Canada's Federal Court of Appeal recently considered the
patenting of inventions by public servants in the case
al. v. Her Majesty the Queen in Right of
Canada et al. The Court considered two questions:
Who is a public servant?
Is a patent for an invention by a public servant invalid if the
inventor's status as a public servant is not disclosed in the
Petition seeking a patent for the invention?
Louis Brown was a member of the Canadian Forces' Regular
Force between 1973 and 1993. Upon his retirement, he was designated
a member of the Reserve Force, variously in the Primary Reserve,
the Supplementary Reserve, and the Supplementary Holding
Mr. Brown was a member of the Supplementary Holding Reserve from
June 1999 through June 2009. In this capacity, Mr. Brown:
was listed as an individual who was not available to undertake
any duties, including in time of emergency,
did not receive any benefits or remuneration, and
was not subject to the Canadian Forces' Code of
On October 8, 1999, while a member of the Supplementary Holding
Reserve, Mr. Brown filed an application to patent a
"Transportable Collective Protection System".
Mr. Brown's membership in the Canadian Forces was never brought
to the attention of the Commissioner of Patents, who granted patent
CA2,285,748 on May 25, 2010 for this invention.
In April 2012, Mr. Brown sued the Government of Canada for
infringing patent CA2,285,748.
Hoping to short-circuit a long and expensive patent lawsuit, the
Government of Canada sought summary judgement that patent
CA2,285,748 was invalid, on the simple ground that Mr. Brown had
made a material untrue allegation in his patent application by
failing to disclose that he was a public servant. In this regard,
the Government of Canada relied upon Section 53 of the
Patent Act, which states, "A
patent is void if any material allegation in the petition of the
applicant in respect of the patent is untrue...".
Who is a Public Servant?
Section 2 of the Public Servants Inventions
Act states that, "'public servant'
means any person employed in a department, and includes a member of
the Canadian Forces or the Royal Canadian Mounted
The Court concluded that "membership" is a much
broader relationship than "employment", and that, as a
member of the Supplementary Holding Reserve of the Canadian Forces,
Mr. Brown was a public servant. Hence, Mr. Brown was subject to the
Public Servants Inventions Act, which
means he was being obligated to disclose his inventions to the
Minister of National Defence and his status as a public servant to
the Commissioner of Patents should he apply to patent any such
The Court carefully interpreted the Patent
Act, the Public Servants Inventions
Act and applicable regulations, rules and forms
promulgated under each.
The Court concluded that Mr. Brown's:
failure to disclose his status as a public servant did not
invalidate patent CA2,285,748, because such disclosure was neither
material nor obligated under the Patent
Act, and the Patent Act
specified no penalty for such lack of disclosure,
failure to disclose his status as a public servant rendered him
guilty of an offence and liable under summary conviction to only a
fine of up to $500 and/or imprisonment up to six months pursuant to
Section 11 of the Public Servants Inventions
status as a public servant made him subject to Section 3 of the
Public Servants Inventions Act, which
vests in the Government of Canada, "inventions, and all rights
with respect thereto in Canada or elsewhere, ... made by a public
servant while acting within the scope of his duties or employment,
or made by a public servant with facilities, equipment or financial
aid provided by or on behalf of Her Majesty; [or] an invention made
by a public servant that resulted from or is connected with his
duties or employment."
The Court's interpretation of this legislation was
significantly more nuanced than this summary might suggest.
Nevertheless, as the legislation now stands, even though a patent
will not be invalidated by failure to disclose one's status as
a public servant, the consequences of such failure can include a
fine, imprisonment, and in some cases, forfeiture to the Crown of
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