2016 FCA 37, 2016 FCA 37

[2016] 4 F.C.R. 208 A-419-14 2016 FCA 37 Louis Brown, 2202240 Ontario Inc. d/b/a Nor Environmental International ( Appellants ) v. Her Majesty the Queen in Right of Canada and HDT Tactical Systems, Inc. d/b/a HDT Engineered Technologies ( Respondents ) and Intellectual Property Institute of Canada/ Institut de la propriété intellectuelle du Canada ( Intervener ) Indexed as: Brown v. Canada Federal Court of Appeal, Webb, Boivin and de Montigny JJ.A.—Toronto, December 10, 2015; Ottawa, February 5, 2016. Patents — Appeal from Federal Court decision granting in

part Crown’s motion for

summary judgment in patent invalidity claim pursuant to Patent Act, s. 53 — Underlying proceedings brought by appellants Brown, Nor Environmental International (NOR) (appellants) against Crown, HDT Tactical Systems (HDT) for infringement of Canadian Patent No. 2285748 ('748 patent) — Crown seeking dismissal of appellants’ claim,

summary judgment for invalidation of Brown’s '748 patent on basis Brown member of Canadian Forces when filing patent; as such, breaching statutory obligations under Public Servants Inventions Act (PSIA), s. 4 by failing to disclose public servant status — Federal Court finding that Brown public servant for purposes of PSIA when applying for patent at issue; failing to disclose public servant status as required pursuant to PSIA, s. 4 — Finding that omission constituting untrue allegation — Whether Federal Court erring in concluding that Brown’s failure to disclose public servant status at time filing application for '748 patent constituting untrue, material allegation pursuant to Patent Act, s. 53 — Federal Court correctly noting that present matter raising novel issue of relationship between PSIA, s. 4, Patent Act, s. 53 in specific context of voiding patent under Patent Act, s. 53 as result of contravention of PSIA, s. 4 — However, failing to properly conduct analysis of interaction between PSIA, s. 4, Patent Act, s. 53 — Brown using required form specified under Patent Rules (Rules) when filing application for '748 patent but form silent on disclosure of public servant status — Comparison of forms under Rules, forms under Public Servants Inventions Regulations revealing lack of consistency; thus conflict existing regarding required forms given that forms under Rules not referring to obligation to disclose public servant status whereas obligation existing under Public Servants Inventions Regulations — Pursuant to Patent Act, s. 12(2) , Rules having same force, effect as if enacted in Patent Act itself whereas PSIA containing no similar provision; Regulations thereof thus to be considered subordinate legislation — Therefore, Rules carrying greater weight, prevailing over Public Servants Inventions Regulations, supporting conclusion that failure to disclose one’s status as public servant not invalidating patent given that such disclosure not required under either Patent Act or Rules — Thus, Federal Court erring in concluding Brown’s failure to disclose public servant status when filing application for '748 patent constituting untrue, material allegation pursuant to Patent Act, s. 53(1) ; failure thereof could not affect validity of '748 patent — Appeal allowed; cross-appeal dismissed.

Public Service — Crown seeking

summary judgment in patent invalidity claim pursuant to Patent Act, s. 53 — Motion arising in proceedings appellants Brown, Nor Environmental International (NOR) (appellants) bringing against Crown, HDT Tactical Systems (HDT) for patent infringement — Crown claiming Brown’s patent invalid on basis Brown member of Canadian Forces when filing patent; as such, breaching statutory obligations under Public Servants Inventions Act (PSIA), s. 4 by failing to disclose public servant status — Federal Court granting motion in part — Whether Federal Court erring in concluding that Brown public servant within meaning of PSIA, s. 2 when filing application for '748 patent — Federal Court properly concluding that Brown, as member of Supplementary Reserve, “public servant” within meaning of PSIA when applying for patent — Conducting bilingual review of term “public servant” as used in PSIA, s. 2 — Language of PSIA, s. 2 evidencing Parliament’s intention to extend definition of “public servant” to more than members of Canadian Forces “actively employed” — Federal Court right in holding that wording in s. 2 sufficiently clear in both languages to support finding — Consequently, for purpose of PSIA, all members of Canadian Forces “public servants”, whether they are in Regular Force or Reserve Force — No reason to interfere with Federal Court’s conclusion thereon — PSIA, s. 4 imposing on public servant-inventors duty to disclose inventions to appropriate minister — Public Servants Inventions Regulations setting forth forms to be completed by public servant filing patent application — As public servant, Brown having to fill out forms referred to therein to fulfill obligations under PSIA when applying for his patent — Because obliged to disclose public servant status under PSIA, s. 4(2) , Brown becoming subject to penalties thereunder given failure to do so — However, such obligation not existing under Patent Act; therefore validity of patent thereof not affected.

This was an appeal from a Federal Court decision granting in part a motion for

summary judgment by the Crown in a patent invalidity claim pursuant to

section 53 of the Patent Act . The motion arose in proceedings brought by the appellants Brown and Nor Environmental International (NOR) (appellants) against the Crown and HDT Tactical Systems (HDT) for infringement of Canadian Patent No. 2285748 ('748 patent). The Crown responded by seeking the dismissal of the appellants’ claim and

summary judgment for the invalidation of Brown’s '748 patent on the basis that he was a member of the Canadian Forces when he filed the patent and, as such, breached his statutory obligations under

section 4 of the Public Servants Inventions Act (PSIA) by failing to disclose his public servant status. The Crown alleged that this resulted in a material untrue allegation voiding the '748 patent under

section 53 of the Act. Brown was enrolled in the Canadian Forces’ Regular Force until his retirement in 1993 when he was placed in the Reserve Force, which includes the Primary Reserve and the Supplementary Reserve. During that time, he founded NOR. He was subsequently transferred to the Primary Reserve and worked part-time. Later, in 1999, Mr. Brown was released from the Primary Reserve and was listed in a subset of the Supplementary Reserve. As such, he became an individual who was not available to undertake any duties.

He therefore did not receive any benefits or remuneration and was not subject to the Canadian Forces’ Code of Discipline. He was listed on this specific Reserve until 2009 and was never placed on active service or received any benefits or remuneration during this period. In 1999, after his release from the Primary Reserve, he filed an application for the '748 patent in the Canadian Patent Office. The '748 Patent is entitled

“Transportable Collective Protection System” and is directed to a system for decontamination and containment of biological and chemical hazards. NOR is a licensee of the '748 patent. In 2009, NOR and HDT both submitted bids in response to a request for proposals by Public Works and Government Services Canada involving transportable collective protective (ColPro) systems, used in particular for the defence of Canada. The contract was awarded to HDT. The appellants subsequently launched proceedings in the Federal Court for patent infringement. The Crown and HDT responded by moving for dismissal of the appellants’ claim and

summary judgment for the invalidation of the '748 patent. The Federal Court found that Brown was a public servant for purposes of the PSIA when he applied for the patent at issue and that he did not disclose his public servant status as he was explicitly required to do pursuant to

section 4 thereof. It found that this omission constituted an untrue allegation and that this untrue allegation was material for the purpose of subsection 53(1) of the Patent Act . However, the Federal Court decided that the issue of whether the untrue allegation needed to be made wilfully with the purpose of misleading, and if so, whether Brown had the requisite intention, was an issue best determined at trial. The issues were whether the Federal Court erred in concluding that Brown was a public servant within the meaning of

section 2 of the PSIA at the time he filed his application for the '748 patent and whether it erred in concluding that 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

section 53 of the Patent Act . Held , the appeal should be allowed and the cross-appeal dismissed. The Federal Court properly concluded that Brown, as a member of the Supplementary Reserve, was a “public servant” within the meaning of the PSIA when he applied for the '748 patent. The Federal Court conducted a thorough bilingual review of the statutory term “public servant” as used in

section 2 of the PSIA. On its face, the language of

section 2 of the PSIA and the specific use of “member of the Canadian Forces” and “ membre du personnel des Forces canadiennes ” as opposed to “employed in a department” and “ employée dans un ministère ” clearly evidence Parliament’s intention to extend the definition of “public servant” to more than members of the Canadian Forces who are “actively employed”. Furthermore, the Federal Court’s reasons were well-supported. On the whole, in reading

section 2 of the PSIA in both official versions, the Federal Court was right in holding that the wording is “sufficiently clear in English and crystal clear in French” to support its finding. It follows that, for the purpose of the PSIA, all members of the Canadian Forces are “public servants” whether they are in the Regular Force or the Reserve Force. There was consequently no reason to interfere with the Federal Court’s conclusion in this regard. Regarding the issue of an untrue and material allegation pursuant to

section 53 of the Patent Act , the Federal Court correctly noted that the present matter raised the novel issue of the relationship between

section 4 of the PSIA and

section 53 of the Patent Act in the specific context of voiding a patent under

section 53 of the Patent Act as a result of a contravention of

section 4 of the PSIA. However, in performing its analysis as to whether Brown’s failure to disclose his public servant status constituted a material untrue allegation within the meaning of subsection 53(1) of the Patent Act , the Federal Court short circuited a crucial step. Despite acknowledging that the present matter raised the interaction between

section 4 of the PSIA and

section 53 of the Patent Act , the Federal Court failed to properly conduct an analysis of this issue. While the Patent Act does not address the issue of ownership of patent rights in inventions made during the course of employment, the PSIA was enacted to govern inventions developed by public servants in particular.

Section 4 of the PSIA imposes on public servant- inventors a duty to disclose their inventions to the appropriate minister. The minister can then decide whether or not to waive, abandon or transfer all or any of its rights in respect of that invention. As for the Patent Act , it stands as a complete statutory scheme regarding patents. The Commissioner of Patents has no discretion to not grant a patent if all the requirements set forth under the Patent Act are met.

Under subsection 27(2) of the Patent Act , a patent application must be filed in accordance with the Patent Rules (Rules), which provide for the completion of a specific form (Form 3). Brown used this form when he filed his application for the '748 patent. This form and its instructions are entirely silent on the disclosure of one’s public servant status. However, the Public Servants Inventions Regulations set forth a number of forms that must be completed by a public servant filing an application for a patent.

As a public servant, Brown would have had to make use of the forms referred to therein to fulfill his obligations under the PSIA when he applied for the '748 patent. A comparison of the forms under the Rules and the forms under the Public Servants Inventions Regulations revealed a lack of consistency and thus a conflict regarding the required forms since the forms under the Rules do not refer to the obligation to disclose a public servant status whereas this obligation exists under the Public Servants Inventions Regulations .

Pursuant to subsection 12(2) of the Patent Act , the Rules have the same force and effect as if they had been enacted in the Patent Act itself whereas the PSIA contains no similar provision and its Regulations are therefore to be considered subordinate legislation. Therefore, the Rules carry greater weight and prevail over the Public Servants Inventions Regulations , supporting the conclusion that the failure to disclose one’s 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.

There are specific penalties under the PSIA relating to the failure to disclose public servant status whereas the Patent Act does not impose any penalties for such a failure. The review of the interaction between the PSIA and the Patent Act led to the conclusion that Brown had the obligation to disclose his public servant status under subsection 4(2) of the PSIA and, in failing to do so, he became subject to penalties under

section 11 of the PSIA. However, he had no such obligation under the Patent Act when he filed his application for the '748 patent. Brown met the requirements under the Patent Act and the Rules and disclosed an invention that was determined by the Patent Office to be new, not obvious and useful. It was thus an error for the Federal Court to conclude that 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 Brown’s failure could not affect the validity of his patent. Regardless of the disclosure obligations under the PSIA, since Brown complied with

section 27 of the Patent Act , more specifically with the 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. STATUTES AND REGULATIONS CITED Copyright Act , R.S.C., 1985, c. C-42, s. 13(3).

Crown Liability and Proceedings Act, R.S.C., 1985, c. C-50, s. 8. Federal Courts Rules, SOR/98-106, rr. 214–219. National Defence Act, R.S.C., 1985, c. N-5,

Part III. Patent Act, R.S.C. 1952, c. 203, s. 47 (repealed by Public Servants Inventions Act, S.C. 1953-54, c. 40, s. 15). Patent Act, R.S.C., 1985, c. P-4, ss. 12(2), 27, 53. Patent Rules, SOR/96-423, r. 77,

Schedule I. Public Servants Inventions Act, R.S.C., 1985, c. P-32, ss. 2 “public servant”, 3, 4, 5, 6, 8, 11. Public Servants Inventions Regulations, C.R.C., c. 1332, s. 11, Schedule. CASES CITED REFERRED TO: Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235; Rizzo and Rizzo Shoes Ltd. (Re), (SCC), [1998] 1 S.C.R. 27,(1998), 36 O.R. (3d) 418; Canada Trustco Mortgage Co. v. Canada, 2005 SCC 54, [2005] 2 S.C.R. 601; Comstock Canada v. ElectecLtd. (1991), 38 C.P.R. (3d) 29, 45 F.T.R. 241 (F.C.T.D.); Commissioner of Patents v.

Fabwerke Hoechst Aktiengesellschaft VormalsMeister Lucius & Bruning, (SCC), [1964] S.C.R. 49, (1963), 41 C.P.R. 9; Apotex Inc. v. Sanofi-Synthelabo Canada Inc.,2008 SCC 61, [2008] 3 S.C.R. 265; Apotex Inc. v. Sanofi-Aventis, 2013 FCA 186, [2015] 2 F.C.R. 644. AUTHORS CITED Sullivan, Ruth. Sullivan on the Construction of Statutes, 6th ed. Markham, Ont.: LexisNexis, 2014. APPEAL from a Federal Court decision (2014 FC 831) granting in part a motion for

summary judgment by the Crown in a patentinvalidity claim pursuant to

section 53 of the Patent Act. Appeal allowed; cross-appeal dismissed. APPEARANCES Susan D. Beaubien for appellants. Jacqueline Dais-Visca and Abigail Browne for respondents. L.E. Trent Horne and Melissa M. Dimilta for intervener. SOLICITORS OF RECORD Macera & Jarzyna LLP, Ottawa, for appellants. Deputy Attorney General of Canada for respondents. Bennett Jones LLP, Toronto, for intervener. The following are the reasons for judgment rendered in English by [1] Boivin J.A.: This is an appeal from of a decision of a Federal Court Judge (the Judge) dated August 29, 2014 (2014 FC 831),regarding a motion for

summary judgment by the Crown in a patent invalidity claim pursuant to

section 53 of the Patent Act, R.S.C.,1985, c. P-4. This motion arose in proceedings brought by the appellants Mr. Brown and Nor Environmental International (NOR) againstthe Crown and HDT Tactical Systems (HDT) for infringement of Canadian Patent No. 2285748 ('748 patent). The Crown responded byseeking the dismissal of the appellants’ claim and

summary judgment for the invalidation of Mr. Brown’s '748 patent on the basis that hewas a member of the Canadian Forces when he filed the patent and, as such, breached his statutory obligations under

section 4 of thePublic Servants Inventions Act, R.S.C., 1985, c. P-32 (PSIA) by failing to disclose his public servant status. This, the Crown alleged,resulted in a material untrue allegation voiding the '748 patent under

section 53 of the Patent Act. [2] The Judge granted the Crown’s motion in part. She found that Mr. Brown was a public servant for the purposes of the PSIAwhen he applied for the patent at issue and that he did not disclose his public servant status as he was explicitly required to do pursuant tosection 4 of the PSIA. The Judge found that this omission constituted an untrue allegation and that this untrue allegation was material forthe purpose of subsection 53(1) of the Patent Act.

However, the Judge decided that the issue of whether the untrue material allegationneeded to be made wilfully with the purpose of misleading, and if so, whether Mr. Brown had the requisite intention, was an issue bestdetermined at trial. [3] For the reasons that follow, I am of the view that the appeal should be allowed. I. Factual Background [4] The parties do not dispute the relevant factual background. [5] Between 1973 and 1993, Mr. Brown was enrolled in the Canadian Forces’ Regular Force.

[ 6 ] In June 1993, following his retirement, Mr. Brown was placed in the Reserve Force. The Reserve Force includes both the Primary Reserve and the Supplementary Reserve. [ 7 ] From 1993 to 1995, Mr. Brown was placed on the Supplementary Reserve. During that time, he founded NOR. Mr. Brown was then transferred to the Primary Reserve in October 1995, and, between 1995 and July 1998, he was remunerated for part-time work for the Air Forces which included the writing of training and equipment manuals. [ 8 ] In June 1999, Mr.

Brown was released from the Primary Reserve and was listed on the Supplementary Holding Reserve, which is a subset of the Supplementary Reserve. In this capacity, Mr. Brown was notably listed as an individual who was not available to undertake any duties, including in time of emergency; he did not receive any benefits or remuneration and was not subject to the Canadian Forces’ Code of Service Discipline [being

Part III of the National Defence Act , R.S.C., 1985, c. N-5]. While he was listed on the Supplementary Holding Reserve until June 2009, Mr. Brown was never placed on active service and received no benefits or remuneration. [ 9 ] On October 8, 1999, approximately 4 months after his release from the Primary Reserve, Mr. Brown filed an application for the '748 patent in the Canadian Patent Office. The '748 patent is entitled “Transportable Collective Protection System”. It is directed to a system for decontamination and containment of biological and chemical hazards.

NOR is a licensee of the '748 patent. [ 10 ] In June 2008, Public Works and Government Services Canada (Public Works) published a draft performance specification for transportable collective protective (ColPro) systems. A year later, in July 2009, Public Works published a request for proposals for ColPro systems and received bids from, amongst others, NOR and HDT. The contract was awarded to HDT in December 2009. The parties agree that ColPro systems are for the defence of Canada or for the training of or maintaining of the efficiency of the Canadian Forces. [ 11 ] On April 2012, Mr.

Brown and NOR launched proceedings in the Federal Court for patent infringement. [ 12 ] The Crown and HDT responded by way of a motion seeking dismissal of the appellants’ claim and

summary judgment for the invalidation of the '748 patent. The Crown claimed that the '748 patent was void because Mr. Brown did not identify himself as a public servant when he made his application. This omission, the Crown argued, constituted a material untrue allegation which resulted in an invalid '748 patent pursuant to

section 53 of the Patent Act . II. Legislative provisions [ 13 ] This appeal concerns the following main legislative provisions: -

Section 2 of the PSIA :

Definitions 2 In this Act, … public servant means any person employed in a department, and includes a member of the Canadian Forces or the Royal Canadian Mounted Police. -

Section 4 of the PSIA : Duties of inventor 4

(1) Every public servant who makes an invention (

a) shall inform the appropriate minister of the invention and shall provide the minister with such information and documents with respect thereto as the minister requires; (

b) shall not file outside Canada an application for a patent in respect of the invention without the written consent of the appropriate minister; and (

c) shall, in any application in Canada for a patent in respect of the invention, disclose in his application that he is a public servant. Duties of Commissioner of Patents

(2) If it appears to the Commissioner of Patents that an application for a patent relates to an invention made by a public servant, the Commissioner shall inform the appropriate minister of the application and give to the minister such information with respect thereto as the minister requires. -

Section 53 of the Patent Act : Void in certain cases, or valid only for parts 53

(1) A patent is void if any material allegation in the petition of the applicant in respect of the patent is untrue, or if the specification and drawings contain more or less than is necessary for obtaining the end for which they purport to be made, and the omission or addition is wilfully made for the purpose of misleading. Exception

(2) Where it appears to a court that the omission or addition referred to in subsection (1) was an involuntary error and it is proved that the patentee is entitled to the remainder of his patent, the court shall render a judgment in accordance with the facts, and shall determine the costs, and the patent shall be held valid for that part of the invention described to which the patentee is so found to be entitled. Copies of judgment

(3) Two office copies of the judgment rendered under subsection (1) shall be furnished to the Patent Office by the patentee, one of which shall be registered and remain of record in the Office and the other attached to the patent and made a part of it by a reference thereto. III. Decision of the Judge [ 14 ] The Judge granted the motion in part. In so doing, she began her analysis with an overview of the law of

summary judgment making reference to the Federal Courts Rules , SOR/98-106 ( rules 214 to 219 ) and relevant jurisprudence. She noted that the standard to grant

summary judgment requires that the judge be satisfied that there is no genuine issue for trial. [ 15 ] The Judge then determined that Mr. Brown was a public servant within the meaning of

section 2 of the PSIA when he applied for the '748 patent on October 8, 1999. She concluded that Mr. Brown was a member of the Canadian Forces and, as such, did not have to be employed in order to fall within the definition of “public servant” for the purpose of the PSIA. [ 16 ] In finding that Mr. Brown was a public servant pursuant to the PSIA , the Judge held that Mr. Brown’s failure to disclose his status amounted to an untrue allegation which was material as per subsection 53(1) of the Patent Act .

In coming to this conclusion, she noted that the framework of the PSIA imposed an explicit statutory duty of disclosure and found that Mr.

Brown’s omission prevented the Commissioner of Patents from properly fulfilling his or her obligations pursuant to subsection 4(2) of the PSIA which is to inform the appropriate minister about the patent application. [ 17 ] With respect to the issue of whether untrue material allegations must be wilfully made for the purpose of misleading, the Judge was of the view that it was a genuine issue which should be determined at trial considering the paucity of evidence before the Court. She observed that the alleged contravention of

section 53 of the Patent Act was akin to fraud. She added that if it was determined at trial that such an intention was required, it would also be required that it be determined whether or not Mr. Brown had the required intention. [ 18 ] Finally, the Judge held that the question of whether or not the Crown Liability and Proceedings Act , R.S.C., 1985, c. C-50 (CLPA) trumps the Patent Act was a genuine issue for trial. More particularly, in the event that the '748 patent was not void, the issue of whether Canada was immune for liability pursuant to the CLPA because the invention falls within the exception of

section 8 would also need to be determined. The parties did not make any submission on this issue on appeal. [ 19 ] On June 17, 2015, the Intellectual Property Institute of Canada (IPIC) was granted leave to intervene in this appeal by order of a judge of this Court. HDT did not participate in this appeal. IV. Issues [ 20 ] The issues before this Court are as follows: 1. Did the Judge err in concluding that Mr. Brown was a public servant within the meaning of

section 2 of the PSIA at the time he filed his application for the '748 patent? 2. Did the Judge err in concluding 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

section 53 of the Patent Act ? V. Standard of Review [ 21 ] The standard of review for questions of law is correctness. Questions of fact and mixed fact and law in respect of which there is no extricable question of law are reviewed on the standard of palpable and overriding error (see Housen v. Nikolaisen , 2002 SCC 33 , [2002] 2 S.C.R. 235, at paragraphs 7–37 ). VI. Analysis A. Did the Judge err in concluding that Mr. Brown was a public servant within the meaning of

section 2 of the PSIA at the time he filed his application for the '748 patent? [ 22 ] Mr. Brown submits that the Judge erred in finding that he was a public servant within the meaning of

section 2 of the PSIA when he filed his application for the '748 patent on October 8, 1999. Essentially, Mr. Brown asserts that the definition of “public servant” in

section 2 of the PSIA must be interpreted in a broader context as to solely include those who perform work or service in exchange for remuneration. As such, Mr. Brown argues, since he was an unpaid member of the Canadian Forces’ Supplementary Reserve in 1999, he was not “employed” and thus could not be considered a “member of the Canadian Forces” within the meaning of

section 2 of the PSIA. [ 23 ] I cannot accept Mr. Brown’s contention. In my view, the Judge properly concluded that Mr. Brown, as a member of the Supplementary Reserve, was a “public servant” within the meaning of the PSIA when he applied for the '748 patent. [ 24 ] I note that in undertaking her statutory

interpretation, the Judge conducted a thorough bilingual review of the statutory term “public servant” as used in

section 2 of the PSIA in conformity with the well-established principle that both versions of bilingual enacted legislation are authoritative: “both must be read with care and both must be considered in resolving interpretative issues” (Ruth Sullivan, Sullivan on the Construction of Statutes , 6th ed. (Markham, Ont.: LexisNexis, 2014) (Sullivan), at page 118, paragraphs §5.16 and §5.17). [ 25 ] On its face, the language of

section 2 of the PSIA and the specific use of “member of the Canadian Forces” and “ membre du

personnel des Forces canadiennes” as opposed to “employed in a department” and “employée dans un ministère”, clearly evidenceParliament's intention to extend the definition of “public servant” to more than members of the Canadian Forces who are “activelyemployed”. [26] I further observe that the Judge’s reasons are well-supported. On the whole, in reading

section 2 of the PSIA in both officialversions, I can only agree with the Judge that the wording is “sufficiently clear in English and crystal clear in French” to support herfinding and I therefore agree with her statutory

interpretation of “public servant” in

section 2 of the PSIA. [27] It follows that, for the purpose of the PSIA, all members of the Canadian Forces are “public servants” whether they are in theRegular Force or the Reserve Force. Indeed, the text of

section 2 of the PSIA makes it clear that members of the Canadian Forces do notneed to be employed or receive benefits to be included in the definition of “public servant” for the purpose of the PSIA. [28] Therefore, I see no reason to interfere with the Judge’s conclusion in this regard. B. Did the Judge err in concluding that Mr. Brown’s failure to disclose his public servant status at the time he filed his applicationfor the '748 patent was an untrue and material allegation pursuant to

section 53 of the Patent Act? [29] Having found that Mr. Brown was a public servant under the PSIA, the Judge concluded that his failure to disclose his publicservant status as contemplated by the PSIA when he filed his application for the '748 patent was an untrue material allegation for thepurpose of

section 53 of the Patent Act. [30] The appellants and the intervener argue that this conclusion is wrong in law as nothing in the Patent Act requires that Mr. Brownhad to disclose his public servant status when he applied for the '748 patent. The Crown disagrees and submits that a statutoryinterpretation of both the PSIA and the Patent Act leads inescapably to the conclusion that Mr. Brown’s failure to disclose his publicservant status is a material untrue allegation pursuant to

section 53 of the Patent Act. In cross-appeal, based on a highly strict, technical,and grammatical

interpretation of

section 53 of the Patent Act, the Crown further alleges that the Judge’s factual finding that Mr. Brownmade an untrue allegation that was material suffices to void the '748 patent pursuant to

section 53 of the Patent Act and that, as such,there is no additional requirement to prove wilful intent. The Crown further submits that the Judge erred in stopping short of voiding the'748 patent under subsection 53(1) of the Patent Act. [31] The Judge correctly noted at paragraph 47 of her reasons that the present matter raises the novel issue of the relationship betweensection 4 of the PSIA and

section 53 of the Patent Act in the specific context of voiding a patent under

section 53 of the Patent Act as aresult of a contravention of

section 4 of the PSIA. I would further add that this issue is decisive in determining what obligations Mr.Brown had as a public servant pursuant to the PSIA and the Patent Act when he filed his application for the '748 patent. [32] Having identified the crux of the matter, the Judge then proceeded with her analysis as to whether Mr. Brown’s failure todisclose his public servant status constituted a material untrue allegation within the meaning of subsection 53(1) of the Patent Act.However, in performing her analysis, the Judge short circuited a crucial step. Despite acknowledging that the present matter raised theinteraction between

section 4 of the PSIA and

section 53 of the Patent Act, the Judge failed to properly conduct an analysis of this issue.A closer look at the interaction between the PSIA and the Patent Act is therefore apposite at this juncture. [33] The interaction between the PSIA and the Patent Act has to be considered in accordance with general principles of

interpretation.Specifically, statutes that are enacted by the legislature that deal with the same subject, in this case, patents, are presumed to be draftedwith one another in mind, so as to offer a coherent and consistent treatment of the subject (Sullivan, at paragraphs §15.25 and §15.37).Furthermore, the words of

an Act are to be read in their entire context, in their grammatical and ordinary sense harmoniously with thescheme of the Act, the object of the Act, and the intention of Parliament (Rizzo and Rizzo Shoes Ltd. (Re), (SCC),[1998] 1 S.C.R. 27, at paragraph 21; also Canada Trustco Mortgage Co. v. Canada, 2005 SCC 54, [2005] 2 S.C.R. 601, at paragraph10). [34] The Patent Act, unlike the Copyright Act, R.S.C., 1985, c. C-42 (subsection 13(3)), does not address the issue of ownership ofpatent rights in inventions made during the course of employment.

Given the silence of the Patent Act on this issue in the context of aprivate employment relationship, the existence of an employee-employer relationship will not necessarily disqualify an employee frompatenting an invention discovered in the course of employment. The employer can nevertheless seek ownership of the intellectualproperty rights if it can demonstrate that: (

i) there is formal agreement between the employer and the employee to the effect that theemployer retains ownership of the intellectual patent rights; or, (ii) the employee was hired for the express purpose of inventing(Comstock Canada v.

Electec Ltd. (1991), 38 C.P.R. (3d) 29 (F.C.T.D.)). [35] However, in the context of a government employment relationship, such as the one at issue, Parliament specifically enacted thePSIA in 1954 to govern inventions developed by public servants as well as the intellectual property rights that flow from the inventions.The PSIA, for the greater part, remains unchanged to this day. [36] It is trite to say that the object of the PSIA is to ensure that both inventions made and claimed by public servants as well as theirrights are vested in Her Majesty under certain conditions.

Section 3 of the PSIA entitled “Inventions vested in Her Majesty” is aptlydescriptive and states the following: Inventions vested in Her Majesty 3 The following inventions, and all rights with respect thereto in Canada or elsewhere, are vested in Her Majesty in right of Canada,namely, (

a) an invention made by a public servant while acting within the scope of his duties or employment, or made by a public servant withfacilities, equipment or financial aid provided by or on behalf of Her Majesty; and (

b) an invention made by a public servant that resulted from or is connected with his duties or employment. [My emphasis.]

[37] Accordingly, Parliament has imposed on public servant-inventors a duty to disclose their inventions to the appropriate minister(section 4 of the PSIA). Following a disclosure of the invention by the public servant-inventor and given the nature of the invention, theappropriate minister can determine whether an invention is indeed vested in Her Majesty according to the PSIA. Hence, the appropriateminister can: (

i) file an application for a patent invention vested in Her Majesty by the PSIA; or, (ii) waive, abandon or transfer all or anyof its rights in respect of that invention (sections 5, 6 and 8 of the PSIA). In order for the appropriate minister to elect the best course ofaction and fulfil his obligations under the PSIA, the disclosure of the invention by the public servant is paramount. [38] As for the Patent Act, it stands as a complete statutory scheme regarding patents (Commissioner of Patents v.

Fabwerke HoechstAktiengesellschaft Vormals Meister Lucius & Bruning, (SCC), [1964] S.C.R. 49, at page 57; Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, [2008] 3 S.C.R. 265, at paragraph 12; Apotex Inc. v. Sanofi-Aventis, 2013 FCA 186, [2015] 2F.C.R. 644, at paragraph 34). The Commissioner of Patents has no discretion to not grant a patent if all the requirements set forth underthe Patent Act are met. Subsection 27(1) of the Patent Act is clear to that effect: Commissioner may grant patents 27

(1) The Commissioner shall grant a patent for an invention to the inventor or the inventor’s legal representative if an application forthe patent in Canada is filed in accordance with this Act and all other requirements for the issuance of a patent under this Act are met. [39] Subsection 27(2) of the Patent Act sets out the content of a patent application which must contain a petition and a specification ofthe invention: 27 … Application requirements

(2) The prescribed application fee must be paid and the application must be filed in accordance with the regulations by the inventor orthe inventor’s legal representative and the application must contain a petition and a specification of the invention. [40] The regulations referred to in subsection 27(2) of the Patent Act are found in the Patent Rules, SOR/96-423. [41] In connection with the petition required by subsection 27(2) of the Patent Act,

section 77 of the Patent Rules provides that it“shall follow the form and the instructions for its completion set out in Form 3 of

Schedule 1”. Form 3 is entitled “Petition for Grant ofPatent” and specifically refers to subsection 27(2) of the Patent Act. In the present case, the appellant, Mr. Brown, used this form on theadvice of his patent agent when he filed his application for the '748 patent. Neither Form 3, nor its instructions, indicates that anindividual filing a patent application has an obligation to disclose his or her public servant status.

Form 3 and its instructions are entirelysilent in this respect. [42] However, the Public Servants Inventions Regulations, C.R.C., c. 1332, set forth a number of forms which have to be used by apublic servant filing an application for a patent, more particularly Forms 4 to 7 [in the Schedule]. As a public servant, Mr. Brown wouldhave had to make use of these forms to fulfil his obligation pursuant to subsection 4(1) of the PSIA when he applied for the '748 patent,as per

section 11 of the Public Servants Inventions Regulations, C.R.C., c. 1332. [43] A comparison of the forms under the Patent Rules and the forms under the Public Servants Inventions Regulations reveal a lackof consistency and hence a conflict regarding the required forms. Indeed,

section 77 and Form 3 [in

Schedule I] of the Patent Rules donot refer to the obligation to disclose a public servant status, whereas Forms 4 to 7 of the Public Servants Inventions Regulationsexpressly requires that one’s public servant status be disclosed. [44] Against this apparent conflict and lack of consistency between the Patent Rules and the Public Servants Inventions Regulations,a closer look at their effect is required. Significantly, a distinction must be drawn between the Patent Rules on the one hand and thePublic Servants Inventions Regulations on the other.

Pursuant to subsection 12(2) of the Patent Act, the former have the same force andeffect as if they had been enacted in the Patent Act itself: 12 … Effect

(2) Any rule or regulation made by the Governor in Council has the same force and effect as if it had been enacted herein. [45] The PSIA contains no similar provision and its regulations are therefore to be considered subordinate legislation. It follows thatdespite the apparent conflict and lack of consistency between the Patent Rules and the Public Servants Inventions Regulations, theformer carry greater weight and therefore prevail over the later.

This supports the conclusion that the failure to disclose one’s status as apublic servant does not invalidate a patent given that such disclosure is not required under either the Patent Act or its rules. [46] Looking back to past amendments to the Patent Act and the PSIA also supports the conclusion that Parliament did not intend thata patent could be void for a failure to disclose public servant status. [47] For instance,

section 47 of the Patent Act in the Revised Statutes of 1952, c. 203, under the heading “Inventions by PublicServants” addressed the rights and obligations of both public servant inventors and the Crown. At that time, no obligation was placedupon a public servant applying for a patent to disclose his or her public servant status. [48] In 1954,

section 47 of the Patent Act (1952) was repealed altogether [repealed by Public Servants Inventions Act, S.C. 1953-54,c. 40, s. 15] and the PSIA was enacted. In so doing, Parliament also enacted specific penalties under the PSIA in relation to the failure todisclose public servant status, including fines and/or imprisonment. Such penalties are not expressed as relating to or in any wayimpacting upon the validity of a patent issued if a public servant-inventor failed to comply with the PSIA. It is equally worthy of note

that the Patent Act , likewise, does not impose any penalties for a failure to disclose public servant status. [ 49 ] As a result, this review of the interaction between the PSIA and the Patent Act leads me to the following conclusion. Mr. Brown had the obligation to disclose his public servant status under subsection 4(2) of the PSIA and, in failing to do so, he became subject to penalties under

section 11 of the PSIA . However, he had no such obligation under the Patent Act when he filed his application for the '748 patent. Mr. Brown met the requirement under the Patent Act and the Patent Rules and disclosed an invention that was determined by the Patent Office to be new, not obvious and useful. The Patent Act , as a complete statutory scheme, does not in any way require that an applicant disclose public servant status, nor does it set forth any penalties for not doing so.

The PSIA itself does not even refer to the invalidation of a patent as a consequence of failing to disclose public servant status. [ 50 ] 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. [ 51 ] I would allow the appeal with costs before this Court and the Federal Court and I would dismiss the Crown’s cross-appeal with costs. I would set aside the Judge’s judgment and, rendering the judgment that the Judge should have rendered, I would dismiss the Crown’s motion for

summary judgment in its entirety. Webb J.A. : I agree. de Montigny J.A. : I agree.