patent Act.
[2]
The Judge granted the Crown's motion in part.
She found that Mr. Brown was a public servant for the purposes of the PSIA when
he applied for the patent at issue and that he did not disclose his public
servant status as he was explicitly required to do pursuant to section 4 of the
PSIA. The Judge found that this omission constituted an untrue allegation and
that this untrue allegation was material for the purpose of subsection 53(1) of
the Patent Act. However, the Judge decided that the issue of whether the
untrue material allegation needed to be made wilfully with the purpose of
misleading, and if so, whether Mr. Brown had the requisite intention, was an
issue best determined at trial.
[3]
For the reasons that follow, I am of the view
that the appeal should be allowed.
I.
Factual Background
[4]
The parties do not dispute the relevant factual
background.
[5]
Between 1973 and 1993, Mr. Brown was enrolled in
the Canadian Forces’ Regular Force.
[6]
In June 1993, following his retirement, Mr.
Brown was placed in the Reserve Force. The Reserve Force includes both the
Primary Reserve and the Supplementary Reserve.
[7]
From 1993 to 1995, Mr. Brown was placed on the
Supplementary Reserve. During that time, he founded NOR. Mr. Brown was then
transferred to the Primary Reserve in October 1995, and, between 1995 and July
1998, he was remunerated for part-time work for the Air Forces which included
the writing of training and equipment manuals.
[8]
In June 1999, Mr. Brown was released from the
Primary Reserve and was listed on the Supplementary Holding Reserve, which is a
subset of the Supplementary Reserve. In this capacity, Mr. Brown was notably
listed as an individual who was not available to undertake any duties,
including in time of emergency; he did not receive any benefits or remuneration
and was not subject to the Canadian Forces’ Code of Discipline. While he was
listed on the Supplementary Holding Reserve until June 2009, Mr. Brown was
never placed on active service and received no benefits or remuneration.
[9]
On October 8, 1999, approximately 4 months after
his release from the Primary Reserve, Mr. Brown filed an application for the ‘748
Patent in the Canadian Patent Office. The ‘748 Patent is entitled “Transportable
Collective Protection System”. It is directed to a system for decontamination
and containment of biological and chemical hazards. NOR is a licensee of the
‘748 Patent.
[10]
In June 2008, Public Works and Government
Services Canada (Public Works) published a draft performance specification for
transportable collective protective (ColPro) systems. A year later, in July
2009, Public Works published a request for proposals for ColPro systems and
received bids from, amongst others, NOR and HDT. The contract was awarded to HDT
in December 2009. The parties agree that ColPro systems are for the defence of
Canada or for the training of or maintaining of the efficiency of the Canadian
Forces.
[11]
On April 2012, Mr. Brown and NOR launched
proceedings in the Federal Court for patent infringement.
[12]
The Crown and HDT responded by way of a motion
seeking dismissal of the appellants’ claim and summary judgment for the
invalidation of the ‘748 Patent. The Crown claimed that the ‘748 Patent was
void because Mr. Brown did not identify himself as a public servant when he
made his application. This omission, the Crown argued, constituted a material
untrue allegation which resulted in an invalid ‘748 Patent pursuant to section
53 of the Patent Act.
II.
Legislative provisions
[13]
This appeal concerns the following main
legislative provisions:
- Section 2 of the PSIA:
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2. In this Act,
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2. Les
définitions qui suivent s’appliquent à la présente loi.
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“public servant” means any person employed in a department, and
includes a member of the Canadian Forces or the Royal Canadian Mounted
Police.
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« fonctionnaire »
Toute personne employée dans un ministère et tout membre du personnel des
Forces canadiennes ou de la Gendarmerie royale du Canada.
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- Section 4 of the PSIA:
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4. (1) Every public servant
who makes an invention
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4. (1) Le fonctionnaire auteur
d’une invention a l’obligation :
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(a) shall
inform the appropriate minister of the invention and shall provide the
minister with such information and documents with respect thereto as the
minister requires;
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a) d’en informer le ministre compétent
et de fournir à celui-ci les renseignements et documents qu’il lui demande à
ce sujet;
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(b) shall
not file outside Canada an application for a patent in respect of the
invention without the written consent of the appropriate minister; and
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b) d’obtenir le consentement écrit du
ministre compétent avant de déposer, hors du Canada, une demande de brevet
concernant l’invention;
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(c) shall,
in any application in Canada for a patent in respect of the invention,
disclose in his application that he is a public servant.
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c) de révéler sa qualité de
fonctionnaire, dans toute demande de brevet déposée au Canada à l’égard de
l’invention.
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(2) If it appears to the Commissioner
of Patents that an application for a patent relates to an invention made by a
public servant, the Commissioner shall inform the appropriate minister of the
application and give to the minister such information with respect thereto as
the minister requires.
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(2) S’il lui apparaît qu’une demande de brevet vise une
invention dont l’auteur est un fonctionnaire, le commissaire aux brevets en
informe le ministre compétent et fournit à ce dernier les renseignements
qu’il sollicite à cet égard.
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- Section 53 of the Patent Act:
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53. (1) A patent is void if
any material allegation in the petition of the applicant in respect of the
patent is untrue, or if the specification and drawings contain more or less
than is necessary for obtaining the end for which they purport to be made,
and the omission or addition is wilfully made for the purpose of misleading.
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53. (1) Le
brevet est nul si la pétition du demandeur, relative à ce brevet, contient
quelque allégation importante qui n’est pas conforme à la vérité, ou si le
mémoire descriptif et les dessins contiennent plus ou moins qu’il n’est
nécessaire pour démontrer ce qu’ils sont censés démontrer, et si l’omission
ou l’addition est volontairement faite pour induire en erreur.
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(2) Where it appears to a court that
the omission or addition referred to in subsection (1) was an involuntary
error and it is proved that the patentee is entitled to the remainder of his
patent, the court shall render a judgment in accordance with the facts, and
shall determine the costs, and the patent shall be held valid for that part
of the invention described to which the patentee is so found to be entitled.
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(2) S’il apparaît au tribunal que
pareille omission ou addition est le résultat d’une erreur involontaire, et
s’il est prouvé que le breveté a droit au reste de son brevet, le tribunal
rend jugement selon les faits et statue sur les frais. Le brevet est réputé
valide quant à la partie de l’invention décrite à laquelle le breveté est
reconnu avoir droit.
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(3) Two office copies of the judgment
rendered under subsection (1) shall be furnished to the Patent Office by the
patentee, one of which shall be registered and remain of record in the Office
and the other attached to the patent and made a part of it by a reference
thereto.
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(3) Le breveté transmet au Bureau des
brevets deux copies authentiques de ce jugement. Une copie en est enregistrée
et conservée dans les archives du Bureau, et l’autre est jointe au brevet et
y est incorporée au moyen d’un renvoi.
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III.
Decision of the Judge
[14]
The Judge granted the motion in part. In so
doing, she began her analysis with an overview of the law of summary judgment
making reference to the Federal Courts Rules, S.O.R./98-106 (Rules 214-219)
and relevant jurisprudence. She noted that the standard to grant summary
judgment requires that the judge be satisfied that there is no genuine issue
for trial.
[15]
The Judge then determined that Mr. Brown was a
public servant within the meaning of section 2 of the PSIA when he applied for
the ‘748 Patent on October 8, 1999. She concluded that Mr. Brown was a member
of the Canadian Forces and, as such, did not have to be employed in order to
fall within the definition of public servant for the purpose of the PSIA.
[16]
In finding that Mr. Brown was a public servant
pursuant to the PSIA, the Judge held that Mr. Brown’s failure to disclose his
status amounted to an untrue allegation which was material as per subsection
53(1) of the Patent Act. In coming to this conclusion, she noted that
the framework of the PSIA imposed an explicit statutory duty of disclosure and
found that Mr. Brown’s omission prevented the Commissioner of Patents from
properly fulfilling his or her obligations pursuant to subsection 4(2) of the
PSIA which is to inform the appropriate minister about the patent application.
[17]
With respect to the issue of whether untrue
material allegations must be wilfully made for the purpose of misleading, the
Judge was of the view that it was a genuine issue which should be determined at
trial considering the paucity of evidence before the Court. She observed that
the alleged contravention of section 53 of the Patent Act was akin to
fraud. She added that if it was determined at trial that such an intention was
required, it would also be required that it be determined whether or not Mr. Brown
had the required intention.
[18]
Finally, the Judge held that the question of
whether or not the Crown Liability and Proceedings Act, R.S.C., 1985, c.
C-50 (CLPA) trumps the Patent Act was a genuine issue for trial. More
particularly, in the event that the ‘748 Patent was not void, the issue of
whether Canada was immune for liability pursuant to the CLPA because the
invention falls within the exception of section 8 would also need to be
determined. The parties did not make any submission on this issue on appeal.
[19]
On June 17, 2015, the Intellectual Property
Institute of Canada (IPIC) was granted leave to intervene in this appeal by order
of a judge of this Court. HDT did not participate in this appeal.
IV.
Issues
[20]
The issues before this Court are as follows:
1. Did the Judge err in concluding that Mr. Brown was a public servant
within the meaning of section 2 of the PSIA at the time he filed his
application for the ‘748 Patent?
2.
Did the Judge err in concluding that Mr. Brown’s
failure to disclose his public servant status at the time he filed his
application for the ‘748 Patent was an untrue and material allegation pursuant
to section 53 of the Patent Act?
V.
Standard of Review
[21]
The standard of review for questions of law is
correctness. Questions of fact and mixed fact and law in respect of which there
is no extricable question of law are reviewed on the standard of palpable and
overriding error (see Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R.
235 at paras. 7-37).
VI.
Analysis
A.
Did the Judge err in concluding that Mr. Brown
was a public servant within the meaning of section 2 of the PSIA at the time he
filed his application for the ‘748 Patent?
[22]
Mr. Brown submits that the Judge erred in
finding that he was a public servant within the meaning of section 2 of the
PSIA when he filed his application for the ‘748 Patent on October 8, 1999.
Essentially, Mr. Brown asserts that the definition of “public servant” in
section 2 of the PSIA must be interpreted in a broader context as to solely
include those who perform work or service in exchange for remuneration. As
such, Mr. Brown argues, since he was an unpaid member of the Canadian Forces’
Supplementary Reserve in 1999, he was not “employed” and thus could not be considered
a “member of the Canadian Forces” within the meaning of section 2 of the PSIA.
[23]
I cannot accept Mr. Brown’s contention. In my
view, the Judge properly concluded that Mr. Brown, as a member of the
Supplementary Reserve, was a “public servant” within the meaning of the PSIA
when he applied for the ‘748 Patent.
[24]
I note that in undertaking her statutory
interpretation, the Judge conducted a thorough bilingual review of the
statutory term “public servant” as used in section 2 of the PSIA in conformity
with the well-established principle that both versions of bilingual enacted legislation
are authoritative: “both must be read with care and
both must be considered in resolving interpretative issues” (Ruth
Sullivan, Sullivan on the Construction of Statutes, 6th ed. (Canada:
LexisNexis, 2014) at & 5.16 and 5.17 (Sullivan)).
[25]
On its face, the language of section 2 of the
PSIA and the specific use of “member of the Canadian
Forces” and “membre du personnel des Forces canadiennes” as opposed to “employed in a department” and “employée
dans un ministère”,
clearly evidence Parliament's intention to extend the definition of “public
servant” to more than members of the Canadian Forces who are “actively
employed”.
[26]
I further observe that the Judge's reasons are well-supported.
On the whole, in reading section 2 of the PSIA in both official versions, I can
only agree with the Judge that the wording is “sufficiently
clear in English and crystal clear in French” to support her finding and
I therefore agree with her statutory interpretation of “public servant” in
section 2 of the PSIA.
[27]
It follows that, for the purpose of the PSIA,
all members of the Canadian Forces are “public servants” whether they are in
the Regular Force or the Reserve Force. Indeed, the text of section 2 of the
PSIA makes it clear that members of the Canadian Forces do not need to be
employed or receive benefits to be included in the definition of “public
servant” for the purpose of the PSIA.
[28]
Therefore, I see no reason to interfere with the
Judge's conclusion in this regard.
B.
Did the Judge err in concluding that Mr. Brown’s
failure to disclose his public servant status at the time he filed his
application for the‘748 Patent was an untrue and material allegation pursuant
to section 53 of the Patent Act?
[29]
Having found that Mr. Brown was a public servant
under the PSIA, the Judge concluded that his failure to disclose his public
servant status as contemplated by the PSIA when he filed his application for the
‘748 Patent was an untrue material allegation for the purpose of section 53 of
the Patent Act.
[30]
The appellants and the intervenor argue that this
conclusion is wrong in law as nothing in the Patent Act requires that
Mr. Brown had to disclose his public servant status when he applied for the ‘748
Patent. The Crown disagrees and submits that a statutory interpretation of both
the PSIA and the Patent Act leads inescapably to the conclusion that Mr.
Brown’s failure to disclose his public servant status is a material untrue
allegation pursuant to section 53 of the Patent Act. In cross-appeal,
based on a highly strict, technical, and grammatical interpretation of section
53 of the Patent Act, the Crown further alleges that the Judge’s factual
finding that Mr. Brown made an untrue allegation that was material suffices to
void the ‘748 Patent pursuant to section 53 of the Patent Act and that,
as such, there is no additional requirement to prove wilful intent. The Crown further
submits that the Judge erred in stopping short of voiding the ‘748 Patent under
subsection 53(1) of the Patent Act.
[31]
The Judge correctly noted at paragraph 47 of her
reasons that the present matter raises the novel issue of the relationship
between section 4 of the PSIA and section 53 of the Patent Act in the
specific context of voiding a patent under section 53 of the Patent Act
as a result of a contravention of section 4 of the PSIA. I would further add
that this issue is decisive in determining what obligations Mr. Brown had as a
public servant pursuant to the PSIA and the Patent Act when he filed his
application for ‘748 Patent.
[32]
Having identified the crux of the matter, the
Judge then proceeded with her analysis as to whether Mr. Brown’s failure to
disclose his public servant status constituted a material untrue allegation
within the meaning of subsection 53(1) of the Patent Act. However, in
performing her analysis, the Judge short circuited a crucial step. Despite
acknowledging that the present matter raised the interaction between section 4
of the PSIA and section 53 of the Patent Act, the Judge failed to
properly conduct an analysis of this issue. A closer look at the interaction
between the PSIA and the Patent Act is therefore apposite at this
juncture.
[33]
The interaction between the PSIA and the Patent
Act has to be considered in accordance with general principles of
interpretation. Specifically, statutes that are enacted by the legislature that
deal with the same subject, in this case, patents, are presumed to be drafted
with one another in mind, so as to offer a coherent and consistent treatment of
the subject (Sullivan at &&15.25, 15.37). Furthermore, the words
of an Act are to be read in their entire context, in their grammatical and
ordinary sense harmoniously with the scheme of the Act, the object of the Act,
and the intention of Parliament (Rizzo and Rizzo Shoes Ltd.(Re),
[1988] 1 S.C.R. 27 at para. 21; also Canada Trustco Mortgage Co. v. Canada,
2005 SCC 54, [2005] 2 S.C.R. 601 at para. 10).
[34]
The Patent Act, unlike the Copyright
Act, R.S.C., 1985, c. C-42 (subsection 13(3)), does not address the issue
of ownership of patent rights in inventions made during the course of
employment. Given the silence of the Patent Act on this issue in the
context of a private employment relationship, the existence of an
employee-employer relationship will not necessarily disqualify an employee from
patenting an invention discovered in the course of employment. The employer can
nevertheless seek ownership of the intellectual property rights if it can
demonstrate that: (i) there is formal agreement between the employer and the
employee to the effect that the employer retains ownership of the intellectual
patent rights; or, (ii) the employee was hired for the express purpose of inventing
(Comstock Canada v. Electec Ltd., [1991] F.C.J. No. 987, 45
F.T.R. 241 (QL)).
[35]
However, in the context of a government
employment relationship, such as the one at issue, Parliament specifically enacted
the PSIA in 1954 to govern inventions developed by public servants as well as
the intellectual property rights that flow from the inventions. The PSIA, for
the greater part, remains unchanged to this day.
[36]
It is trite to say that the object of the PSIA is
to ensure that both inventions made and claimed by public servants as well as
their rights are vested in Her Majesty under certain conditions. Section 3 of
the PSIA entitled “Inventions Vested in Her Majesty” is aptly descriptive and states
the following:
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3. The following inventions,
and all rights with respect thereto in Canada or elsewhere, are vested in Her
Majesty in right of Canada, namely,
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3. Sont dévolues à Sa Majesté du
chef du Canada, avec tous les droits y afférents au Canada ou à l’étranger
:
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(a) an
invention made by a public servant while acting within the scope of his
duties or employment, or made by a public servant with facilities, equipment
or financial aid provided by or on behalf of Her Majesty; and
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a) toute
invention faite par un fonctionnaire soit dans l’exercice ou le cadre de ses
attributions, soit grâce à des installations, du matériel ou une aide
financière fournis par Sa Majesté ou pour le compte de celle-ci;
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(b) an
invention made by a public servant that resulted from or is connected with
his duties or employment. [My emphasis]
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b) toute
invention faite par un fonctionnaire et découlant de ses attributions, ou s’y
rattachant. [Mon soulignement]
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[37]
Accordingly, Parliament has imposed on public
servant-inventors a duty to disclose their inventions to the appropriate
minister (section 4 of the PSIA). Following a disclosure of the invention by
the public servant-inventor and given the nature of the invention, the
appropriate minister can determine whether an invention is indeed vested in Her
Majesty according to the PSIA. Hence, the appropriate minister can: (i) file an
application for a patent invention vested in Her Majesty by the PSIA; or, (ii)
waive, abandon or transfer all or any of its rights in respect of that
invention (sections 5, 6 and 8 of the PSIA). In order for the appropriate
minister to elect the best course of action and fulfil his obligations under
the PSIA, the disclosure of the invention by the public servant is paramount.
[38]
As for the Patent Act, it stands as a
complete statutory scheme regarding patents (Commissioner of Patents v. Fabwerks
Hoechst Aktiengeselschaft Vormals Meister Lucius & Bruning (1963), [1964]
S.C.R. 49 at p. 57, 41 C.P.R. 9 (QL); Apotex Inc. v. Sanofi-Synthelabo
Canada Inc., 2008 SCC 61, [2008] 3 S.C.R. 265 at para. 12; Sanofi-Aventis
v. Apotex Inc., 2013 FCA 186, [2015] 2 F.C.R. 644 at para. 34). The
Commissioner of Patents has no discretion to not grant a patent if all the
requirements set forth under the Patent Act are met. Subsection 27(1) of
the Patent Act is clear to that effect:
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27. (1) The Commissioner shall grant a patent for an
invention to the inventor or the inventor’s legal representative if an
application for the patent in Canada is filed in accordance with this Act and
all other requirements for the issuance of a patent under this Act are met.
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27. (1) Le commissaire accorde un
brevet d’invention à l’inventeur ou à son représentant légal si la demande de
brevet est déposée conformément à la présente loi et si les autres conditions
de celle-ci sont remplies.
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[39]
Subsection 27(2) of the Patent Act sets
out the content of a patent application which must contain a petition and a
specification of the invention:
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27. (2) The prescribed application fee must be paid and the
application must be filed in accordance with the regulations by the inventor
or the inventor’s legal representative and the application must contain a
petition and a specification of the invention.
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27. (2) L’inventeur ou son représentant
légal doit déposer, en la forme réglementaire, une demande accompagnée d’une
pétition et du mémoire descriptif de l’invention et payer les taxes
réglementaires.
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[40]
The regulations referred to in subsection 27(2)
of the Patent Act are found in the Patent Rules, S.O.R./96-423.
[41]
In connection with the petition required by
subsection 27(2) of the Patent Act, Rule 77 of the Patent Rules
provides that it “shall follow the form and the
instructions for its completion set out in Form 3 of Schedule 1 …”. Form
3 is entitled “Petition for Grant of Patent” and specifically refers to
subsection 27(2) of the Patent Act. In the present case, the appellant, Mr. Brown,
used this form on the advice of his patent agent when he filed his application
for the ‘748 Patent. Neither Form 3, nor its instructions, indicates that an
individual filing a patent application has an obligation to disclose his or her
public servant status. Form 3 and its instructions are entirely silent in this
respect.
[42]
However, the Public Servants Inventions
Regulations, C.R.C., c. 1332 set forth a number of forms which have to be
used by a public servant filing an application for a patent, more particularly
forms 4 to 7. As a public servant, Mr. Brown would have had to make use of these
forms to fulfil his obligation pursuant to subsection 4(1) of the PSIA when he
applied for the ‘748 Patent, as per section 11 of the Public Servants
Inventions Regulations.
[43]
A comparison of the forms under the Patent
Rules and the forms under the Public Servants Inventions Regulations
reveal a lack of consistency and hence a conflict regarding the required forms.
Indeed, Rule 77 and Form 3 of the Patent Rules do not refer to the
obligation to disclose a public servant status, whereas Forms 4 to 7 of the Public
Servants Inventions Regulations expressly requires that one’s public
servant status be disclosed.
[44]
Against this apparent conflict and lack of
consistency between the Patent Rules and the Public Servants
Inventions Regulations, a closer look at their effect is required. Significantly,
a distinction must be drawn between the Patent Rules on the one hand and
the Public Servants Inventions Regulations on the other. Pursuant to
subsection 12(2) of the Patent Act, the former have the same force and
effect as if they had been enacted in the Patent Act itself:
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12. (2) Any rule or regulation made by the Governor in Council has
the same force and effect as if it had been enacted herein.
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12. (2)
Toute règle ou tout règlement pris par le gouverneur en conseil a la même
force et le même effet que s’il avait été édicté aux présentes.
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[45]
The PSIA contains no similar provision and its regulations
are therefore to be considered subordinate legislation. It follows that despite
the apparent conflict and lack of consistency between the Patent Rules and
the Public Servants Inventions Regulations, the former carry greater
weight and therefore prevail over the later. This supports the conclusion that
the failure to disclose one’s status as a public servant does not invalidate a
patent given that such disclosure is not required under either the Patent
Act or its Rules.
[46]
Looking back to past amendments to the Patent
Act and the PSIA also supports the conclusion that Parliament did not
intend that a patent could be void for a failure to disclose public servant
status.
[47]
For instance, section 47 of the Patent Act
in the Revised Statutes of 1952 under the heading “Inventions by Servants”
addressed the rights and obligations of both public servant inventors and the
Crown. At that time, no obligation was placed upon a public servant applying
for a patent to disclose his or her public servant status.
[48]
In 1954, section 47 of the Patent Act (1952)
was repealed altogether and the PSIA was enacted. In so doing, Parliament also
enacted specific penalties under the PSIA in relation to the failure to
disclose public servant status, including fines and/or imprisonment. Such
penalties are not expressed as relating to or in any way impacting upon the validity
of a patent issued if a public servant-inventor failed to comply with the PSIA.
It is equally worthy of note that the Patent Act, likewise, does not
impose any penalties for a failure to disclose public servant status.
[49]
As a result, this review of the interaction
between the PSIA and the Patent Act leads me to the following
conclusion. Mr. Brown had the obligation to disclose his public servant status
under subsection 4(2) of the PSIA and, in failing to do so, he became subject
to penalties under section 11 of the PSIA. However, he had no such obligation
under the Patent Act when he filed his application for the ‘748 Patent. Mr.
Brown met the requirement under the Patent Act and the Patent Rules
and disclosed an invention that was determined by the Patent Office to be new,
not obvious and useful. The Patent Act, as a complete statutory scheme,
does not in any way require that an applicant disclose public servant status,
nor does it set forth any penalties for not doing so. The PSIA itself does not
even refer to the invalidation of a patent as a consequence of failing to
disclose public servant status.
[50]
It was thus an error for the Judge to conclude
that Mr. Brown’s failure to disclose his public servant status at the time he
filed his application for the ‘748 Patent was an untrue and material allegation
pursuant to subsection 53(1) of the Patent Act and cannot affect the
validity of the ‘748 Patent. Regardless of the disclosure obligations under the
PSIA, since Mr. Brown complied with section 27 of the Patent Act, more
specifically with the Patent Rules and its Forms, section 53 could not
be triggered in the circumstances. However, the question as to whether the
invention and the ownership of the ‘748 Patent intellectual property rights are
vested in Her Majesty pursuant to subsections 4(1) and 4(2) of the PSIA,
remains open.
[51]
I would allow the appeal with costs before this
Court and the Federal Court and I would dismiss the Crown’s cross-appeal with
costs. I would set aside the Judge’s judgment and, rendering the judgment that
the Judge should have rendered, I would dismiss the Crown’s motion for summary
judgment in its entirety.
“Richard Boivin”
“I agree
Wyman W. Webb J.A.”
“I agree
Yves de Montigny J.A.”
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