Bennett Jones successfully represented the Intellectual Property Institute of Canada (IPIC), Canada’s preeminent association of intellectual property professionals, as an intervener before the Federal Court of Appeal in Brown v. Canada. In a decision released on February 5, 2016 (2016 FCA 37), the Court ruled that failure to disclose one’s status as a public servant during the application process cannot constitute grounds to invalidate an issued patent. This ruling provides clarity for patent agents, patent applicants and patent owners.

Mr. Brown filed a patent application in 1999 for an invention relating to decontamination and containment of biological and chemical hazards. The patent issued in 2010. In 2012, Brown filed a patent infringement lawsuit in the Federal Court against the Crown and HDT Tactical Systems. HDT had been awarded a government contract for the same kind of system sold by Brown’s company.

The Crown defended the action, and also advanced a counterclaim that Brown’s patent was invalid. The counterclaim included a novel legal issue. Brown was a member of the Supplementary Reserve of the Canadian Forces when he filed his patent application. The Crown alleged that Brown failed to comply with his obligations under the Public Servants Inventions Act (PSIA) and disclose his status as a public servant during the patent application process, and as a consequence, the patent was invalid. On a motion for summary judgment, a judge of the Federal Court determined that Brown was a “public servant” when the application was filed, and that omitting this information constituted an untrue material allegation, even though the Patent Act does not require this information to be included in an application.

Brown appealed the decision to the Federal Court of Appeal, where IPIC was granted leave to intervene. IPIC successfully argued that the Patent Act and the Patent Rules are a complete code for the grant or loss of patent rights, and that any non-compliance with other Federal legislation, including thePSIA, can never constitute grounds to invalidate a patent.

This decision is welcomed by the patent community in Canada. The earlier decision took an obligation that only arose under the PSIA and applied a penalty that only arose for non-compliance with the Patent Act.

The February 5 ruling provides guidance for patent applicants, and also eliminates the possibility that a defendant in a patent infringement action can allege non-compliance with the PSIA as a part of a challenge to a patent’s validity.

IPIC extended its appreciation for the expertise, time and effort from Trent Horne and Melissa Dimilta, counsel to IPIC. Melissa is an associate and intellectual property lawyer at Bennett Jones.

To access the judgment and reasons for judgment in Brown v. Canada, visit