Date:
20130930
Docket:
T-948-12
Citation: 2013
FC 1001
Ottawa, Ontario,
September 30, 2013
PRESENT: The
Honourable Mr. Justice Roy
BETWEEN:
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F. HOFFMANN-LA ROCHE AG
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Applicant
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and
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THE COMMISSIONER OF PATENTS
and
THE ATTORNEY GENERAL OF CANADA
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Respondents
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REASONS FOR
JUDGMENT AND JUDGMENT
[1]
This
is an application that is rather odd. It is presented by the applicant as “an
application for an Order pursuant to section 20 of the Federal Courts Act,
as well as other sections of that Act which this Honourable Court may deem
appropriate, and subsection 53(2) of the Patent Act”.
[2]
It
is unclear how section 20 and subsection 53(2), on their own, can be of
assistance in the circumstances. Section 20 of the Federal Courts Act,
RSC 1985, c F-7, provides this Court with jurisdiction in the area of
intellectual property, including patents, in some cases exclusively and in
others concurrently. It does not deal with remedies and how to get them. As for
section 53 of the Patent Act, RSC 1985, c P-4, it does not provide for a
procedural support either. It is substantive in nature, in that it voids
patents in certain circumstances and provides for exceptions. The applicant
invokes ss 53(2) alone. The section reads:
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LEGAL
PROCEEDINGS IN RESPECT OF PATENTS
Void in certain cases, or valid only for parts
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.
Exception
(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.
Copies of
judgment
(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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PROCÉDURES
JUDICIAIRES RELATIVES AUX BREVETS
Nul en
certains cas, ou valide en partie seulement
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.
Exception
(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.
Copies du jugement
(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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[3]
It
is in my view significant how the matter was framed by the applicant. We are
not here dealing with an action for impeachment (s 60 Patent Act) or an
action for infringement (s 54 Patent Act), where the issue of the
validity of a patent would be debated between parties whose interest diverges.
[4]
Rather,
F. Hoffmann-La Roche AG, the applicant, brings an application that appears to
be sui generis, and based not on s 53, but rather only on ss 53(2). There
is no allegation that its patent is invalid, there is no party adverse in
interest that challenges the position put forward by the applicant with respect
to the nature of the error alleged by the applicant to have been made in its
own patent or, for that matter, that makes allegations against the patent. It
seeks as a remedy to either obtain a “declaration amending page 2 of the
disclosure of Canadian Patent No. 2,103,324 … ” (the ‘324 Patent) or a
“declaration striking a portion of the disclosure on page 2 of Canadian Patent
No. 2,103,324 …”.
[5]
The
respondents to this application, the Commissioner of Patents and the Attorney
General of Canada, declare their interest in this application to be limited to
the availability of ss 53(2) of the Patent Act in the circumstances. They
take no view on the alleged error. There is no one arguing that the acknowledged
error by the applicant constitutes a reason to declare the ‘324 Patent void. If
such an argument exists, it has not been made before this Court. It is in that
sense that it has been suggested by the respondents that this use of ss 53(2)
would become an ex parte mechanism if the construction the applicant
wishes to put on ss 53(2) were to be endorsed by the Court.
[6]
For
the reasons that follow, I have concluded that the application fails. The
narrow reason, one to which the Court ought to confine itself, is that the
applicant did not meet the minimal requirements of s 53 of the Patent Act.
I will then offer some more general observations on the use that is proposed of
that section.
Facts
[7]
I
will confine myself to the facts that are directly relevant to the application
currently before the Court. Suffice it to say that the validity of the ‘324
Patent was once challenged, but it is not the case any more (Hoffmann-La
Roche Limited v Teva Canada Limited and the Minister of Health and F.
Hoffmann-La Roche AG, File No T-1381-11, Prohibition Order issued on
consent on April 3, 2012).
[8]
The‘324
Patent is entitled N-OXYCARBONYL SUBSTITUTED 5-DEOXY-5-FLUORCYTIDINES. It
contains claims to compounds which have anti-tumor effects as well as to
processes to make the compounds.
[9]
The
‘324 Patent was filed on November 17, 1993 and it will therefore expire on
November 17, 2013 (s 44 Patent Act). The difficulty stems from one
paragraph of the ‘324 Patent. The whole paragraph reads:
USP 4,966,891 discloses
precursors of 5-FU which are improved in the above mentioned aspect of
bioconversion efficiency and toxicities. They are converted to 5'-deoxy-5-fluorocytidine
(5'-DFCR) by acylamidases, to 5'-deoxy-5-fluorouridine (5'-DFUR) by cytidine
deaminase, and then to 5-FU by pyrimidine nucleotide phosphorylase in vivo
which is preferentially localized in the liver, small intestin and tumor
tissues. During intensive studies on the pharmacokinetic profiles of the
precursors of 5-FU, particularly of N4-(substituted-oxycarbonyl)-5'-deoxy-5-fluorocytidine
derivatives, the inventors found that certain specific precursors are
selectively converted into 5'-DFCR by an acylamidase isozyme that is
preferentially located at the liver but not the other organs of humans, and exhibited
more improved pharmacokinetic profiles than the other compounds tested. The
further studies based on the above findings enabled the inventors of the
present invention to identify that the specific N4-(substituted-oxycarbonyl)-5'-deoxy-5-fluorocytidine
derivatives (hereinafter referred to as N4-(substituted-oxycarbonyl)-5'-DFCR)
represented by the above mentioned general formula (I) have selectively
improved pharmacokinetic profiles in monkeys, viz., 4 to 7 times higher
maximum concentration (Cmax) of 5'-DFUR and 4 times larger
higher area under the curve (AUC) of 5'-DFUR in blood than the other
compounds, and less intestinal toxicity, and thus completed the present
invention.
I have underlined the words that
the applicant finds problematic.
[10]
The
concern the applicant has is to the effect that an allegation that could be
made is that ‘324 Patent overstated the promised utility of all the claimed
compounds.
[11]
The
difficulty turns, in the view of the applicant, on one abbreviation.
[12]
That
abbreviation is “viz.”. Black’s Law Dictionary, 7th edition,
confirms that it is short for the Latin word “videlicet”, which means
“namely; that is to say”. The Canadian Oxford Dictionary adds that “viz.”
is usually used for introducing a gloss or an explanation. The use of “viz.” could
therefore entail that the reference to “4 to 7 times higher maximum
concentration (Cmax) of 5'-DFUR and 4 times larger higher area under
the curve (AUC) of 5'-DFUR in blood than the other compounds” means that the
patented compounds have these kinds of improvement.
[13]
The
applicant recognizes that if “viz.” is taken to mean “namely; that is to say”, this
is not accurate. At best, if a Latin abbreviation had to have been used, it
should have been preferable to use “e.g.”, an abbreviation for “exempli
gratia”, or “for example”. It is not that the compounds have not improved
pharmacokinetics profiles over the prior commercial candidate galocitabine.
Indeed, they all did and some have shown the kind of improvement described
following the abbreviation “viz.”. It is just that they did not all reach that
plateau. Only some have “4 to 7 times higher maximum concentration (Cmax)
of 5'-DFUR and 4 times larger higher area under the curve (AUC) of 5'-DFUR in
blood than the other compounds”.
[14]
Actually,
the same document disclosed accurately the pharmacokinetic profiles in monkeys.
The applicant argues, convincingly in the absence of a counter-argument, that
the data accurately disclosed would simply not support the use of the
abbreviation “viz.”. People versed in science would evidently rely on the data,
not on some inadvertent statement. In a word, the use of “viz.” was a mistake
because it overstates the case. But, the applicant argues, the mistake is clearly
involuntary because the data offered by the applicant does not support the
contention.
[15]
As
pointed out, the respondents did not take a position on the facts of this
application. They only intervene for the purpose of arguing that ss 53(2) of
the Patent Act is not open to the applicant.
Arguments
[16]
The
applicant concedes that the impetus for bringing the application comes, in
part, from one paragraph in this Court’s decision in Ratiopharm Inc. v Pfizer
Ltd, 2009 FC 711, 350 FTR 250 [Ratiopharm]. The paragraph reads:
[201] This effort in
distancing oneself from the patent draft and placing blame on a trainee not
very competent in chemical matters, who now cannot be found, has left this
Court with the clear impression that Pfizer knew that there were problems with
the patent as drafted. That being the case, Pfizer has taken no steps to do
anything about it save to mount a vigorous defence to this action.
[17]
The
argument seems to boil down to saying that if a patentee can be criticized for
not having taken action to correct a mistake a patentee would know about, there
has to be found in the statute a provision that would allow for such remedy. The
applicant is familiar with the comment made in the appellate decision in Ratiopharm
discussing, in one paragraph, the ss 53(2) defence to the action as “confined
to the unique and particular circumstances of this matter. It has limited, if
any, value as a precedent” (2010 FCA 204). Nevertheless, the applicant still
contends that it must follow a precautionary principle and that there ought to
be a way to act proactively.
[18]
The
concerns are amplified, it seems, by the evolving jurisprudence on the promise
of the patent which creates, in the view of the applicant, uncertainty that
could be resolved through its reading of ss 53(2) of the Patent Act.
[19]
Subsection
53(2) is identified as a provision that could be construed as offering a remedy
in a case where the patentee has simply been mistaken. The applicant considers
the purpose of ss 53(2) as being “to allow” the Court “to correct a patent that
contains an involuntary error to ensure the patent is held valid for the
invention which the patentee is found to be entitled” (paragraph 45, applicant’s
Memorandum of Fact and Law). There is no need for an adversarial proceeding
argues the applicant. It can make an application to leave words struck from a patent
without the patent being challenged. No authority is offered in support of that
proposition.
[20]
There
are two remedies that are available to the patentee who wishes to amend a
patent: the reissuing of a patent (s 47 Patent Act) and the disclaimer
of the parts of the patent the patentee does not claim to hold by virtue of the
patent (s 48 Patent Act). The correction of clerical errors, pursuant to
s 8 of the Patent Act, does not appear to be a remedy the applicant
would seriously consider. Sections 47 and 48 read:
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REISSUE OF PATENTS
Issue of new or amended patents
47. (1) Whenever any
patent is deemed defective or inoperative by reason of insufficient
description and specification, or by reason of the patentee’s claiming more
or less than he had a right to claim as new, but at the same time it appears
that the error arose from inadvertence, accident or mistake, without any
fraudulent or deceptive intention, the Commissioner may, on the surrender of
the patent within four years from its date and the payment of a further
prescribed fee, cause a new patent, in accordance with an amended description
and specification made by the patentee, to be issued to him for the same
invention for the then unexpired term for which the original patent was
granted.
te:Effect of new patent
(2) The surrender referred to in
subsection (1) takes effect only on the issue of the new patent, and the new
patent and the amended description and specification have the same effect in
law, on the trial of any action thereafter commenced for any cause
subsequently accruing, as if the amended description and specification had
been originally filed in their corrected form before the issue of the
original patent, but, in so far as the claims of the original and reissued
patents are identical, the surrender does not affect any action pending at
the time of reissue or abate any cause of action then existing, and the
reissued patent to the extent that its claims are identical with the original
patent constitutes a continuation thereof and has effect continuously from
the date of the original patent.
Separate patents for separate parts
(3) The Commissioner may entertain
separate applications and cause patents to be issued for distinct and
separate parts of the invention patented, on payment of the fee for a reissue
for each of the reissued patents.
DISCLAIMERS
Patentee may disclaim anything included in patent by
mistake
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.
Form and attestation of disclaimer
(2) A disclaimer shall be filed in the
prescribed form and manner.
(3) [Repealed,
1993, c. 15, s. 44]
Pending suits not affected
(4) No disclaimer affects any action
pending at the time when it is made, unless there is unreasonable neglect or
delay in making it.
Death of patentee
(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.
Effect of disclaimer
(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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REDÉLIVRANCE DE BREVETS
Délivrance de brevets nouveaux ou rectifiés
47. (1) Lorsqu’un brevet
est jugé défectueux ou inopérant à cause d’une description et spécification
insuffisante, ou parce que le breveté a revendiqué plus ou moins qu’il
n’avait droit de revendiquer à titre d’invention nouvelle, mais qu’il
apparaît en même temps que l’erreur a été commise par inadvertance, accident
ou méprise, sans intention de frauder ou de tromper, le commissaire peut, si
le breveté abandonne ce brevet dans un délai de quatre ans à compter de la
date du brevet, et après acquittement d’une taxe réglementaire additionnelle,
faire délivrer au breveté un nouveau brevet, conforme à une description et
spécification rectifiée par le breveté, pour la même invention et pour la
partie restant alors à courir de la période pour laquelle le brevet original
a été accordé.
Effet du nouveau brevet
(2) Un tel abandon ne prend effet qu’au
moment de la délivrance du nouveau brevet, et ce nouveau brevet, ainsi que la
description et spécification rectifiée, a le même effet en droit, dans
l’instruction de toute action engagée par la suite pour tout motif survenu
subséquemment, que si cette description et spécification rectifiée avait été
originalement déposée dans sa forme corrigée, avant la délivrance du brevet
original. Dans la mesure où les revendications du brevet original et du
brevet redélivré sont identiques, un tel abandon n’atteint aucune instance
pendante au moment de la redélivrance, ni n’annule aucun motif d’instance
alors existant, et le brevet redélivré, dans la mesure où ses revendications
sont identiques à celles du brevet original, constitue une continuation du
brevet original et est maintenu en vigueur sans interruption depuis la date
du brevet original.
Brevets distincts pour éléments distincts
(3) Le commissaire peut accueillir des
demandes distinctes et faire délivrer des brevets pour des éléments distincts
et séparés de l’invention brevetée, sur versement de la taxe à payer pour la
redélivrance de chacun de ces brevets redélivrés.
RENONCIATIONS
Cas de renonciation
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.
Forme et attestation de la renonciation
(2) L’acte de renonciation est déposé
selon les modalités réglementaires, notamment de forme.
(3) [Abrogé,
1993, ch. 15, art. 44]
Sans effet sur les actions pendantes
(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.
Décès du breveté
(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.
Effet de la renonciation
(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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[21]
Neither
one of the remedies can be used, argues the applicant. The reissue is available
only within the first four years from the date the patent was issued. It does
not want to avail itself of the disclaimer provision because “(F)iling a
disclaimer such that only the compounds which achieve both a 4-7 times
improvement for Cmax and 4 times improvement for AUC would result in
disclaiming all but the best compounds, even though all the compounds are new,
useful and unobvious. A disclaimer would deprive the inventors of the fruits of
their labour and deny them the ability to claim what they in good faith
invented” (paragraph 72, applicant’s Memorandum of Fact and Law).
[22]
In
essence, the applicant contends that one remedy is unavailable because it is
limited in time. It does not however explain why a remedy denied in legislation
through a limited time period can morph into one where there is no such
limitation. The only difference would be that one is issued by the Commissioner
of Patents and the other by the Court, in spite of the fact that the test in ss
53(2) is substantially the same as in s 47. As for the disclaimer remedy, it is
said to be too drastic.
[23]
In
the end, the applicant rests its case on one subsection. Because legislation
must be deemed remedial (s 12 Interpretation Act, RSC1985, c I-21), it
seems to argue that the lack of a remedy in the Patent Act makes it
possible to use ss 53(2) to deal with the mistake that was committed many years
ago.
[24]
The
respondents take issue with the use that the applicant seeks to make of ss
53(2) of the Patent Act. They argue that ss 53(2) serves a limited
purpose by providing a patentee with a defence in cases where the patent may be
declared void. A different reading of the subsection renders meaningless the
four-year limit on patent reissue. The proposed interpretation of ss 53(2)
creates an ex parte mechanism allowing patentees to amend the scope of
patents where none exists. Not only is a proper reading of s 53 a complete
bar to the interpretation given by the applicant to ss 53(2), but the
scheme of the Patent Act does not allow for the reading the applicant
wants to give ss 53(2).
Analysis
[25]
The
starting point of the analysis has to be s 53 of the Patent Act. The
applicant has sought to focus on ss 53(2); it claims that its purpose is to
allow the correction of a patent that contains an involuntary error. With
respect, I cannot agree.
[26]
A
plain reading of the section in its entirety suggests strongly that subsection
(2) must be read together with subsection (1). One cannot be divorced from the
other. The reference to subsection (1) in the English version of subsection (2)
makes it clear that it is where a patent would otherwise be declared void that
the exception could be of assistance.
[27]
Section
53 has been part of our law since at least 1872. Section 27 of An Act respecting
Patents of Invention, (1872) 35 Victoria, cap. XXVI, reads:
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CAP. XXVI.
An Act respecting
Patents of Invention.
NULLITY, IMPEACHMENT AND
AVOIDANCE OF PATENTS.
Patent
may be declared void in certain cases, or valid only for part.
27. A patent shall
be void, if any material allegation in the petition or declaration of the
applicant be untrue, or if the specifications and drawings contain more or
less than is necessary for obtaining the end for which they purport to be
made, such omission or addition being wilfully made for the purpose of
misleading; but if it shall appear to the Court that such omission or
addition is simply an involuntary error, and it is proved that the patentee
is entitled to the remainder of his patent pro tanto, the Court shall render
a judgment in accordance with the facts, and determine as to costs, and the
patent shall be held valid for such part of the invention described; and two
office copies of such judgment shall be furnished to the Patent Office by the
patentee, one to be registered and to remain of record in the office, and the
other to be attached to the patent, and made a part of it by a reference.
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CAP. XXVI.
Acte concernant les
Brevets d’Invention.
NULLITE, CONTESTATION ET
DÉCHÉANCE DES BREVETS
Le
brevet pourra être annulé en tout ou en partie, en certains cas.
27. Le brevet
sera nul, si la requête ou la déclaration de l’impétrant contient quelque
allégation importante qui soit fausse, ou si la spécification et les dessins
contiennent plus ou moins qu’il ne sera nécessaire pour atteindre le but dans
lequel on les fera, cette addition ou cette omission étant faite
volontairement dans l’intention d’induire en erreur; mais s’il appert au
tribunal que cette omission ou cette addition est simplement une erreur involontaire,
et qu’il soit prouvé que le breveté a droit au reste de son brevet pro
tanto, le tribunal rendra jugement suivant les faits, et prononcera sur
les frais, et le brevet sera réputé valable pour cette partie de l’invention
décrite; et le breveté fournira au bureau des brevets deux copies de ce
jugement, dont l’une sera enregistrée et gardée en dépôt au bureau, et
l’autre sera annexée et, par une note de renvoi, incorporée au brevet.
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[28]
As
passed by Parliament more than one hundred and forty years ago, one is struck
by the flow of the provision. More modern drafting makes a greater use of
subsections and paragraphs. Section 27 of the 1872 Statute suggests that the
provision, read as a whole, does not contemplate a remedy other than where the
patent risks being void. The remedy is not a stand alone, capable of being used
in other circumstances than those found in the section.
[29]
Central
to the applicant’s argument is the view that ss 53(2) can be considered as a
stand alone remedy. The patent does not need to be in jeopardy of being
declared void for ss 53(2) to kick in. The process is initiated by the patentee
itself. Indeed, in the instant case the applicant truly does not concede that
its patent is void and no one is making that argument.
[30]
The
legislative evolution of the provision would suggest that the subsection cannot
be read alone. As Ruth Sullivan explains in Sullivan and Driedger on The
Construction of Statutes, 4th ed. (Toronto: Butterworths, 2002),
at page 476:
Where only formal change is intended, the amended
version of the legislation has the same meaning as the previous version. This
means that the previous version may be relied on to help clarify the
connotation and application of the amended version.
[31]
In
spite of its long existence, the applicant acknowledges that ss 53(2) may not
have been used proactively before or in the fashion it is now proposing. Rather,
it has been used only as a defence to a claim under ss 53(1). The
respondents argue that the proposed use is unprecedented. Neither have I been
able to find a precedent that would put such a construction on the subsection
or a learned author who would have suggested that the subsection could be used
for the purpose proposed by the applicant.
[32]
Once
s 53 is read as a whole, it becomes apparent that, in order to qualify for
the remedy of ss 53(2), the patentee must first fall under ss 53(1). It was
also true in 1872. When read in context with the rest of section 53, but also
in the broader context of the Patent Act as a whole, ss 53(2) cannot
be taken in isolation for the purpose of creating a remedy. As has been said
and repeated so many times:
Today there is only one principle or approach,
namely, 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.
Elmer A. Driedger, The Construction of Statutes
(Toronto: Butterworths, 1974) at 67
The same approach was nicely
articulated in the context of intellectual property cases in Re: Sound v
Motion Picture Theatre Associations of Canada, 2012 SCC 38, [2012] 2 SCR
376:
[32] This Court has
reiterated on many occasions that the object of statutory interpretation is to
establish Parliament’s intent by reading the words of the provisions in
question in their entire context and in their grammatical and ordinary sense,
harmoniously with the scheme of the Act, the object of the Act and the
intention of Parliament (Rizzo & Rizzo Shoes Ltd. (Re), [1998] 1
S.C.R. 27, citing E.A. Driedger, Construction of Statutes (2nd ed.
1983), at p. 87).
[33] Although statutes
may be interpreted purposively, the interpretation must nevertheless be
consistent with the words chosen by Parliament. Moreover, the legislative
history can be of great assistance in discerning Parliament’s intent with
respect to a particular wording in a statute.
To put it bluntly, the words of the
subsection count, the context in which they are found counts and the scheme of
the Act counts.
[33]
The
introductory words of ss 53(2) cannot be ignored. Not only do they refer
directly to ss 53(1), but that reference also brings back the cases in
which a patent could be found to be void. This is evidently a kind of relief
that is meant to be narrow.
[34]
Thus
it does not suffice that an involuntary error has been alleged for the remedy
in ss 53(2) to be available. It must be an error that relates back to ss 53(1).
That subsection declares that a patent will be void if some conditions are met:
a.
if any material allegation in the petition is untrue, or
b.
if the specification and drawings contain more or less for
obtaining the end for which they purport to be made.
Assuming that either one of those
propositions is proven, the patent will be void if the omission or addition is
wilfully made for the purpose of misleading. It is only if these conditions are
met that a remedy could be found through the operation of ss 53(2).
[35]
In
the case at hand, there is no allegation before this Court that the ‘324 Patent
is void. Quite the opposite. The applicant was careful to avoid even suggesting
that the error was with respect to a material allegation in the petition or
that the specifications contain more or less than is necessary. There is no one
before this Court to actually argue that the recognized error actually
qualifies under the conditions to render a patent void.
[36]
As
a result, the applicant does not meet the basic requirements for the
application of ss 53(2).
[37]
There
are other indicia that the application of ss 53(2) would be problematic in this
case as the relief provided for in ss 53(2) cannot easily apply in the
circumstances. Subsection 53(2) provides that the patentee continues to be
“entitled to the remainder of his patent”. As pointed out by the respondents,
that suggests that, in the first place, it has been shown that there was a
material allegation that was shown to be untrue or that the specifications
contain more or less than is necessary such that there is an impact on the
patent. In this case, not only does the applicant not reckon that the patent
may be in any kind of jeopardy, but no one before this Court seeks to make that
case. Here, the applicant merely wants for those words in the patent that
follow “viz.” to be struck from a portion of the disclosure.
[38]
The
applicant speaks in terms of amending its patent. Actually, that is not the
remedy provided for in ss 53(2). Once it is established that the error was
involuntary, “the patent shall be held valid for that part of the invention
described to which the patentee is so found to be entitled”. As appears plain,
ss 53(2) finds application to save that which would otherwise be void. It is
not concerned with amendments to correct an involuntary error that would not,
in any case, cause the patent to be void, as is contended by the applicant.
[39]
Furthermore,
the heading preceding s 53, “Legal Proceedings in Respect of Patents”,
suggests that some proceedings exist that bring into play s 53. Thus the
issue of the patent’s voidness, which arises during legal proceedings, can be
made the subject of one exception under ss 53(2). The presence of the
heading is obviously not determinative of the issue, but its use casts some
light on the meaning of the provision to which it relates (see Sullivan and
Driedger, supra, at pages 305 and following).
[40]
The
creation of a new remedy, as proposed by the applicant, also changes the
balance found in the Patent Act. Because the applicant cannot rely on s
47 to reissue its patent given that the remedy is limited in time, and because
it does not want to use the disclaimer provision (s 48) given that it finds it too
drastic in the circumstances, it wants for the purpose of ss 53(2) to be recast
as “to allow” the Court “to correct a patent that contains an involuntary error
to ensure the patent is held valid for the invention which the patentee is
found to be entitled” (paragraph 45, applicant’s Memorandum of Fact and Law).
As a matter of policy, Parliament has chosen to limit remedies that can be
initiated by a patentee to three. The reissue under s 47, the disclaimer
under s 48 and the correction of clerical errors under s 8. These are
the circumstances where a remedy sought by a patentee can be self-initiated.
Section 53 can be used, on its face, where a patent would be void if the
conditions of ss 53(1) are met, if it were not for ss 53(2).
[41]
In
spite of the able argument put forth by counsel for the applicant, I fail to
see how the purpose of that provision can be recast without regard for the full
context, which includes ss 53(1). The remedy in ss 53(2) is contemplated by
Parliament, and appears to have been so since at least 1872, when a patent is
in jeopardy because of a material allegation that is untrue or the
specification contains more or less than is necessary. Such is not the case in
the scenario offered by the applicant. Accordingly, the application must fail
and this suffices to dispose of the matter.
[42]
I
wish to add a few observations. The Attorney General argued his case, in view
of his limited interest in the matter, on the basis that not only is the
application of ss 53(2) argued for by the applicant unprecedented, but also
that the time limitation for the reissue of a patent is significant. Section 47
(reissue) is the mechanism provided in law. The Attorney General argues that
this new application of s 53 would render s 47 meaningless.
[43]
I
would not have readily concluded that s 47 is necessarily, without more, rendered
meaningless by that kind of new remedy. To my way of thinking though, allowing
an amendment to a patent under judicial supervision is a policy choice that can
be made with proper safeguards. But the creation of safeguards is the more
difficult issue.
[44]
As
pointed out by the Attorney General, allowing these kinds of ex parte
applications could defeat imminent litigation. The section provides that the
exception of ss 53(2) applies to cases where an “omission or addition
referred to in subsection (1) was an involuntary error”; but who will argue
that it was not an involuntary error? Indeed the balance of the Act would
necessarily be altered. If a remedy that goes beyond what currently exists is
to be included in the Patent Act, a framework including procedural
guarantees and a determination of the scope of the remedy might well have to be
created. With respect, that is for Parliament to make those policy
determinations. If consequences of a profound nature are to be considered, it
ought to be done in Parliament.
[45]
The
impetus for the application comes from the words of my colleague Justice Hughes
in Ratiopharm, above at paragraph 15. No doubt pronouncements of that
kind from such an authority carry weight. However, as noted, the Federal Court
of Appeal chose to leave the comments as “confined to the unique and particular
circumstances” and not carrying precedential value. At any rate, I did not see
in the comments an invitation to read ss 53(2) in isolation of ss 53(1) and to
change the true scope of the provision.
[46]
Finally,
the creative interpretation that the applicant tried to put on ss 53(2) ran
into some difficulties from a procedural standpoint. The application is made
under section 20 of the Federal Courts Act, which is a provision
granting jurisdiction, and ss 53(2) of the Patent Act, and other
sections of the Federal Courts Act as may apply. The applicant tried to
argue that the procedural vehicle of an application is available, given that
there are no infringement or impeachment proceedings, or for that matter any
proceeding, pending.
[47]
However,
the real issue is rather whether ss 53(2) can be read independently of the rest
of s 53, such that some sui generis motion can be launched.
Subsection 53(2) is, for sure, remedial; but it provides a remedy once ss 53(1)
is otherwise properly engaged. It appears to be meant as a shield, not a sword.
The procedural difficulty disappears once the section is properly read as a
whole and in context. Once appropriate legal proceedings have been launched,
s 53 can be properly engaged. That procedural difficulty is a further
manifestation that we are faced with the proverbial square peg in a round hole.
JUDGMENT
THIS
COURT’S JUDGMENT is that the application, under section 20 of
the Federal Courts Act and subsection 53(2) of the Patent Act,
and other sections of the Federal Courts Act, for a declaration amending
page 2 of the disclosure of Canadian Patent No. 2,103,324 or, in the
alternative, for a declaration striking a portion of the disclosure on page 2
of Canadian Patent No. 2,103, 324, as may apply, is dismissed. There will
not be any costs awarded.
“Yvan Roy”
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