The federal government recently lost in its attempt to
invalidate a patent it was accused of infringing. The attack
was unrelated to the merits of the invention itself, and misplaced
enough that the IP practitioners association1 was
compelled to successfully intervene as a third party to advocate
for patent validity on the key issue.
In a new technical attack on a patent3, the federal
government and its contractor argued that the failure of a public
servant to disclose his status in a patent petition (ie. patent
filing document) invalidated the patent. The inventor was a member
of the Supplementary Holding Reserve of the Canadian Forces when he
filed a patent application for a decontamination and containment
system for biological and chemical hazards. At this time, he
was listed as unavailable for armed forces duties, and did not
receive any benefits or remuneration. Nonetheless, the
defendants argued that the inventor breached his obligations under
the Public Servants Inventions Act4
(PSIA) by failing to disclose his public servant
status. This was alleged to be a material untrue allegation voiding
TheFederal Court of Appealdecided that
the patent was valid. The court found that the
inventor was obligated by law to disclose his public servant status
and was subject to penalties under the PSIA for not doing
so. The PSIA did not refer to the invalidation of a patent as
a consequence of non-disclosure. The Patent Act was
silent on the issue of disclosure of public servant status in a
patent filing, and only required that the invention be new,
inventive and useful. The Court left open the issue of whether the
government might have some ownership in the patent application by
virtue of the public servant relationship.
While the new ground of attack on validity was unsuccessful in
this case, patent applicants need to be vigilant in complying with
legal requirements around patenting. Otherwise, they are
giving competitors an opening to try to challenge
validity. Technical challenges may be a longshot, but they
cost significant time and money to fend off in litigation.
1 Intellectual Property Institute of Canada
2 The usual grounds for invalidating a patent are: (1) lack
of utility, (2) lack of novelty, (3) obviousness, (4)
insufficient disclosure, and (5) an untrue material allegation or a
willfully misleading act or omission.
3 Brown v. Canada (2016), 2016 FCA 37.
4 R.S.C., 1985, c. P-32.
5 Section 53 of the Patent Act , R.S.C., 1985, c.
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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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