Federal Appeal


Industrial and Intellectual Property

Patents
Judge failed to properly conduct analysis of interaction between s. 4 of Public Servants Inventions Act (Can.) and s. 53(1) of Patent Act (Can.)

Individual plaintiff was enrolled in Canadian Forces’ Regular Force and following his retirement, he was placed in Reserve Force. Individual plaintiff founded plaintiff company and applied for patent. Plaintiffs brought proceedings for patent infringement. Crown sought dismissal of claim on basis that individual plaintiff was member of Canadian Forces when he filed patent and breached statutory obligations under s. 4 of Public Servants Inventions Act (Can.) (PSIA) by failing to disclose public servant status. Judge found that individual plaintiff was public servant for purposes of PSIA when he applied for patent and did not disclose public servant status as required. Judge found that omission constituted material untrue allegation for purposes of s. 53(1) of Patent Act (Can.) (PA). Plaintiffs appealed. Appeal allowed. Judge properly concluded that individual plaintiff was public servant within meaning of PSIA when he applied for patent. For purpose of PSIA, all members of Canadian Forces were “public servants” whether they were in Regular Force or Reserve Force. Judge failed to properly conduct analysis of interaction between s. 4 of PSIA and s. 53(1) of PA. There was apparent conflict and lack of consistency between Patent Rules (Can.) and Public Servants Inventions Regulations (Can.) regarding required forms. Rules did not refer to obligation to disclose public servant status, while Regulations expressly required such disclosure. Pursuant to PA, Rules had same force and effect as if they had been enacted in PA itself but PSIA contained no similar provision and Regulations were considered to be subordinate legislation. Rules carried greater weight and prevailed over Regulations. Failure to disclose public servant status did not invalidate patent, as such disclosure was not required under PA or Rules. Individual plaintiff had obligation to disclose public servant status under s. 4(2) of PSIA but he had no such obligation under PA when he applied for patent. Judge erred in finding that individual plaintiff’s failure to disclose public servant status at time patent application was filed was untrue material allegation pursuant to s. 53(1) of PA.

Brown v. Canada (Feb. 5, 2016, F.C.A., Wyman W. Webb J.A., Richard Boivin J.A., and Yves de Montigny J.A., A-419-14) Decision at 252 A.C.W.S. (3d) 320 was reversed. 262 A.C.W.S. (3d) 717.

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