Failure to Disclose Public Servant Status Will Not Void a Patent
On February 5, 2016 Justice Boivin (writing on behalf of the Court of Appeal) released the reasons for judgment in Brown v. Canada, 2016 FCA 37. The case was an appeal from a decision of the Federal Court regarding a motion for summary judgment by the Crown in a patent invalidity claim pursuant to s. 53 of the Patent Act.
The motion arose in proceedings brought by Brown against the Crown for infringement of Canadian Patent No. 2,285,748, generally directed to a transportable biological and chemical decontamination system. The Crown sought the dismissal of Brown’s claim and summary judgment for the invalidation of the 748 Patent on the basis he was a member of the military when he filed the patent and breached his statutory obligations under the Public Servants Inventions Act by failing to disclose his public servant status. The Crown alleged this resulted in a materially untrue allegation voiding the 748 Patent.
Justice Kane initially granted the motion in part, holding Brown was a public servant when he applied for the patent and that he did not disclose this status as a public servant as required by law. The Court held this was a material untrue allegation, but held that the issue of whether this was willfully made for the purpose of misleading was a genuine issue best left for trial. Brown appealed.
The Court of Appeal was faced with two issues:
- Did the Court err in concluding Brown was a public servant at the time he filed the application for the 748 Patent; and
- Did the Court err in concluding that Brown’s failure to disclose his public servant status was an untrue and material allegation pursuant to s. 53 of the Patent Act.
With respect to the first issue, the Court of Appeal held that as a member of the Supplementary Reserve, Brown was a “public servant” when he applied for the 748 Patent.
With respect to the second issue, The Court of Appeal held that the Federal Court failed to properly analyze the interaction between s. 4 of the PSIA and s. 53 of the Patent Act. The Patent Act is a complete statutory scheme regarding parents and is silent on the issue of ownership of patent rights in inventions made during the course of employment. The Court of Appeal held that the rules and regulations reveal a lack of consistency and conflict. The Patent Rules (and the forms for applying for a patent)) do not refer to an obligation to disclose a public servant status, whereas the forms under the Public Servants Inventions Regulations specifically require the status to be disclosed. Justice Boivin pointed out that section 12(2) of the Patent Act, gives the Patent Rules the same force and effect as if they had been enacted in the Patent Act itself. The PSIA contains no similar provisions making its regulations subordinate legislation. Therefore, the Court held that the Patent Rules are to prevail over the Public Servants Inventions Regulations and a failure to disclose public servant status does not invalidate a patent given that this disclosure isn’t required by the Patent Act or the Patent Rules. The Court of Appeal also held that past amendments to the relevant legislation supports a conclusion that Parliament did not intend that a patent could be void for a failure to disclose public servant status.
The Court of Appeal concluded that Brown had an obligation to disclose his public servant status and by failing to do so became subject to the penalties under the PSIA. However, he had no obligation under the Patent Act to disclose his status when he filed the application for the 748 Patent. The Court of Appeal pointed out that the Patent Act a complete scheme that does not require disclosure and sets forth no penalties for failing to do so. In addition, the PSIA itself does not even refer to the invalidation of a patent as a consequence of failing to disclose public servant status. Justice Boivin held that it was an error for the judge to hold that the failure to disclose was an untrue and material allegation pursuant to s. 53(1) of the Patent Act and the appeal was allowed.
A copy of the Court of Appeal’s decision can be found here.