• S.53 of the Patent Act held Not to Apply when Public Servant Fails to Declare Status
  • March 1, 2016 | Authors: Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Brown v. Canada, 2016 FCA 37

    In this case, Brown appealed a decision of the Federal Court, partially granting summary judgment in an invalidity claim, pursuant to s. 53 of the Patent Act. The motion was granted in the Court below because the inventor was a public servant for the purposes of the Public Servants Inventions Act ("PSIA"), and did not disclose this status as required. The Judge held that this omission was an untrue allegation that was material for the purposes of section 53(1) of the Patent Act. Whether that allegation was made willfully with the purpose of misleading was left for trial. The FCA allowed the appeal.

    Brown had been enrolled in the Canadian Forces Regular Force, but retired and was placed on the Supplementary Reserve, where he founded NOR, the co-plaintiff. He was then transferred to the Primary Reserve where he was remunerated for part time work for three years. Then he was released from the Primary Reserve and listed on the Supplementary Holding Reserve, where he was not on active service, and received no benefits or remuneration. While listed on the Supplementary Holding Reserve, he filed for the patent at issue.

    The FCA held that the Court below had properly concluded that Brown, as a member of the Supplementary Reserve, was a public servant when he applied for the '748 Patent. The FCA held that Brown had the obligation to disclose his public servant status under the PSIA, however he had no such obligation under the Patent Act. Thus, it was an error for the Judge to conclude that Brown's failure to disclose his public servant status was an untrue and material allegation pursuant to s. 53(1) of the Patent Act. Section 53 could not be triggered in the circumstances. However, the question as to whether the intellectual property rights are vested in Her Majesty pursuant to the PSIA remains open.