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Court of Appeal Confirms Patent Act Is a "Complete Statutory Scheme"

February 24, 2016

By Stephen Beney and Nicholas Aitken

On February 5, 2016, the Federal Court of Appeal decided in Brown v. Canada (2016 FCA 37) that failure to disclose one’s status as a public servant is not grounds for invalidating an issued patent. This decision is informative as to what may constitute a “material untrue allegation” for the purpose of invalidating a patent, and also represents a success for the Intellectual Property Institute of Canada (IPIC) which advocated for this result as an intervener.

Briefly, the facts of this case are that Mr. Brown was a member of the Canadian Forces Supplementary Holding Reserve (a “public servant”) at the time he filed an application for the patent at issue (the ‘748 Patent). Mr. Brown later sued the Crown and a company HDT for infringement of the ‘748 Patent. The Crown countered that the ‘748 Patent was invalid under s.53 of the Patent Act which deems a patent void if a material untrue allegation is made in the petition of a patent application for the purpose of misleading. Specifically, the Crown argued that Mr. Brown’s failure to disclose his status as a public servant as required by s.4 of the Public Servants Invention Act constituted a material untrue allegation. The trial court agreed that Mr. Brown’s omission constituted a material untrue allegation in the petition, remanding the issue of intention to mislead for trial. Mr. Brown appealed, and IPIC was granted intervener status.

In its decision, the Federal Court of Appeal found that “the failure to disclose one status as a public servant does not invalidate a patent given that such disclosure is not required under either the Patent Act or its Rules”. Specifically, the Court found that the Patent Act and Patent Rules are a “complete statutory scheme”, and that neither the petition of a patent application provided therein, “nor its instructions, indicates that an individual filing a patent application has an obligation to disclose his or her public servant status.” Thus a failure to disclose such status does not constitute a material untrue allegation in the petition of a patent application under s.53 of the Patent Act.

The February 5th ruling provides clarity that invalidity for a material untrue allegation under s.53 of the Patent Act does not expressly extend to obligations under other legislation such as the Public Servants Invention Act. Of course, it is available for the Legislature to draft legislation that specifically states its applicability to s.53 of the Patent Act if that is its will. Until then, s.53 shall be constrained to the four walls of the Patent Act and Rules.


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Stephen Beney Stephen Beney
B.Sc. (Physics)
Managing Partner
905.817.6102  email Stephen Beney
Nicholas Aitken Nicholas Aitken
B.A.Sc. (Mech. Eng.)(Hons.), J.D.
416.957.1620  email Nicholas Aitken