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.

Brown v. Canada (2016 FCA 37) is an appeal of the Federal Court’s decision finding that Mr. Brown was a public servant for the purposes of the Public Servants Inventions Act, R.C.C., 1985, c-32 [PSIA] when he applied for the 748 Patent and that he did not disclose this status as he was explicitly required to do pursuant to section 4 of the PSIA.  The Court concluded 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 for the purposes 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.

Boivin JA allowed the appeal, finding that the lower court failed to properly conduct an analysis of the interaction between the PSIA and the Patent Act.

Despite the apparent conflict and lack of consistency between the Patent Rules and the Public Servants Inventions Regulations (i.e., 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 require that one's public servant status be disclosed), the PSIA’s regulations are to be considered subordinate legislation to the Patent Rules: Pursuant to subsection 12(2) of the Patent Act, the Patent Rules have the same force and effect as if they had been enacted in the Patent Act itself; the PSIA contains no similar provision.

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 II of the PSIA —none of which relate to or in any way impact the validity of a patent issued to a public servant.

The Patent Act, likewise, does not impose any penalties for a failure to disclose public servant status nor does it require in any way that an applicant disclose public servant status.  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 could affect the validity of the 748 Patent. Mr. Brown complied with the section 27 disclosure requirements under the Patent Act (more specifically with the Patent Rules and its Forms) and, thus, section 53 could not be triggered in the circumstances.

However, the question of 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.