Every Canadian public servant who makes an invention is required to disclose that the inventor is a public servant in any patent application filed for the invention. The Canadian Federal Court of Appeal has recently considered, in Brown v Canada, 2016 FCA 37, whether failing to make the required disclosure in the patent application resulted in “an untrue material allegation” which could invalidate the patent.
Subsection 4(1) of the Canadian Public Servants Inventions Act (PSIA) requires that every public servant who makes an invention must notify the appropriate government minister and disclose in any patent application that the inventor is a public servant.
Section 2 of the PSIA defines a “public servant” as “any person employed in a department, and includes a member of the Canadian Forces or the Royal Canadian Mounted Police”.
Subsection 53(1) of the Canadian Patent Act provides that a “patent is void if any material allegation in the petition of the applicant in respect of the patent is untrue…” .
The Brown v Canada case
Mr. Louis Brown filed for Canadian Patent No. 2,285,748 (the ‘748 patent) while he was a member of the Supplementary Holding Reserve of the Canadian Forces. At the time, he was receiving no benefits or remuneration.
Mr. Brown did not indicate his reserve status in the Canadian Forces in the petition for the ‘748 patent. After the ’748 patent issued, Mr. Brown’s company filed an infringement action against the Canadian government and a contractor who was manufacturing products under contract to the government.
The Canadian government filed a motion for summary judgment alleging that Mr. Brown had failed to comply with his obligations to disclose his public service status under the PSIA when applying for the ‘748 patent, and that this omission constituted an untrue material allegation under s. 53 of the Patent Act that should invalidate the patent.
Justice Kane of the Federal Court granted the government’s motion in part, finding that Mr. Brown was a public servant as defined in the PSIA and did not disclose his status. The Judge also found that this omission constituted an untrue allegation and that this allegation was material for the purpose of s. 53(1) of thePatent Act. Further application of s. 53 was left for trial.
The Federal Court of Appeal decision
Mr. Brown appealed to the Federal Court of Appeal, which allowed the appeal and dismissed the motion for summary judgment.
The Court concurred that Mr. Brown was a public servant within the meaning of s. 2 of the PSIA, holding that the definition of “public servant” included all members of the Canadian Forces regardless of active employment status. The Court noted that language used in the French version of s. 2 of the PSIA provides clearer support for this conclusion than the English version, referring to the principle of Canadian statutory interpretation that both versions of bilingual legislation are authoritative and should be considered to resolve interpretation issues.
However, the Court then found that Mr. Brown’s failure to disclose his status was not an untrue and material allegation as contemplated under s. 53(1).
The Court considered the intent of s. 53(1) as it could be inferred from the relationship between s. 4 of thePSIA and s. 53 of the Patent Act using various principles of statutory interpretation. It was noted that the PSIA includes specific remedies for failure to disclose public servant status, including fines and/or imprisonment, and also contains provisions that may result in rights to an invention made by a public servant becoming vested in the Canadian government.
The Court also considered a number of other factors. The Court referred to a legal principle that the Patent Act and its Rules are generally considered to stand as a complete statutory scheme in relation to patent rights. The Court also noted inconsistencies between the Patent Rules and the Public Servants Invention Regulations (PSIR) which led to a finding that the PSIR should be considered subordinate legislation. The Court also considered the legislative history of the Patent Act and the enactment of the PSIA, noting that thePSIA does not refer to invalidity as a consequence of failing to disclose an inventor’s status.
As a result, the Court found that Mr. Brown’s failure to disclose his public servant status was not an untrue and material allegation contemplated by s. 53(1) of the Patent Act and could not affect the validity of the ‘748 patent. The Court indicated it was still an open question whether Mr. Brown’s failure to meet his obligations under the PSIA might adversely affect his ownership rights in the ‘748 patent.
The Federal Court of Appeal decision in Brown v Canada highlights the importance of considering the broad definition of a “public servant” in the PSIA when determining whether the requirements of the PSIA apply to a particular set of facts. Although the Federal Court of Appeal found that Section 53 of the Canadian Patent Act did not apply in the facts of the case, the possibility of sanctions under the PSIA and potential vesting of ownership rights in the Canadian government means that it remains important for public servants to accurately disclose their status when filing a patent application.
The case also serves as a reminder that Canadian legislation has both English and French official versions and any linguistic differences between the two versions may be relevant in interpreting statutory provisions.