On February 5, 2016, the Federal Court of Appeal decided in
Brown v. Canada (2016 FCA 37) that failure to disclose
one's status as a public servant is not grounds for
invalidating an issued patent. This decision is informative as
to what may constitute a "material untrue allegation" for
the purpose of invalidating a patent, and also represents a success
for the Intellectual Property Institute of Canada (IPIC) which
advocated for this result as an intervener.
Briefly, the facts of this case are
that Mr. Brown was a member of the Canadian Forces Supplementary
Holding Reserve (a "public servant") at the time he filed
an application for the patent at issue (the '748
Patent). Mr. Brown later sued the Crown and a company HDT for
infringement of the '748 Patent. The Crown countered that
the '748 Patent was invalid under s.53 of the Patent
Act which deems a patent void if a material untrue allegation
is made in the petition of a patent application for the purpose of
misleading. Specifically, the Crown argued that Mr.
Brown's failure to disclose his status as a public servant as
required by s.4 of the Public Servants Invention Act
constituted a material untrue allegation. The trial court
agreed that Mr. Brown's omission constituted a material untrue
allegation in the petition, remanding the issue of intention to
mislead for trial. Mr. Brown appealed, and IPIC was granted
In its decision, the Federal Court
of Appeal found that "the failure to disclose one 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". Specifically, the Court found that the
Patent Act and Patent Rules are a "complete
statutory scheme", and that neither the petition of a patent
application provided therein, "nor its instructions, indicates
that an individual filing a patent application has an obligation to
disclose his or her public servant status." Thus a
failure to disclose such status does not constitute a material
untrue allegation in the petition of a patent application under
s.53 of the Patent Act.
The February 5th ruling provides
clarity that invalidity for a material untrue allegation under s.53
of the Patent Act does not expressly extend to obligations
under other legislation such as the Public Servants Invention
Act. Of course, it is available for the Legislature to
draft legislation that specifically states its applicability to
s.53 of the Patent Act if that is its will. Until
then, s.53 shall be constrained to the four walls of the Patent
Act and Rules.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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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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