Brown v. Canada, 2016 FCA 37

On February 5, 2016, the Federal Court of Appeal released its decision in Brown v. Canada, by allowing the appeal and dismissing both the Crown’s cross-appeal and motion for summary judgment.  As reported in November/December edition of the Bulletin, IPIC was granted intervener status in the appeal and the hearing was held on December 10, 2015.  In the summary judgment decision below, the Federal Court had found that the inventor/applicant of the patent at issue was a “public servant” under the Public Servants Invention Act (“PSIA”).  The Federal Court had also found that he had failed to disclose his status as a public servant in contravention of the PSIA, and this constituted a material misrepresentation under section 53 of the Patent Act.  The patent had not been invalidated, though, since the issue of whether an untrue material allegation must be willfully made for the purpose of misleading was a genuine issue to be determined later at trial.

An appeal and cross-appeal were both commenced, and IPIC was successful in being granted intervener status.  IPIC presented arguments at the appeal hearing on December 10, including a position that the Patent Act sets out a comprehensive code for the acquisition and loss of patent rights.  IPIC submitted that there is no requirement in the Patent Act for an applicant to disclose their status as a public servant, so it was an error of law for the Federal Court to determine that there had been a breach of section 53 by finding there had been a material untrue allegation in the petition of applicant.

The Federal Court of Appeal upheld the Federal Court’s conclusion that the inventor was a “public servant” within the meaning of the Public Servants Invention Act (PSIA), but concluded that failure to disclose one’s status as a public servant does not invalidate a patent.  The Federal Court of Appeal found that such disclosure is not required under either the Patent Act or the Patent Rules after conducting a detailed analysis of the interaction between the Patent Act and the PSIA.  The Federal Court of Appeal also reviewed past amendments to the Patent Act and the PSIA, which were part of IPIC’s submissions, to conclude that Parliament did not intend that a patent could be void for a failure to disclose public servant status.  The Patent Act was a complete statutory scheme and since Mr. Brown had complied with the Patent Act and Rules, including section 27 of the Patent Act, section 53 could not be triggered in these circumstances.

IPIC welcomes this decision for clarity regarding the impact of the PSIA, and also for recognizing IPIC’s contribution to the development of IP law in Canada.  IPIC greatly appreciates the significant time and effort from its counsel, Trent Horne and Melissa Dimilta, who successfully represented IPIC in the appeal, and to the members of the Intervention Committee for their valuable input throughout the intervention process in this case, which started over a year ago.

Click here to access the Judgement and Reasons for Judgement.