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Intellectual Property Weekly Abstracts Bulletin — Week of February 15

Patent Decisions

S.53 of the Patent Act held Not to Apply when Public Servant Fails to Declare Status
Brown v. Canada, 2016 FCA 37

In this case, Brown appealed a decision of the Federal Court, partially granting summary judgment in an invalidity claim, pursuant to s. 53 of the Patent Act. The motion was granted in the Court below because the inventor was a public servant for the purposes of the Public Servants Inventions Act ("PSIA"), and did not disclose this status as required. The Judge held that this omission was an untrue allegation that was material for the purposes of section 53(1) of the Patent Act. Whether that allegation was made willfully with the purpose of misleading was left for trial. The FCA allowed the appeal.

Brown had been enrolled in the Canadian Forces Regular Force, but retired and was placed on the Supplementary Reserve, where he founded NOR, the co-plaintiff. He was then transferred to the Primary Reserve where he was remunerated for part time work for three years. Then he was released from the Primary Reserve and listed on the Supplementary Holding Reserve, where he was not on active service, and received no benefits or remuneration. While listed on the Supplementary Holding Reserve, he filed for the patent at issue.

The FCA held that the Court below had properly concluded that Brown, as a member of the Supplementary Reserve, was a public servant when he applied for the '748 Patent. The FCA held that Brown had the obligation to disclose his public servant status under the PSIA, however he had no such obligation under the Patent Act. Thus, it was an error for the Judge to conclude that Brown's failure to disclose his public servant status was an untrue and material allegation pursuant to s. 53(1) of the Patent Act. Section 53 could not be triggered in the circumstances. However, the question as to whether the intellectual property rights are vested in Her Majesty pursuant to the PSIA remains open.

Trademark Decisions

Leave Not Granted to Intervene 
Sport Maska Inc. dba Reebok-CCM Hockey v. Bauer Hockey Corp., 2016 FCA 44

This is an appeal of the Court's decision, refusing to grant Sports Maska Inc. dba Reebok-CCM Hockey (CCM) leave to intervene in proceedings between Bauer Hockey Corp (Bauer) and Easton Sports Canada Inc. (Easton). The FCA dismissed the appeal.

The underlying proceeding relates to Bauer's SKATES EYESTAY Design trademark. Easton requested the Registrar of Trademarks to issue a notice pursuant to s. 45 of the Trade-marks Act to Bauer, to furnish evidence of use of the mark. Bauer brought an action for infringement against Easton. Bauer brought a similar action against CCM. The trademark was expunged and Bauer appealed. Bauer and Easton then settled both the infringement action and the trademark expungement appeal. CCM then sought leave to intervene in the trademark expungement appeal.

The FCA summarized the law applicable to motions to intervene, and held that the criteria to be considered must remain flexible because every intervention application is different. In the end, the Court must decide if, in a given case, the interests of justice require that intervention be granted or refused. Nothing is to be gained by adding factors to respond to every novel situation. Those novel situations are covered by the question relating to the interests of justice.

The FCA concluded by analyzing both the decision below and the factors to be considered in such motions. The FCA held that although the Prothonotary had erred in his considerations, that error was inconsequential and intervention should be denied. The existence of the infringement action outweighs everything else.

Copyright Decisions

Inspection Order Granted for Property, Appeal Dismissed 
Strathearn Consulting Inc. v. Kirshenblatt, 2015 FC 1404

The underlying case relates to copyright in the design of a renovation to a residential property. Strathearn has sued the architect, for using that design in a different property. The Respondent brought a motion to inspect the Strathearn property. That motion was granted by the Prothonotary, and that decision was upheld on appeal.

The Court held that the Prothonotary understood the balancing requirements of Rule 249 and applied them to the evidence and facts before her. Furthermore, she did not exercise her discretion based on a wrong principle. The Inspection Order was not clearly wrong. Thus, the appeal was dismissed.

Other Industry News

Health Canada has published a Notice: Updates to the Guidance Document Question and Answers: Plain Language Labelling Regulations.

Health Canada has published a Draft Guidance Document: Master Files (MFs) — Procedures and Administrative Requirements.

Heath Canada has announced the Adoption of International Conference on Harmonisation of Technical Requirements for the Registration of Pharmaceuticals for Human Use (ICH) Guidance Document: Q8(R2): Pharmaceutical Development.

Health Canada has announce the Adoption of International Conference on Harmonisation of Technical Requirements for the Registration of Pharmaceuticals for Human Use (ICH) Guidance Document: Q11: Development and Manufacture of Drug Substances (Chemical Entities and Biotechnological/Biological Entities).

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