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Intellectual Property

Veteran's patent infringement case may go to trial

A Canadian Forces veteran may have his patent infringement case heard at trial, following the Federal Court’s order on a motion for summary judgment brought forward by the Canadian government, says Toronto IP lawyer John Simpson.

Simpson, who acted for veteran Louis Brown, says that while he’s pleased Justice Catherine Kane found there were genuine issues for trial, he's surprised that Canada, one of the defendants in the action, has taken the position it has in seeking to void Brown’s patent. Part of the government’s position is that Brown was still a public servant when he applied for his patent – though this was long after he received his last paycheque or had any active duty – and that the government still had a say in whether he could patent it.

“Wouldn’t the government want to encourage retired Canadian Forces employees to be innovative in their retirement?” says Simpson.

The case involves Brown, a retired air defence technician, and his patent for ColPro systems, which are nuclear, biological, chemical weapons shelters – a patent he alleges Canada infringed by hiring a U.S. defence contractor to manufacture the systems for Canada.

Canada sought to dismiss Brown’s claim at summary judgment on several grounds. First, it argued that Brown’s patent should be invalidated because he failed to disclose his status as a public servant under s. 2 of the Public Servants Invention Act. Further, if he was found to be a public servant and failed to disclose that status, it should be considered a material untrue allegation under s. 53(1) of the Patent Act.

Finally, disclosure issues aside, Canada argued that under s. 8 of the Crown Liability and Proceedings Act (CLPA), it would be immune to any patent infringement proceedings because the invention is necessary for national defence.

At the time he filed the patent, Brown was part of the Supplementary Holding Reserve, a subsection of the Canadian Forces, where members "do not receive any benefits or remuneration." Brown even had sought the advice of an HR advisor at the Department of National Defence who informed him that he was not an employee of the federal public service.

While Kane found Brown was a public servant at the time he applied for the patent and that his failure to disclose his status amounted to an untrue material allegation, she stated that “whether an untrue material allegation must be made willfully to mislead the commissioner [in order to void a patent in these circumstances] is a genuine issue for trial.”

Simpson says, "There are two strains of case law regarding s. 53(1) of the Patent Act and Justice Kane noted that there is a lack of certainty in the law on this issue. I'm surprised Justice Kane found the omission to be material because Brown's omission was about as clerical and administrative as it gets."

Kane also found Canada’s alternative grounds under the CLPA to be another genuine issue for trial.

While Simpson, principal with Shift Law, did not draft Brown’s patent, he says the lesson learned should be to drill down and ask relevant questions of your client when drafting a patent application. He says this summary judgment is a cautionary tale to patent agents to make sure all required information is included in the application, and not just with respect to the invention itself.

He says the issues for the trial judge will centre around whether Brown must have willfully misled the Patent Office to lose his patent and whether his failure to disclose his status was in fact willful.


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