On Feb. 5, a Federal Court of Appeal ruled that failure to disclose one’s status as a public servant during the application process cannot constitute grounds to invalidate an issued patent.
It’s thought to be the first time the act has been used as a technical challenge in a patent litigation since it was created in 1954.
Peter Wilcox, president of the Intellectual Property Institute of Canada, acted as intervener in Brown v. Canada on the appeal. On behalf of IPIC, Wilcox, a lawyer with Belmore Neidrauer LLP, along with Bennett Jones LLP lawyers Trent Horne and Melissa Dimilta, were successful on the issue of the interaction between the PSIA and the Patent Act.
The issue was about whether the PSIA was being used to invalidate what was presumed to be a valid patent.
IPIC did not take a position on whether Brown was in fact a public servant when he filed the patent application.
“This issue was of concern to us because our view as an organization was that the Patent Act is what tells you whether or not you have a valid patent,” says Wilcox. “So if you comply with the requirements of the Patent Act, and the rules, then your patent should be valid.”
It’s yet another recent example of a technical challenge being used in a patent case, says Noel Courage, a partner with Bereskin & Parr LLP in Toronto.
“It seemed like a tenuous challenge to patent validity since it has nothing to do with the merits of the invention,” says Courage. “However, the lower court judge decided that the issue could go to trial.”
The lower court decision was alarming to patent professionals since other technical challenges in the past had invalidated patents, such as challenges based on inadequate fee payments. Another case this month — Apotex v. Pfizer — confirmed validation of a patent that was challenged based on inaccurate filing fees.
“This was was enough of a concern that the IP professionals association intervened in the case on this issue,” says Courage. “Although Brown’s facts would not be a common situation, it is generally good for patent owners that the Federal Court of Appeal stepped in to head this technical challenge off at the pass. Otherwise, it would provide additional fuel to encourage alleged infringers wanting to challenge patent validity on technical grounds.”
The PSIA is an obligation on inventors in the public service that if they come up with an invention they have to disclose it to the relevant government minister.
Brown filed his patent application in 1999 for an invention related to decontamination of biological and chemical hazards. The patent was issued in 2010, and in 2012 he filed an infringement lawsuit in the Federal Court against the Crown and HDT Tactical Systems. HDT had been awarded a government contract for the same kind of system sold by Brown’s company.
The Crown defended the action, and advanced a counterclaim that Brown’s patent was invalid.
The Crown said it was invalid for a number of reasons — one of them because he was a member of the Supplementary Reserve of the Canadian Forces when he filed the application and that made him a public servant, and he failed to disclose that during the patent application process.
On a motion for summary judgment, a judge of the Federal Court determined that Brown was a public servant when the application was filed, and that omitting this information constituted an untrue material allegation, even though the Patent Act does not require this information to be included in an application.
Brown appealed the decision to the Federal Court of Appeal.
IPIC successfully argued that the Patent Act and the patent rules are a complete code for the grant or loss of patent rights, and that any non-compliance with other federal legislation, including the PSIA, can’t constitute grounds to invalidate a patent.
Writing for the Court of Appeal, Justice Richard Boivin wrote:
“It was thus an error for the Judge to conclude that Mr. Brown’s failure to disclose his public servant status at the time he filed his application for the ‘748 Patent was an untrue and material allegation pursuant to subsection 53(1) of the Patent Act and cannot affect the validity of the ‘748 Patent. Regardless of the disclosure obligations under the PSIA, since Mr. Brown complied with section 27 of the Patent Act, more specifically with the Patent Rules and its Forms, section 53 could not be triggered in the circumstances. However, the question as to whether the invention and the ownership of the ‘748 Patent intellectual property rights are vested in Her Majesty pursuant to subsections 4(1) and 4(2) of the PSIA, remains open.”
Boivin allowed the appeal with costs and dismissed the Crown’s cross-appeal with costs.