When inventors are Canadian public servants, there are a number of required disclosures when filing a patent application. If the disclosures are not made, there may be issues with the validity of a patent. This issue was considered in Brown v Canada1.
The statutory requirements arise from Subsection 4(1) of the Public Servants Inventions Act (PSIA)2, requiring the notification of the appropriate minister and disclosure in any patent application that the inventor is a public servant.
When is this issue triggered?
This issue is triggered when the inventor, at the time of making the invention, is:
- Employed in a department;
- A member of the Canadian Armed Forces (including the Canadian Army Reserve); or
- A member of the Royal Canadian Mounted Police (RCMP).
A potential pitfall arises for released members of the Canadian Army Reserve – members of the Canadian Armed Forces Supplementary Reserve are considered to trigger this requirement (even if the individual is listed as not available to undertake any duties, does not receive benefits or remuneration, and is not subject to the Canadian Armed Forces' code of discipline).
It is not clear to the author whether the RCMP designation includes members of the Auxiliary Program. Given the finding in Brown v Canada, it may be prudent to nonetheless carefully follow the notification and disclosure steps.
Where an invention is made jointly by a public servant and another person who is not a public servant, the PSIA applies to the interest of the public servant in the invention.3
What are the disclosure requirements?
There are three requirements under Subsection 4(1) of the PSIA (emphasis added):
4 (1) Every public servant who makes an invention
(a) shall inform the appropriate minister of the invention and shall provide the minister with such information and documents with respect thereto as the minister requires;
(b) shall not file outside Canada an application for a patent in respect of the invention without the written consent of the appropriate minister; and
(c) shall, in any application in Canada for a patent in respect of the invention, disclose in his application that he is a public servant.
How to comply with the requirements
A waiver of rights can be provided by the appropriate minister under Subsection 8 of the PSIA. Where there are two or more appropriate ministers, any one of the ministers can act as the appropriate minister.
The requirements are expanded upon in the Public Servants Inventions Regulations (PSIR), which provides the following steps. The forms can be found online.4
1. Report of invention to appropriate minister (under Form 1)5. Parts 1 and 2 are to be completed by the inventor, and Part 2 is a department-specific form that can be varied at the discretion of each department. It may be prudent to request the specific form from the department to ensure this requirement is met.
2. Await the determination of the minister (under Form 2)6. An inventor is to await delivery of Form 2 from the minister, which should include a certificate that forms part of the patent application7.
a.If the minister has agreed to waive, abandon, or transfer Canadian ownership rights for the invention, the minister will execute a document under Form 3 and register a copy with the Patent Office.8
3. Include, in the petition in Canada, a statement regarding the public servant inventor (Forms 4-7). Different forms are provided. Form 4 is for a petition where the inventor is a public servant. Forms 5 and 6 are for a petition where there are other inventors that are not public servants. Form 6 is a joint petition. Form 7 is for a petition by the minister.
2. Public Servants Inventions Act (R.S.C., 1985, c. P-32); https://laws-lois.justice.gc.ca/eng/acts/P-32/. See also Public Servants Inventions Regulations (C.R.C., c. 1332); https://laws-lois.justice.gc.ca/eng/regulations/C.R.C.,_c._1332/
3. Subsection 13(2) of the PSIA, Joint Inventions.
5. Sections 2-3, PSIR, example commentary: https://www.canada.ca/en/department-national-defence/corporate/intellectual-property/supplementary-reservists-inventions.html, https://nrc.canada.ca/en/research-development/intellectual-property-licensing/nrcs-intellectual-property-ip-policy.
6. Sections 4-6, PSIR
7. Subsection 5(2), PSIR
8. Subsection 9(2), PSIR
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