Ottawa, Ontario, January 5, 2007
PRESENT: The Honourable Mr. Justice Martineau
BETWEEN:
and
and
DISTRIMEDIC INC.
REASONS FOR ORDER AND ORDER
[1] At issue in the present judicial review proceeding is the jurisdiction of the Commissioner of Patents (the Commissioner) and the officers or employees of the Patent Office to accept or refuse the filing or recordal of a disclaimer made or filed by a patentee. Disclaimer is a statutory mechanism whereby a patentee (or its assignee) may amend a patent to claim less than that which was claimed in the original patent. The present proceeding concerns the refusal by an officer or employee of the Patent Office to accept the filing of a disclaimer purportedly made and filed by the applicant under section 48 of the Patent Act, R.S.C. 1985, c. P-4, as amended (the Act), because the amended claim would purportedly be broader than that of which is claimed in the original patent.
[2] This case calls for a correct interpretation and application of section 48 of the Act, which reads as follows:
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48. (1) Whenever, by any mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public, a patentee has
(a) made a specification too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor, or
(b) in the specification, claimed that the patentee or the person through whom the patentee claims was the inventor of any material or substantial part of the invention patented of which the patentee was not the inventor, and to which the patentee had no lawful right,
the patentee may, on payment of a prescribed fee, make a disclaimer of such parts as the patentee does not claim to hold by virtue of the patent or the assignment thereof.
(2) A disclaimer shall be filed in the prescribed form and manner.
(3) [Repealed, 1993, c. 15, s. 44]
(4) No disclaimer affects any action pending at the time when it is made, unless there is unreasonable neglect or delay in making it.
(5) In case of the death of an original patentee or of his having assigned the patent, a like right to disclaim vests in his legal representatives, any of whom may exercise it.
(6) A patent shall, after disclaimer as provided in this section, be deemed to be valid for such material and substantial part of the invention, definitely distinguished from other parts thereof claimed without right, as is not disclaimed and is truly the invention of the disclaimant, and the disclaimant is entitled to maintain an action or suit in respect of that part accordingly. |
48. (1) Le breveté peut, en acquittant la taxe réglementaire, renoncer à tel des éléments qu’il ne prétend pas retenir au titre du brevet, ou d’une cession de celui-ci, si, par erreur, accident ou inadvertance, et sans intention de frauder ou tromper le public, dans l’un ou l’autre des cas suivants :
a) il a donné trop d’étendue à son mémoire descriptif, en revendiquant plus que la chose dont lui-même, ou son mandataire, est l’inventeur;
b) il s’est représenté dans le mémoire descriptif, ou a représenté son mandataire, comme étant l’inventeur d’un élément matériel ou substantiel de l’invention brevetée, alors qu’il n’en était pas l’inventeur et qu’il n’y avait aucun droit.
(2) L’acte de renonciation est déposé selon les modalités réglementaires, notamment de forme.
(3) [Abrogé, 1993, ch. 15, art. 44]
(4) Dans toute action pendante au moment où elle est faite, aucune renonciation n’a d’effet, sauf à l’égard de la négligence ou du retard inexcusable à la faire.
(5) Si le breveté original meurt, ou s’il cède son brevet, la faculté qu’il avait de faire une renonciation passe à ses représentants légaux, et chacun d’eux peut exercer cette faculté.
(6) Après la renonciation, le brevet est considéré comme valide quant à tel élément matériel et substantiel de l’invention, nettement distinct des autres éléments de l’invention qui avaient été indûment revendiqués, auquel il n’a pas été renoncé et qui constitue véritablement l’invention de l’auteur de la renonciation, et celui-ci est admis à soutenir en conséquence une action ou poursuite à l’égard de cet élément.
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[3] Subsection 48(2) of the Act as enacted by S.C. 1993, c. 15 (in force October 1, 1996: see SI / 96-81) replaces previous subsections 48(2) and (3). The latter subsection was repealed by the c. 15 amendment. It has been held under the pre-1993 amendment version of subsection 48 (formerly section 51 of the Patent Act, R.S.C. 1970, c. P-4) that the Commissioner has no discretion to refuse entry or recordal of a disclaimer. As stated by the Federal Court of Appeal, this provision “does not empower the Commissioner to make any decision; nor does it vest him with any discretion; it merely imposes on him the duty to record certain documents. If the Commissioner fails in that duty, mandamus lies against him” [emphasis added]: Monsanto Co. v. Commissioner of Patents (1976), 28 C.P.R. (2d) 118 at 119 (F.C.A) [Monsanto Appeal].
[4] I note in this regard that the judgment rendered in 1975 by the trial judge in the Monsanto case (Monsanto Co. v. Commissioner of Patents (1975), 18 C.P.R. (2d) 170 [Monsanto Trial]) was set aside by the Federal Court of Appeal, which clearly dismissed the views taken below that “it was not the intention of Parliament to cast upon the Commissioner an imperative duty to file and record all documents purporting to be disclaimers” (at 184) and that, before recording a disclaimer, the Commissioner “has to determine whether the proffered document is in fact a disclaimer within the scope of the section, whether the conditions for its recording have been met, and (…) whether it definitely distinguishes the part of the invention that is not disclaimed and is truly the invention of the disclaimant from other parts thereof claimed without right…” (at 186). These views were based on the supposition that the Commissioner was called upon to make a decision, i.e. some sort of factual and legal determination. It must be remembered that the trial judge’s erroneous conclusion to the effect that the Commissioner was under an implied duty to act judicially in making a decision in respect of a disclaimer was based on the trial judge’s view “that the determination of such questions, a determination which can affect the legal right of the disclaimer, is far from a mechanical or purely ministerial operation, it requires the application of legal rules and objective standards to the facts, as opposed to subjective standards of policy or expediency or administrative discretion…” (at 186). It is apparent that the trial judge endorsed the interpretation given by the Commissioner to former section 51 “that it cannot be used as a means of reformulating claims” and that “it cannot be contemplated that it was the intention of Parliament that patentees could use s. 51 as a back door to avoid the duties of the Commissioner to protect the public interest in seeing that claims for which a monopoly is granted by the State are ones that properly and clearly disclose patentable inventions” (at 177). The Federal Court of Appeal clearly rejected these views and decided that the provision in question did not empower the Commissioner to make any decision.
[5] I note that despite having ample opportunity to do so since Monsanto, Parliament has chosen not to amend the Act by giving the Commissioner explicit jurisdiction to make factual or legal determinations in the case of disclaimers or to refuse to accept the filing or recordal of a disclaimer submitted in the proper form and manner. I also note that under the 1985 version of the Act, former subsection 48(3), which was repealed in 1993, required that a disclaimer be “filed and recorded”. Subsection 48(2) of the Act now provides that a disclaimer need only be “filed in the prescribed form and manner”.
[6] In this regard, section 44 of the Patent Rules, SOR/96-423 (the Rules) prescribes the form and manner in which the disclaimer shall be made:
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44. A disclaimer pursuant to section 48 of the Act or of the Act as it read immediately before October 1, 1989 shall follow the form and the instructions for its completion set out in Form 2 of Schedule I to the extent that the provisions of the form and the instructions are applicable. |
44. L'acte de renonciation visé à l'article 48 de la Loi ou de la Loi dans sa version antérieure au 1er octobre 1989 est établi selon la formule 2 et les instructions connexes figurant à l'annexe I, dans la mesure où les dispositions de cette formule et ces instructions s'y appliquent.
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[7] Form 2 of Schedule I contains the following form of disclaimer and instructions:
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Disclaimer
1. The patentee of Patent No. ____________, granted on ________ for an invention entitled ____________, has, by mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public,
(a) made the specification too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the (first) inventor; or
(b) in the specification, claimed that the patentee or the person through whom the patentee claims was the (first) inventor of any material or substantial part of the invention patented of which the patentee was not the (first) inventor, and to which the patentee had no lawful right.
2. The name and complete address of the patentee is ___________.
3. (1) The patentee disclaims the entirety of claim ___________.
(2) The patentee disclaims the entirety of claim ____________ with the exception of the following: ____________.
Instructions
In section 1, the word "first" may be included only for patents issued on the basis of an application filed before October 1, 1989.
In section 2, the name and address must be presented in the following order with a clearly visible separation between the various elements: family name (in capital letters), given name(s), initials, street name and number, city, province or state, postal code, telephone number, fax number and country.
With respect to each claim covered by the disclaimer, the patentee shall include in the disclaimer either subsection 3(1) or (2). |
Acte de renonciation
1. Le titulaire du brevet no _____________________, accordé le _________________ pour une invention ayant pour titre ______________________, a par erreur, accident ou inadvertance et sans intention de frauder ou de tromper le public :
a) donné trop d'étendue au mémoire descriptif en revendiquant plus que la chose dont lui-même ou son mandataire (la personne par l'entremise de laquelle il revendique) est l' (le premier) inventeur;
b) dans le mémoire descriptif, s'est représenté ou a représenté son mandataire (la personne par l'entremise de laquelle il revendique) comme étant l' (le premier) inventeur d'un élément matériel ou substantiel de l'invention brevetée, alors qu'il n'en était pas l' (le premier) inventeur et qu'il n'y avait (légalement) aucun droit.
2. Le nom et l'adresse complète du breveté sont : ____________________.
3. (1) Le breveté renonce à l'intégralité de la revendication suivante : ____________.
(2) Le breveté renonce à l'intégralité de la revendication suivante : ________________ à l'exception des éléments suivants : ________________.
Instructions
Dans l'article 1, les expressions « la personne par l'entremise de laquelle il revendique », « le premier » et « légalement » ne peuvent être utilisées qu'à l'égard des brevets délivrés au titre d'une demande déposée avant le 1er octobre 1989.
Dans l'article 2, les nom et adresse sont présentés dans l'ordre suivant, les divers éléments étant bien séparés : nom de famille (en majuscules), prénom(s), initiales, numéro civique, rue, ville, province ou État, code postal, numéro de téléphone, numéro de télécopieur et pays.
Pour chaque revendication visée par l'acte de renonciation, le breveté inclut dans l'acte de renonciation soit le paragraphe 3(1), soit le paragraphe 3(2). |
[8] In addition, the fee payable in relation to a disclaimer is found under item 13 of Schedule II of the Rules, which indicates that a fee of $100.00 is payable “[o]n making a disclaimer to a patent under section 48 of the Act, or of the Act as it read immediately before October 1, 1989”.
[9] A patent shall, after a disclaimer has been filed in the prescribed form and manner, be deemed to be valid for such material and substantial part of the invention, definitely distinguished from other parts therefore claimed without right (as is not disclaimed and is truly the invention of the disclaimant). The disclaimant is entitled to maintain an action or suit in respect of that part accordingly (subsection 48(6) of the Act). The disclaimer is unconditional; the existing claims of the patent are the claims as amended by virtue of the disclaimer, and the only invention protected by the letters patent is that which is defined by such existing claims: Canadian Celanese Ltd. v. B.V.D. Co. Ltd., [1939] 2 D.L.R. 289 at 294. It has also been held that where a disclaimer has been entered, it does not matter that as a result, two or more claims have the same scope, nor that the patent including the disclaimer is not the same invention as was originally patented: Cooper & Beatty Ltd. v. Alpha Graphics Ltd. (1980), 49 c.p.r. (2d) 145 at 163-164 (F.C.T.D.). That being said, no disclaimer affects any action pending at the time when it is made, unless there is unreasonable neglect or delay in making it (subsection 48(4) of the Act): see Canadian Celanese Ltd., above, at 293-295.
[10] Therefore, once a disclaimer filed with the Patent Office has been submitted in the proper form and manner, and the prescribed fee has been paid, the Commissioner has no discretion to refuse entry or recordal of same (Monsanto Appeal, above); but the propriety or validity of such disclaimer may be reviewed by the Court if the patent is litigated: ICN Pharmaceuticals, Inc. v. Canada (Patented Medicine Prices Review Board), (1996) 200 N.R. 376 at para. 70 (F.C.A.); Trubenizing Process Corp. v. John Forsyth Ltd., (1941), 2 C.P.R. 89 at 105, 2 Fox Pat. C. 11 (Ont. H.C.J.), aff’d (1942), 2 C.P.R. 89, [1942] 2 D.L.R. 539 (Ont. C.A.), rev’d on other grounds (1943), 3 C.P.R. 1, [1943] 4 D.L.R. 577 (S.C.C.). Accordingly, a party to an action or a proceeding instituted under the Act in respect of a patent is free to attack the validity of a disclaimer and amended claims in the patent on the ground that the requirements mentioned at section 48 of the Act have not all been satisfied by the disclaimant. For instance, it could be submitted that contrary to what is stated in the disclaimer, the patentee knowingly made a specification in the patent that was too broad, or reformulated the invention in the disclaimer in order to claim more than what has actually been claimed in the patent issued.
[11] With this legal framework in mind, I will now review the relevant facts leading to the present judicial review application.
[12] Patent No. 2,207,045, entitled “Kit and Process for the Manufacture of a Set of Individual Pill Containers”, was issued on June 1, 1999. The original assignee of the patent, Dispill Inc. (Dispill), assigned the patent to the applicant, Richards Packaging Inc., on July 29, 2005. Through their representatives and agents, on November 8, 2005, the applicant filed with the Patent Office a document dated November 2, 2005, entitled “Disclaimer with respect to Canadian Patent No. 2,207,045” (the applicant’s disclaimer). Accompanying the applicant’s disclaimer was a covering letter dated November 7, 2005, addressed to the Commissioner asking that “recordal of this Disclaimer be expedited” and authorizing the levy of the prescribed fee of $100.00 from the account indicated in same.
[13] I note that the applicant’s disclaimer is made in the form and manner prescribed by section 44 of the Rules. First, paragraph 1 of the applicant’s disclaimer repeats the exact wording mentioned at paragraph 1 of form 2 of Schedule I:
1. The patentee of Patent No. 2,207,045 granted on June 1, 1999, for an invention entitled “Kit and Process for the Manufacture of a Set of Individual Pill Containers”, has, by mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public,
(a) made the specification too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor; or
(b) in the specification, claimed that the patentee or the person through whom the patentee claims was the inventor of any material or substantial part of the invention patented of which the patentee was not the inventor, and to which the patentee had no lawful right.
[14] Second, paragraph 2 of the applicant’s disclaimer provides the name and complete address of the applicant.
[15] Third, paragraph 3 and paragraphs 5 to 9 of the applicant’s disclaimer use the same introductory wording mentioned at paragraph 3(2) of Form 2 of Schedule I, which is selected when the patentee wishes to disclaim only a portion of a claim. Paragraph 4 of the applicant’s disclaimer uses the introductory wording of paragraph 3(1) of Form 2, which is selected when the patentee wishes to disclaim the entirety of a claim. In fact, the applicant disclaims the entirety of claims 15 to 21 of the patent, with the exception of what is stated to be of a narrower scope at paragraphs 3 to 9 of the applicant’s disclaimer.
[16] Therefore, it is clear upon a plain reading of the document filed on November 8, 2005 with the Patent Office, that it is a “disclaimer”. However, as we will see below, the validity of the claims made in the original patent and the exact scope and legal effects of the applicant’s disclaimer have been the object of disagreement and litigation between the parties.
[17] In the original patent, claim 15 reads as follows:
15. A kit for the manufacture of a set of individual pill containers, said kit comprising:
a) a container-defining sheet made of a plastic material, said container-defining sheet having a top surface comprising a given number of evenly spaced apart cavities embossed therein, each of said cavities being upwardly opened and thus defining a container, each of said containers being surrounded by a flange of a given width provided with a central dotted line punched therein, said dotted lines provided in all of said flanges making it possible to detach each of the containers from the container-defining sheet and from the adjacent containers;
b) a recessed support having a top surface provided with a number of recesses at least equal to the number of cavities embossed in the container-defining sheet, said recesses being positioned, shaped and sized to receive the containers defined by said cavities embossed in the container-defining sheet;
c) a container-sealing sheet shaped and sized to cover at least all the containers and surrounding flanges of the container-defining sheet, said container-sealing sheet being provided with tearing lines making it possible to tear said container-sealing sheet into a number of cover pieces corresponding to the number of said containers; and
d) positioning means provided on at least the top surface of the container-defining sheet and on the container-sealing sheet to ensure that, in use, after the container-defining sheet is fitted onto the recessed support, the container-sealing sheet is properly positioned on top of the top surface of the container-defining sheet with its tearing lines in exact superposition on top of the dotted lines of the container-defining sheet,
wherein the positioning means comprises at least one upwardly projecting protuberance provided on the top surface of the recessed support, at least one hole provided into the container-defining sheet and at least one other hole provided in the container-sealing sheet, said at least one hole and one other hole being sized and positioned to correspond to and be engaged by said protuberance [emphasis added].
[18] On the other hand, at paragraph 3 of the applicant’s disclaimer, the patentee disclaims the entirety of claim 15, with the exception of the following:
15. A kit for the manufacture of a set of individual pill containers, said kit comprising:
a) a container-defining sheet made of a plastic material, said container-defining sheet having a top surface comprising a given number of evenly spaced apart cavities embossed therein, each of said cavities being upwardly opened and thus defining a container, each of said containers being surrounded by a flange of a given width provided with a central dotted line punched therein, said dotted lines provided in all of said flanges making it possible to detach each of the containers from the container-defining sheet and from the adjacent containers;
b) a recessed support having a top surface provided with a number of recesses at least equal to the number of cavities embossed in the container-defining sheet, said recesses being positioned, shaped and sized to receive the containers defined by said cavities embossed in the container-defining sheet;
c) a container-sealing sheet having a top surface and a bottom surface and being shaped and sized to cover at least all the containers and surrounding flanges of the container-defining sheet, the bottom surface of said container-sealing sheet having bands that are positioned, shaped and sized to exactly correspond to and fit over the flanges of the container-defining sheet, with at least said bands being covered with a self-adhesive material which is covered until use by a protective peelable paper covering, and said container sealing sheet being provided with tearing lines making it possible to tear said container-sealing sheet into a number of cover pieces corresponding to the number of said containers; and
d) positioning means provided on at least the top surface of the container-defining sheet and on the container-sealing sheet to ensure that, in use, after the container-defining sheet is fitted onto the recessed support, the container-sealing sheet is properly positioned on top of the top surface of the container-defining sheet, with its tearing lines in exact superposition on top of the dotted lines of the container-defining sheet,
wherein the positioning means comprises at least one upwardly projecting protuberance provided on the top surface of the recessed support and engaging means provided on the container-defining sheet and other engaging means provided on the container-sealing sheet, said engaging means and other engaging means being sized and positioned to correspond to and be engaged by said protuberance.
[19] Following the filing of the applicant’s disclaimer, their representatives and agents were advised by letter dated November 23, 2005, signed by Line Roussel, Head Exam Support, Team 3 & 4, Canadian Intellectual Property Office (CIPO), of the following:
Reference is made to your letter dated November 8, 2005, filing a Disclaimer on the Patent mentioned above.
Your disclaimer request has been referred to the examiner in charge of the class of the invention involved.
[20] Despite the indication made in the second paragraph of the letter quoted above, the applicant’s disclaimer was not analysed by the examiner in charge of the class of the invention involved. Indeed, according to the answer provided by Louis-Pierre Riel, a Senior Patent Examiner with the Patent Office, who was cross-examined on June 13, 2006, “when you have a disclaimer … this goes to a specific person who is treating these types of cases…”. The specific person for such cases was apparently Felix Dionne, Patent Project Officer, Patent Branch (Dionne), who refused the applicant’s disclaimer by letter dated December 20, 2005 (the impugned decision).
[21] The impugned decision reads as follows:
YOU ARE HEREBY NOTIFIED OF A LETTER WRITTEN IN ACCORDANCE WITH SUBSECTION 48(2) OF THE PATENT ACT REGARDING THE PRESCRIBED FORM AND MANNER FOR DISCLAIMER.
Correspondence, requesting that a disclaimer for Patent # 2,207,045 be recorded, was received in the Patent Office on November 8, 2005 in the name of Richards Packaging Inc.
Subsection 49(2) of the Patent Act sets out that the disclaimer must be filed in the prescribed form.
In submitted Form 2, the patentee has completed part 3(2) which is selected when the patentee wishes to disclaim only a portion of a claim. In this instance, Part 3(2) of the form disclaims the entirety of claims 15 to 21 with the exception of what is alleged to be subject matter of narrower scope. However, after reviewing the alleged disclaimer, this does not appear to be the case.
Amended independent claim 15, part (c), is more specific than the claim in the original patent, but the inclusion of the expression “engaging means,” following part (d), renders the whole claim broader than originally allowed. The original claim recited “at least one hole” and “at least one other hole being sized and positioned to correspond to and be engaged by said protuberance.” The expression “engagement means” can include subject matter other than a hole, for example, a depression or a recess.
Consequently, the amendment of claim 15 would result in claiming more than what is currently protected in the claims of the patent. Therefore, Form 2 cannot be considered a disclaimer and is refused.
For the reasons above, the requested correction has not been entered. The fee was levied for the consideration of matter by the Patent Office and is non refundable under Section 4 of the Patent Rules [emphasis added].
[22] On January 18, 2006, the applicant filed before this Court an application for judicial review of the impugned decision seeking a writ of mandamus against the Commissioner, certain declaratory relief and any other order this Court sees just to make in the circumstances. The Attorney General of Canada was designated as sole respondent in the notice of application. In same, the applicant requested that the Commissioner send a certified copy of the original file pertaining to the applicant’s disclaimer. Coincidently, by letter dated January 20, 2006, the applicant’s representatives and agents were advised by the Patent Office that a letter had been filed by Ogilvy Renault LLP (Ogilvy) on or around December 21, 2005 against the entering of the applicant’s disclaimer. While the letter dated December 21, 2005 was not sent on behalf of Distrimedic Inc. (Distrimedic), Ogilvy is currently acting as its counsel in parallel legal proceedings in which the applicant is a co-defendant with Dispill and also a plaintiff by counterclaim against Distrimedic (Court file No. T-1591-05). The Ogilvy letter was put on the public record by the Patent Office. On February 27, 2006, Prothonotary Richard Morneau allowed a motion made by Distrimedic to be added as a respondent in the present judicial review proceeding (Richards Packaging Inc. v. Attorney General of Canada, 2006 FC 257).
[23] At this point, I note that on December 1, 2005, following the filing with the Patent Office of the applicant’s disclaimer, but prior to the making of the impugned decision, the applicant filed before the Court a statement of defence and counterclaim in which it contends that various claims in the patent are valid and that Distrimedic infringed these claims. Its allegations rely in large part on the applicant’s disclaimer, filed on November 8, 2005. Following a motion to strike brought by Distrimedic, on June 29, 2006, Prothonotary Morneau ordered that the paragraphs of the applicant’s defence and counterclaim making reference to the applicant’s disclaimer be struck out. Although this Court had not yet addressed the legality of the impugned decision, Prothonotary Morneau nevertheless concluded that “this notice of application for judicial review does not for the time being change the fact that there is no valid disclaimer now affecting the patent ’045 claims” (Distrimedic Inc. v. Dispill Inc., 2006 FC 832 at para. 38) [emphasis added]. On October 17, 2006, my colleague Justice Max M. Teitelbaum maintained Prothonotary Morneau’s order on appeal and agreed “that until the issue of the validity and effect of the disclaimer has been judicially reviewed, the references to the disclaimer should be struck out of the Defence and Counterclaim on the grounds that they are immaterial and frivolous pursuant to Rule 221(1)(b) and (c) of the Federal Court Rules” [emphasis added] (Distrimedic Inc. v. Dispill Inc., 2006 FC 1229 at para. 56). That being said, Justice Teitelbaum indicated, at paragraph 54, that should the applicant “be successful in that judicial review proceeding, they may then move this Court to allow them to amend their pleadings to reintroduce allegations based on the disclaimer into the Defence and counterclaim”.
[24] The present judicial review application was heard before me on November 15, 2006. Having heard counsel and read their written arguments and considered the relevant case law, I accept the applicant’s submissions to the effect that: 1) Dionne had no jurisdiction under the Act and the Rules either by way of delegation or otherwise to examine the applicant’s disclaimer and to make the impugned decision; and 2) that the Commissioner is not empowered under the Act and the Rules to refuse the filing or recordal of the applicant’s disclaimer that was filed on November 8, 2005 in the prescribed form and manner, as provided by subsection 48(2) of the Act and section 44 of the Rules. Neither the Commissioner nor Dionne had jurisdiction under the Act and the Rules to question the validity of the applicant’s disclaimer and to render a decision on its scope and legal effect. The Patent Office had the duty to enter the applicant’s disclaimer on the public record. The present finding is consistent with the relevant case law on the subject matter (see the cases cited, above). Given my conclusion on the jurisdictional issue, it is not necessary to examine the procedural fairness or bias issue raised subsidiarily by the applicant in its memorandum in relation to the circumstances surrounding the filing by Ogilvy, on or around December 21, 2005, of a letter protesting against the entering of the applicant’s disclaimer. This letter was sent following various inquiries and communications with CIPO personnel in December 2005, prior to the making of the impugned decision.
[25] Distrimedic has taken the view that in light of certain policy considerations, the Court would be justified in recognizing the right of the Commissioner or of the lawful delegate of the Commissioner to make factual and legal determinations with respect to disclaimers. As stated by the Supreme Court of Canada “[t]he scope of patent protection must not only be fair, it must be reasonably predictable” (Free World Trust v. Électro Santé Inc., 2000 SCC 66, [2000] 2 S.C.R. 1024 at para. 41). Accordingly, Distrimedic submits that the Court’s adoption of the applicant’s position would render patents unfair, impossible to predict and make them a “public nuisance”. Potential competitors of the patentee would be in a constant state of uncertainty with respect to the scope of the patent, since the patentee could broaden the claims at any time by way of a document purporting to be a disclaimer. In my opinion, this Court cannot rely on valid policy considerations to substitute itself for Parliament. Canadian patent law is entirely statutory. A person’s right to obtain a patent, as well as the requirements an applicant must satisfy to do so, arise solely from the Act and the Rules promulgated thereunder (see Dutch Industries Ltd. v. Canada (Commissioner of Patents), (2001) 14 C.P.R. (4th) 499 (F.C.T.D.), appeal allowed in part (2003), 24 C.P.R. (4th) 157 (F.C.A.), and also Johnson & Johnson Inc. v. Boston Scientific Ltd., 2004 FC 1672, [2005] 4 F.C.R. 110 at paras. 5-14, appeal allowed on the limited ground that after the judgment of the Federal Court in this instance, Parliament adopted subsection 78.6 (1) of the Patent Act, R.S.C. 1985, c. P-4 to alleviate the effect of Dutch Industries retroactively, 2006 FCA 195, 351 N.R. 87 at paras. 4-6 (F.C.A.).
[26] Indeed, the Act and the Rules specify all aspects of the application process and delineate the role and powers of the Commissioner in receiving and processing patent applications and in issuing patents. Discretion exists, when it exists, by the operation of the law alone. For instance, the Commissioner is given explicit discretion under subsection 28(2) of the Act to backdate a fee payment for the purpose of subsection 28(1) of the Act. Under subsection 35(2) of the Act, the Commissioner may require an applicant for a patent to make request for examination pursuant to subsection 35(1) of the Act. In such a case, the application is “examined by competent examiners to be employed in the Patent Office for that purpose”. The scope of such examination is regulated by sections 28 to 30 of the Rules. However, no provision exists in the Act or the Rules to allow the Commissioner to refer a disclaimer to an examiner, nor to reject a disclaimer or to refuse to record a disclaimer having been filed by a patentee with the Patent Office in the form and manner provided in the Act and the Rules.
[27] The failure to expressly mention the Commissioner or the examiner in section 48 of the Act does not appear to be the result of careless drafting or inadvertence by Parliament. Specifically, there are various statutory methods under the Act whereby an issued patent may be amended: 1) Clerical errors may be corrected with the permission of the Commissioner under section 8 of the Act; 2) Upon receipt of a request satisfactorily identifying the prior art and the manner of applying it, upon conclusion of re-examination, a patent in the manner indicated at section 48.4 of the Act shall be issued by the re-examination board established by the Commissioner; 3) A defective or inoperative patent may be surrendered and caused to be reissued by the Commissioner under section 47 of the Act for the then unexpired term for which the original patent was granted; and 4) Subsections 48(1) and (5) of the Act entitle a patentee or its assignee, on payment of the prescribed fee, to disclaim anything included in the patent by mistake, accident or inadvertence at anytime during the term of the patent. In this regard, contrary to the aforementioned provisions dealing with the correction of clerical errors, the re‑examination of a patent on the basis of prior art and the reissue of a defective or inoperative patent, section 48 of the Act confers no discretion to the Commissioner or an examiner to make any inquiry or to take any decision with respect to a disclaimer that has been submitted by a patentee for filing in the prescribed form and manner.
[28] There is no inherent discretion granted to the Commissioner or an examiner to refuse to accept the filing or recordal of the applicant’s disclaimer. As already indicated, their powers flow exclusively from statute or valid regulations adopted by the Governor in Council. The Commissioner and the examiners have simply no authority under the Act and the Rules to make a decision on the validity of a disclaimer filed by a patentee (Monsanto Appeal, above, at para. 3). This is a power that therefore belongs to the courts and that may be exercised by them in the context of an action or proceeding under the Act respecting the patent in issue. In this regard, a judicial review proceeding under sections 18 and 18.1 of the Federal Courts Act, R.S.C. 1985, c. F-7, is not the proper vehicle to obtain a judicial declaration as to the validity or invalidity of a disclaimer filed by a patentee with the Patent Office. For example, the impugned decision asserts that by changing “at least one hole” to “engaging means” in a section of claim 15 of the disclaimer, the patent has been broadened to include subject matter other than a hole. However, this issue must be left to a trial judge to decide with the assistance of experts. A case in point is a decision of the Supreme Court of Canada, submitted by the applicant, that purportedly found that a recess and a hole fulfill exactly identical functions (see Lightning Fastener Co. v. Colonial Fastener Co. [1933] S.C.R. 377 at 379). It is not the function of this Court in the present judicial review proceeding to make any final determination on this contested issue.
[29] If the applicant is allowed in the future to amend its defence and counterclaim, the Court, with the assistance of experts, may also eventually be called upon in file no. T-1591-05, to assess the effects of the limitations added in the applicant’s disclaimer with respect to claim 15, that is:
a container-sealing sheet having a top surface and a bottom surface and being shaped and sized to cover at least all the containers and surrounding flanges of the container-defining sheet, the bottom surface of said container-sealing sheet having bands that are positioned, shaped and sized to exactly correspond to and fit over the flanges of the container-defining sheet, with at least said bands being covered with a self-adhesive material which is covered until use by a protective peelable paper covering, and said container sealing sheet being provided with tearing lines making it possible to tear said container-sealing sheet into a number of cover pieces corresponding to the number of said containers.
[30] Here, Dionne engaged in a comparative analysis of claim 15 and paragraph 3 of the applicant’s disclaimer respecting claim 15 and concluded that the amendment would result in claiming more than what is currently protected in the claims of the patent. This is undoubtedly a factual and legal determination on the merit of the disclaimer filed on November 8, 2005. This finding served as a basis for Dionne to illegally refuse the filing or recordal of the applicant’s disclaimer.
[31] In conclusion, the words of section 48 of the Act are clear and unambiguous. Their grammatical and ordinary sense accord with the scheme of the Act, the object of the Act, and the clear intention of Parliament to limit here the jurisdiction of the Commissioner in the manner already indicated in the present reasons and in the applicable case law. In the exercise of the discretion and powers granted to the Court under subsections 18.1(3) and (4) of the Federal Courts Act, the impugned decision is set aside and the applicant is entitled to a declaration that the applicant’s disclaimer was filed and effective as of its filing date of November 8, 2005, subject to its propriety or validity being questioned before a court of competent jurisdiction in an action or proceeding under the Act respecting the patent in issue. In view of the foregoing, it is not necessary to issue a writ of mandamus. Moreover, in light of the general result of this proceeding and after considering the positions taken in this case by both the Attorney General of Canada and Distrimedic, the applicant is awarded costs against both respondents individually.
ORDER
THIS COURT DECLARES AND ORDERS that:
1. The decision reported by letter dated December 20, 2006 refusing the filing or recordal of the applicant’s disclaimer is set aside;
2. The applicant’s disclaimer was filed and effective as of its filing date of November 8, 2005, subject to its propriety or validity being questioned before a court of competent jurisdiction in an action or proceeding under the Act respecting the patent in issue;
3. Costs of this application are awarded to the applicant against both respondents individually.
FEDERAL COURT
NAME OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-92-06
STYLE OF CAUSE: RICHARDS PACKAGING INC. and
ATTORNEY GENERAL OF CANADA
AND DISTRIMEDIC INC.
PLACE OF HEARING: Toronto, Ontario
DATE OF HEARING: November 15, 2006
APPEARANCES:
Dale E. Schlosser FOR APPLICANT
Shane D. Hardy
Jacqueline Dias-Visca FOR RESPONDENT
(Attorney General of Canada)
George R. Locke FOR RESPONDENT
Louis Gratton (Distrimedic Inc.)
SOLICITORS OF RECORD:
Lang Michener LLP FOR APPLICANT
Toronto, ON
John H. Sims, Q.C. FOR RESPONDENT
Deputy Attorney General of Canada (Attorney General of
Toronto, ON Canada)
Ogilvy Renault LLP / S.E.N.C.R.L., s.r.l. FOR RESPONDENT
(Distrimedic Inc.)