Canada’s Federal Court of Appeal recently considered the patenting of inventions by public servants in the case Louis Brown et 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?

Background

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 Reserve.

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 Discipline.

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 Police.”

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 inventions.

Validity

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 Act, and
• 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.”

Conclusion

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 patent rights.