T-324-80
Kemanord AB (Plaintiff)
v.
PPG Industries, Inc., and Oronzio De Nora
Impianti Elettrochimici S.p.A. (Defendants)
Trial Division, Cattanach J.—Ottawa, March 18
and April 2, 1980.
Practice — Patents — Motion to strike out affidavit filed
with plaintiffs statement of claim and to dismiss proceedings,
or to stay proceedings pending filing by plaintiff of an affida
vit required by Rule 701(1) — Affidavit filed by plaintiff was
sworn in Sweden before a Swedish notary public — Whether
an affidavit not sworn in accordance with s. 50 of the Canada
Evidence Act is admissible in evidence — Motion dismissed —
Federal Court Rule 701(1) — Canada Evidence Act, R.S.C.
1970, c. E-10, ss. 37, 49, 50 — Federal Court Act, R.S.C.
1970 (2nd Supp.), c. 10, s. 53(1),(2) — The Evidence Act,
R.S.O. 1970, c. 151, s. 46(1) (e).
The defendant moves to strike out plaintiff's affidavit and to
dismiss these proceedings in connection with a patent conflict
action or to stay the proceedings pending the filing by the
plaintiff of an affidavit required by Rule 701(1) of the Federal
Court Rules. The plaintiff filed a statement of claim and a
photostatic copy of an affidavit sworn in Sweden before a
notary public. Section 50 of the Canada Evidence Act provides
that an oath administered by a person mentioned in section 49,
outside Canada is as valid and effectual as if administered in
Canada by a person authorized to do so under the Act. A
Swedish notary public is not included in the persons mentioned
in section 49. The issue is whether an affidavit not sworn in
accordance with the requirements of section 50 of the Canada
Evidence Act is admissible in evidence.
Held, the motion is dismissed. When there is express mention
made of certain methods of doing certain things, then any
method not mentioned is excluded. The question arises whether
section 50 of the Canada Evidence Act by specifically mention
ing persons who may administer an oath outside Canada was
intended to exclude persons not specifically mentioned. By
section 37 of the Act, the laws of evidence in the province in
which the proceedings take place shall apply "subject to this
[Act]." The only section in the Canada Evidence Act which
could be subjected to section 37 is section 50. Assuming that
the affidavit is not admissible by reason of section 50 of the
Canada Evidence Act read in conjunction with section 37 of
that Act, it is admissible under paragraph 46(1)(e) of The
Evidence Act of Ontario, and being admissible under that
statute it is admissible under subsection 53(2) of the Federal
Court Act. By virtue of subsection 53(2), evidence that would
not be admissible shall be admissible if it would be admissible
in a superior court in Ontario, "notwithstanding that it is not
admissible by virtue of section 37 of the Canada Evidence Act."
The validity of the swearing of an affidavit is part and parcel of
its admissibility.
MOTION.
COUNSEL:
J. Harding for plaintiff.
G. A. Macklin for defendant PPG Industries,
Inc.
No one appearing for defendant Oronzio De
Nora Impianti Elettrochimici S.p.A.
L. Holland for Deputy Attorney General of
Canada.
SOLICITORS:
Smart & Biggar, Ottawa, for plaintiff.
Gowling & Henderson, Ottawa, for defendant
PPG Industries, Inc.
Barri gar & Oyen, Ottawa, for defendant
Oronzio De Nora Impianti Elettrochimici
S.p.A.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: This is a motion by the defend
ant, PPG Industries, Inc., to strike out the affida
vit of Dag Stromquist and for an order dismissing
these proceedings or alternatively an order staying
these proceedings pending the filing by the plain
tiff of an affidavit required by Rule 701(1) of the
Federal Court Rules.
This motion arises in connection with conflicting
applications under section 45 of the Patent Act,
R.S.C. 1970, c. P-4. The decision of the Commis
sioner of Patents was given on July 23, 1979. A
statement of claim by the plaintiff dated January
23, was filed on that date. That was the last day
upon which the action could be commenced by
virtue of the time fixed by the Commissioner and
of which the parties were notified under subsection
45(8).
Paragraph (1) of Rule 701 provides:
Rule 701. (1) Where one of the parties to a proceeding under
the Patent Act concerning conflicting applications for patents
of invention desires to commence proceedings in the Court
(following a decision of the Commissioner as to which of the
applicants is the prior inventor) for the determination of the
respective rights of the applicants (hereinafter referred to as
"the plaintiff'), he shall do so by filing a statement of claim or
declaration in which he indicates what relief contemplated by
the Patent Act he is seeking. No such statement of claim or
declaration shall be filed unless there is filed at the same time
an affidavit of the plaintiff, or of some person who has been
personally responsible for the decision to bring the proceedings,
stating
(a) that the proceeding is not begun for the purpose of
delaying the issue of a patent, and
(b) either
(i) that no agreement or collusion relating to the subject
matter of the conflict exists between the plaintiff and any
other person interested in the conflict, or
(ii) if any such agreement or collusion exists, the substance
and particulars of the same,
and exhibiting a copy of any document or documents contain
ing any such agreement or evidencing any such collusion.
By virtue of paragraph (2) the statement of
claim and affidavit filed therewith shall be served
on the Deputy Attorney General of Canada.
There was filed simultaneously with the filing of
the statement of claim on January 23, 1980 a
photostatic copy of an affidavit sworn by Dag
Stromquist on January 16, 1980 at Stockholm,
Sweden before Ingrid Trotze-Lindh, a notary
public for Sweden under her notarial seal twice
affixed, once by way of a rubber stamp and
secondly by an impression on a wafer through
which a cord to an exhibit was attached. The
exhibit cannot be detached without breaking that
seal.
Endorsed on the photostatic copy of the affidavit
is this legend, "Copy of Original Affidavit
attached to Exhibit A in envelope".
At the same time, i.e., on January 23, 1980 a
notice of motion was filed seeking an order that
the copy of the agreement between the plaintiff
and the defendant, PPG Industries, Inc. attached
to the original affidavit of Dag Stromquist and
enclosed with the original affidavit, in the
envelope, be held in confidence by the Court and
not made available to public inspection except by
order of a Judge of the Court. This motion was
never brought on for hearing.
By letter dated March 17, 1980 and delivered by
hand on that date the solicitors for the plaintiff
withdrew the application that the exhibit to the
affidavit of Dag Stromquist be held confidential
and directed that the exhibit and the original
affidavit to which the exhibit was attached might
be removed from the sealed envelope.
By letter dated March 18, 1980 and delivered by
hand on that date the solicitors for the plaintiff
enclosed a further affidavit by Dag Stromquist
identical in content to that sworn by him on Janu-
ary 16, 1980 before a notary public in Sweden but
this affidavit was sworn on March 17, 1980 before
a notary public in Ottawa, Ontario.
I expressed reservations as to whether an affida
vit was "filed" on January 23, 1980 bearing in
mind that the affidavit was enclosed in a sealed
envelope and merely a photostat of the original
was produced.
The original affidavit was not removed from the
sealed envelope until March 18, 1980 when the
application for the order to keep the exhibit confi
dential was withdrawn by the solicitors' letter
dated March 17, 1980 to which reference has been
made. I then directed the Registrar to remove the
original affidavit together with the exhibit thereto
and place such material upon file.
It is not necessary for me to decide whether the
tender of the original affidavit enclosed as it was in
a sealed envelope together with a photostatic copy
of the affidavit could be construed as "filing"
within the meaning of Rule 701 because the
defendant attacks the validity of the affidavit not
the propriety of the filing thereof or whether it had
been "filed".
In his reasons for an order given by him in this
cause on February 22, 1980 [[1980] 2 F.C. 576]
my brother Mahoney had this to say [at page
578]:
I return to the matter of the affidavit filed with the statement
of claim. The requirement of such an affidavit, as well as that
required of a defendant, the service on the Deputy Attorney
General and the provisions of the Rules designed to expedite a
conflict action, at least in its early stages, arises out of public
policy considerations. The public policy concern stems from the
fact that the 17-year term of a patent runs from the date of its
issue. It is not inconceivable that an applicant, entitled to the
issue of a patent, might be interested in postponing the date of
issue thereby postponing the term of his monopoly. As I
indicated at the hearing of this application, these considerations
do not permit the Court to overlook matters which the parties
themselves may be disposed to overlook. I have a concern
whether an affidavit filed under Rule 701(1), which does not
meet the requirements of section 50 of the Canada Evidence
Act, R.S.C. 1970, c. E-10 is admissible in evidence and, if it is
not, whether it is an affidavit within the contemplation of the
Rule. It is a question that should be considered by the Deputy
Attorney General.
Mahoney J. directed that a copy of his reasons
should be served on the Deputy Attorney General
of Canada. He raised the question whether an
affidavit not sworn in accordance with the require
ments of section 50 of the Canada Evidence Act,
R.S.C. 1970, c. E-10 is admissible in evidence. He
raised the question but did not decide it. That
decision has now become my responsibility.
Section 50 of the Canada Evidence Act is
ranged under the title to Part III of the Act
reading: "THE TAKING OF AFFIDAVITS ABROAD".
Such a heading can be regarded as giving the key
to the interpretation of the sections ranged under
it, unless the wording is inconsistent with such
interpretation. The headings in the Canada Evi
dence Act may be utilized in its interpretation
because they are part of the body of the statute.
Section 50 so ranged reads:
50. Oaths, affidavits, affirmations or declarations adminis
tered, taken or received outside of Canada by any person
mentioned in section 49, are as valid and effectual and are of
the like force and effect to all intents and purposes as if they
had been administered, taken or received in Canada by a
person authorized to administer, take or receive oaths, affida
vits, affirmations or declarations therein that are valid and
effectual under this Act.
The persons mentioned in section 49 referred to
in section 50 are generally: (1) officers of any of
Her Majesty's diplomatic or consular services
while exercising their functions in a foreign coun
try; (2) officers of the Canadian diplomatic, consu
lar and representative services while exercising
their functions in any foreign country or in any
part of the Commonwealth and Dependent Terri
tories other than Canada as well as (3) Canadian
Government Trade Commissioners and Assistant
Trade Commissioners likewise exercising their
functions.
There is one time honoured rule of law as to the
construction of statutes which is this: that when
there is express mention made of certain methods
of doing certain things then any method not men
tioned is excluded. This is the principle expressed
in the maxim: "Expressurn facit cessare taciturn"
which has been described as a valuable servant but
a dangerous master. The generality of this maxim
renders caution necessary in its application. It is
not enough that the express and the tacit are
inconsistent but it must be clear that they reason
ably cannot be intended to co-exist.
With these established principles in mind the
question arises whether section 50 of the Canada
Evidence Act by specifically mentioning persons
who may administer an oath outside Canada was
intended to exclude persons not specifically men
tioned. Section 50 provides that an oath adminis
tered by a person mentioned in section 49 outside
Canada is as valid and effectual as if administered
in Canada by a person authorized to do so under
the Canada Evidence Act. (The only instance
where the Canada Evidence Act makes specific
provision for the administration of oaths in
Canada is in section 13 which is of limited
application.)
However section 37 under the heading: "Provin-
cial Laws of Evidence" reads:
37. In all proceedings over which the Parliament of Canada
has legislative authority, the laws of evidence in force in the
province in which such proceedings are taken, including the
laws of proof of service of any warrant, summons subpoena or
other document, subject to this and other Acts of the Parlia
ment of Canada, apply to such proceedings.
There is no question that the Parliament of
Canada has legislative control over proceedings
relating to patent matters. Therefore by section 37
the laws of evidence in the province in which the
proceedings take place (in this instance, Ontario)
shall apply, the key qualification to that applica
bility being in the words of section 37 "subject to
this [the Canada Evidence Act] and other Acts of
the Parliament of Canada".
The only section in the Canada Evidence Act
which could be subjected to section 37 (on the
facts of this motion) is section 50.
Assuming, but without deciding the question
whether section 50 is within the contemplation of
the words in section 37, "subject to this [Act]" and
thereby renders an affidavit sworn outside Canada
inadmissible in Canada unless sworn by a person
mentioned in section 49, section 53 of the Federal
Court Act, R.S.C. 1970 (2nd Supp.), c. 10,
provides:
53. (1) The evidence of any witness may by order of the
Court be taken, subject to any rule or order that may relate to
the matter, on commission, on examination, or by affidavit.
(2) Evidence that would not otherwise be admissible shall be
admissible, in the discretion of the Court and subject to any
rule that may relate to the matter, if it would be admissible in a
similar matter in a superior court of a province in accordance
with the law in force in any province, notwithstanding that it is
not admissible by virtue of section 37 of the Canada Evidence
Act.
By virtue of subsection 53(1) "evidence"
includes evidence by affidavit.
By virtue of subsection 53(2) evidence that
would not be admissible (the affidavit of Dag
Stromquist for the purposes of argument is being
assumed to be not admissible) shall be admissible
if it would be admissible in a superior court in
Ontario (as the affidavit of Dag Stromquist would
be by virtue of paragraph 46(1) (e) of The Evi
dence Act of Ontario, R.S.O. 1970, c. 151); then
follow the crucial words of subsection 53(2) "not-
withstanding that it is not admissible by virtue of
section 37 of the Canada Evidence Act".
That a person is authorized to administer an
oath is a law of evidence. It is dealt with by the
Canada Evidence Act and The Evidence Act of
Ontario. So too do sections 53 and 54 of the
Federal Court Act. If an affidavit is not sworn by
a person authorized to do so under either of the
first two statutes mentioned it is not an affidavit
properly sworn and so "inadmissible" as "evi-
dence".
In my view the concluding words of subsection
53(2) of the Federal Court Act are a saving
clause.
Accepting the assumption that the affidavit of
Dag Stromquist is not admissible by reason of
section 50 of the Canada Evidence Act read in
conjunction with section 37 of that Act it is admis
sible under paragraph 46(1) (e) of The Evidence
Act of Ontario, and being admissible under that
statute it is admissible under subsection 53(2) of
the Federal Court Act notwithstanding that it may
not have been admissible by reason of section 37 of
the Canada Evidence Act. In my view the validity
of the swearing of an affidavit is part and parcel of
its admissibility.
For the foregoing reasons the defendant's
motion is dismissed but in the circumstances pecu
liar to this motion without costs for or against
either of the parties to the motion.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.