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
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
the PSIA, can never constitute grounds to invalidate a
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
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
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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