T-1138-89
Ray B. Love, Safecool Incorporated and Numor
Systems Company (Applicants)
v.
Marcel Claveau, Numor Coolant Technologies
Ltd., and Commissioner of Patents (Respondents)
INDEXED AS: LOVE V. CLAVEAU (T.D.)
Trial Division, Dubé J.—Montréal, October 10;
Ottawa, October 18, 1989.
Federal Court jurisdiction — Trial Division — Patent Act,
s. 52 empowering Court to expunge "any entry in the records
of the Patent Office relating to the title to a patent" — Broad
enough to include any entry relating to title to patent, whether
patent issued or pending — Includes assignments of right to
obtain patent.
Patents — Practice — Originating motion proper procedure
for application to expunge assignee of patent application from
records of patent office under Patent Act, s. 52 — Also
appropriate where application under Federal Court Act, s. 18
other than for declaratory relief pursuant to R. 603.
The respondents filed a conditional appearance to object to
the jurisdiction of the Court and the improper commencement
of the proceedings. The applicants brought an originating
motion to expunge from the records of the Canadian Patent
Office Numor Coolant Technologies Ltd. as assignee of patent
application no. 552,339 under the Patent Act, section 52.
Alternatively, certiorari was sought to quash the Commission
er's decision whereby the assignment of the application was
recorded. The applicants alleged that the purported assignment
was a forgery and that the respondents were therefore not
assignees. Section 52 provides that the Federal Court has
jurisdiction to expunge "any entry in the records of the Patent
Office relating to the title to a patent". The issue was whether
section 52 limits the Court's jurisdiction to a patent which has
been issued or whether it is broad enough to include any entry
relating to a pending application for a patent.
Held, the Court has jurisdiction to order Numor Coolant
Technologies Ltd. expunged as assignee of the patent
application.
Section 52 is the last section under the title "Assignments
and Devolutions". Section 52, properly read within the scheme
of the Assignments and Devolutions chapter of the Patent Act,
means that the Court may order that any entry in the records
be varied or expunged as long as the entry relates to the title to
a patent. That necessarily includes assignments of a right to
obtain a patent. All assignments, although dealt with separately
in sections 49 and 50, are grouped together in section 51, and
remain so grouped in the culminating section 52.
Alternatively, the Court has jurisdiction to order the
expungement of the entry under section 18 of the Federal
Court Act.
Under Rule 603, proceedings under section 18, other than
proceedings for declaratory relief may be brought by an origi
nating motion. As the plaintiff is seeking expungement, an
originating motion is also the proper vehicle under section 52.
This was not a matter for a provincial superior court, which
could not order a federal board to deal with the matter.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Federal Court Act, R.S.C., 1985, c. F-7, s. 18.
Federal Court Rules, C.R.C., c. 663, RR. 401, 603.
Patent Act, R.S.C. 1970, c. P-4, ss. 53, 54.
Patent Act, R.S.C., 1985, c. P-4, ss. 49, 50, 51, 52.
Trade-marks Act, R.S.C., 1985, c. T-13, s. 58.
CASES JUDICIALLY CONSIDERED
CONSIDERED:
Clopay Corp. & Canadian General Tower Ltd. v. Meta-
lix Ltd. (1960), 34 C.P.R. 232; 20 Fox Pat. C. 110; affd
[ 1962] S.C.R. viii; (1961), 39 C.P.R. 23; 22 Fox. Pat. C.
2; Cellcor Corp. of Canada Ltd. v. Kotacka, [1977] 1
F.C. 227; (1976), 14 N.R. 204; 27 C.P.R. (2d) 68 (C.A.);
Pitney Bowes Inc. v. Yale Security (Canada) Inc. et al.
(1987), 15 C.P.R. (3d) 3; 11 C.I.P.R. 171; (1987), 9
F.T.R. 58 (F.C.T.D.); revd in part (1987), 80 N.R. 267;
(1987), 13 F.T.R. 233 (note) (F.C.A.).
COUNSEL:
Anthony George Creber for applicants.
David L. Cameron for respondents.
SOLICITORS:
Gowling, Strathy & Henderson, Ottawa, for
applicants.
Clark Woods Rochefort Fortier, Montreal,
for respondents.
The following are the reasons for order ren
dered in English by
Dust. J.: By leave of the Court under Rule 401
[Federal Court Rules, C.R.C., c. 663] the
respondents filed a conditional appearance for the
purpose of objecting to the jurisdiction of the
Court and the improper commencement of the
proceedings.
The applicants' originating motion sought an
order pursuant to section 52 of the Patent Act
(R.S.C., 1985, c. P-4) directing that the entry in
the records of the Canadian Patent Office of
respondent Numor Coolant Technologies Ltd., as
assignee of Canadian Patent Application no.
552,339, be expunged and struck out. In the alter
native, the applicants' motion sought a writ of
certiorari pursuant to section 18 of the Federal
Court Act [R.S.C., 1985, c. F-7] to review and
quash the decision of the Commissioner of Patents,
dated April 18, 1989, by which the Commissioner
recorded the respondent, Numor Coolant Tech
nologies Ltd., as assignee of the said application.
The applicants claim that a document was regis
tered by the Canadian Patent Office on April 18,
1989, recording respondent Numor Coolant Tech
nologies Ltd. as the registered owner of the patent
in question, and that the document was supported
by an affidavit of the respondent Marcel Claveau
in which the latter alleged that the applicant and
inventor Ray B. Love had assigned the patent
application to the respondents.
The inventor Ray B. Love asserts by way of
affidavit that he never signed such a document.
The applicants, therefore, allege that the respon
dents are not assignees of the patent application,
and that the entry to that effect in the records of
the Patent Office should be expunged under sec
tion 52 of the Patent Act, which reads as follows:
52. The Federal Court has jurisdiction, on the application of
the Commissioner or of any person interested, to order that any
entry in the records of the Patent Office relating to the title to a
patent be varied or expunged.
In the instant application under conditional
appearance the respondents argue that this Court
has no jurisdiction to expunge the assignment of a
right to obtain a patent, its jurisdiction being
limited under section 52 to the expungement of
any entry relating to a patent which has been
granted.
This is a novel issue. There does not appear to
be any jurisprudence exactly on point.
There are four sections under the title "ASSIGN-
MENTS AND DEVOLUTIONS" in the Patent Act, of
which section 52 is the last. To comprehend the
scheme of this particular chapter it is essential to
reproduce the three preceding sections:
49. (1) A patent may be granted to any person to whom an
inventor, entitled under this Act to obtain a patent, has
assigned in writing or bequeathed by his last will his right to
obtain it, and, in the absence of an assignment or bequest, the
patent may be granted to the personal representatives of the
estate of the deceased inventor.
(2) Where the applicant for a patent has, after filing his
application, assigned his right to obtain the patent, or where he
has either before or after filing his application assigned in
writing the whole or part of his property or interest in the
invention, the assignee may register the assignment in the
Patent Office in the manner prescribed by the Commissioner,
and no application for a patent shall be withdrawn without the
consent in writing of every registered assignee.
(3) No assignment shall be registered in the Patent Office
unless it is accompanied by the affidavit of a subscribing
witness or established by other proof to the satisfaction of the
Commissioner that the assignment has been signed and execu
ted by the assignor.
50. (1) Every patent issued for an invention is assignable in
law, either as to the whole interest or as to any part thereof, by
an instrument in writing.
(2) An assignment, and every grant and conveyance of any
exclusive right to make and use and to grant to others the right
to make and use the invention patented in Canada or any part
thereof, shall be registered in the Patent Office in the manner
prescribed by the Commissioner.
(3) No assignment, grant or conveyance shall be registered
in the Patent Office unless it is accompanied by the affidavit of
a subscribing witness or established by other proof to the
satisfaction of the Commissioner that the assignment, grant or
conveyance has been signed and executed by the assignor and
by every other party thereto.
51. Every assignment affecting a patent for invention,
whether it is one referred to in section 49 or 50, is void against
any subsequent assignee, unless the assignment is registered as
prescribed by those sections, before the registration of the
instrument under which the subsequent assignee claims.
A reading of these sections shows that section 49
deals with the assignment of a right to a patent
before the patent has been granted. Section 50
provides for the assignment of an issued patent.
Section 51 refers to every assignment "affecting a
patent for invention, whether it is one referred to
in section 49 or 50". The aforementioned section
52 establishes the jurisdiction of the Federal Court
to expunge "any entry in the records of the Patent
Office relating to the title to a patent".
The central issue to be resolved is whether those
words limit the jurisdiction to a patent which has
been issued or are broad enough to include any
entry relating to a pending application for a
patent. A trilogy of cases is of considerable assist
ance in determining the matter.
First, a 1960 decision of the Exchequer Court of
Canada, Clopay Corp. & Canadian General
Tower Ltd. v. Metalix Ltd.' These were proceed
ings for the infringement of a patent in which the
defendant put in issue the title of the plaintiffs by
an amendment to its statement of defence. The
plaintiffs then launched a motion for an order
varying the entry in the records of the Patent
Office. Cameron J. held that the powers conferred
on the Court by section 54 (the present section 52)
of the Patent Act were "very wide, although they
should be used with great discretion".
These two paragraphs (at page 235) were relied
upon by both counsel before me to show that this
Court has or has no jurisdiction in the instant case:
Counsel for the defendant raised a preliminary objection,
namely, that this Court is without jurisdiction to hear the
motion. His main submission is that the motion is ill-conceived
and cannot be made in an infringement action but should be
brought as an entirely separate proceeding by a petition or by
originating notice of motion addressed to the Court. Now I
have no doubt that an application under s. 54 could be
launched in that way. In fact, I am advised that the only order
heretofore made under s. 54 (B.F. Goodrich Co. v. Com'r of
Patents, Court File # 158,034 [(1960) 32 C.P.R. 122 (Sec. I)])
was initiated by a petition, but in that case no infringement
proceedings were pending and the only party notified was the
Commissioner of Patents.
In my view, the powers conferred on the Court by s. 54 are
very wide, although they should be used with great discretion.
Section 54 is the last of a group of three sections entitled
' (1960), 34 C.P.R. 232; 20 Fox Pat. C. 110; affd [1962]
S.C.R. viii; (1961), 39 C.P.R. 23; 22 Fox Pat. C. 2.
"Assignments and Devolutions". Sections 52 and 53 deal
respectively with assignments and devolutions prior to and after
the grant. I think, therefore, that s. 54 was enacted so as to
enable the rectification by the Court of the records in the
Patent Office relating to title in order that the party or parties
actually entitled to the grant, or to be registered as to the
assignees of the patent, might have their rights properly record
ed. [My emphasis.]
The second case is a 1977 Federal Court of
Appeal decision Cellcor Corp. of Canada Ltd. v.
Kotacka. 2 This appeal concerned an action to have
the plaintiff declared inventor rather than the
defendants. No patent had been issued and no
application for patent filed. The Court found that
in the circumstances it had no power to grant such
relief, and that section 54 could not be relied upon.
The following two paragraphs of Pratte J.'s judg
ment (at page 232) were relied upon by both
parties to bolster their respective points of view:
The respondent's main argument was that section 20 of the
Federal Court Act gives jurisdiction to the Court in this matter.
The main relief sought, said he, is a declaration that the
plaintiff, being the owner of the invention, is entitled, under the
Patent Act, to apply for letters patent. That relief, he added, is
clearly a relief "respecting a patent of invention" within the
meaning of section 20 and is also a relief provided for by law
since the Court is authorized to pronounce declaratory judg
ments (see Rule 1723).
The respondent's contention is, in my view, ill-founded.
Assuming that the declaration sought in this action is a remedy
respecting a patent of invention, within the meaning of section
20, I am nevertheless of opinion that, in the circumstances of
this case, it is not a relief that the Federal Court has power to
grant because I agree with the appellants' view that there is no
legal basis for it. Under the Patent Act, the official who must
first decide whether a patent may issue to an applicant is the
Commissioner. The Act does not empower the Courts to give
him directions on the decision he should reach; it is only if he is
alleged to have made a wrong decision that, under the statute,
the Courts may be seized of the matter. In my view, it would be
contrary to the scheme of the Patent Act for the Courts to
assume the power, in a case like the present one, to make the
declaration sought. In my opinion, the power of the Court,
under Rule 1723, to make "binding declarations of right"
cannot be exercised in respect of letters patent of invention
when its exercice is not expressly or impliedly contemplated by
the Patent Act or another statute within the legislative jurisdic
tion of Parliament. [My emphasis.]
2 [1977] 1 F.C. 227; (1976), 14 N.R. 204; 27 C.P.R. (2d) 68
(C.A.).
The third case is a 1987 decision' of this Court
(varied by the Federal Court of Appeal in other
respects but maintained as to the relevant princi
ples). This was an action for infringement of two
patent rights. The defendant applied to strike out
the statement of claim. The Court discussed varia
tions of patents pursuant to sections 53 and 54 of
the Patent Act [R.S.C. 1970, c. P-4]. The Court
stated that pursuant to the Act it had no jurisdic
tion to order variations of patents until an applica
tion had been made to be acted upon by the
Commissioner of Patents. The following abstracts
from Strayer J.'s judgment (at pages 353-354
C.P.R.; 62 F.T.R.) were canvassed favourably by
both parties:
The defendants also contend that the court lacks jurisdiction
to make an order under s. 54 of the Patent Act, as requested by
the plaintiff in its prayer for relief, to require that the Patent
Office records be varied to record the plaintiffs licence under
patent No. 1,167,131. The plaintiff here relied on s. 54 of the
Patent Act which provides as follows:
The plaintiff claims to be a person interested and seeks that the
entry for patent No. 1,167,131 be varied. I am satisfied that,
assuming the allegations in the statement of claim to be true,
the plaintiff is a person interested. But the defendants have
raised two other objections. One is essentially based on the
Cellcor case where, in the passage quoted above, Pratte J.
states that it is the Commissioner of Patents who must first
decide whether a patent may issue and the court cannot give
him directions on the decision which he should reach. While the
matter is not free from doubt I do not believe that statement
applies to the present situation. Here the patent is already
registered and s. 54 contemplates the possibility of the Court
directing the Commissioner to vary the record of a title already
registered. I believe that the other point raised by the defen
dants is of more substance, however. The defendants rely on ss.
53(3) which provides as follows:
It may also be noted that ss. 86 to 90 of the Patent Rules
provide procedures for obtaining the registration of an assign
ment. There is nothing in the record to allege that a proper
application has been made to the commissioner with the neces
sary affidavit and any other materials required by the rules. I
3 Pitney Bowes Inc. v. Yale Security (Canada) Inc. et al.
(1987), 15 C.P.R. (3d) 3; 11 C.I.P.R. 171; (1987), 9 F.T.R. 58
(F.C.T.D.); reversed in part (1987), 80 N.R. 267; (1987), 13
F.T.R. 233 (note) (F.C.A.).
believe that the same rationale as was stated by Pratte J. in the
Cellcor case should apply: that is, where the Patent Act pro
vides a specific procedure for the commissioner to receive
applications and make decisions, and specifies certain evidenti-
ary requirements, it was not the intention of Parliament to
empower the court to assume the power to determine that a
particular assignment should be registered. If an application is
made to the commissioner and he rejects it, it may be then open
to the plaintiff to seek an order in this court. For parallel
decisions in relation to amendment of the trade mark register
see Friendly Ice Cream Corp. v. Friendly Ice Cream Shops
Ltd. (1972), 7 C.P.R. (2d) 35 at p. 40, [1972] F.C. 712; Royal
Doulton Tableware Ltd. et al. v. Cassidy's Ltd.—Cassidy's
Ltée (1984), 1 C.P.R. (3d) 214 at p. 227, [1986] 1 F.C. 357; 5
C.I.P.R. 10. [My emphasis.]
It should be noted that as a result of the assign
ment of the right to the application having been
registered by the Commissioner of Patents, the
applicants are now deprived of their former right
to prosecute their application. Should the alleged
assignees of the application, the respondents, be
negligent in their prosecution of the application,
the patent may not be granted. Should they with
draw the application, the patent will not be grant
ed. In my view, if the purported assignment is a
forgery, as claimed by the applicants, they are
entitled to a remedy for the wrong inflicted upon
them.
The respondents argue that this is a matter for a
provincial superior court, presumably an Ontario
court since the document in question is purported
to have been signed in Toronto. However, I fail to
see how an Ontario court could order a federal
board, which the Patent Office clearly is, to vary
or to expunge or to otherwise deal with the matter.
Clearly, this problem calls for a more appropriate
solution.
In my view, the solution is to be found in the
wide powers granted to the Court by section 52 of
the Patent Act. That section, properly read within
the scheme of the Assignments and Devolutions
chapter of the Patent Act, means that the Court
may order that any entry in the records be varied
or expunged as long as the entry relates to the title
to a patent. That language necessarily includes
assignments of a right to obtain a patent. All
assignments, although dealt with separately in sec
tions 49 and 50, are grouped together in section
51, and remain so grouped in the culminating
section 52.
In Clopay, Cameron J. of the Exchequer Court
found that section to be "very wide". He said that
it was enacted "so as to enable the rectification by
the Court of the records in the Patent Office
relating to title". In Cellcor, Pratte J., after point
ing out that the Court cannot give directions on
the decision the Commissioner should reach, added
"it is only if he is alleged to have made a wrong
decision that, under the statute, the Courts may be
seized of the matter". In Pitney Bowes Inc., Stray-
er J. pointed out that "If an application is made to
the commissioner and he rejects it, it may be then
open to the plaintiff to seek an order in this court."
The obvious corollary is that, if the Commis
sioner accepts a document which he ought to have
rejected, then it is open to the party adversely
affected to seek an order of this Court (the Federal
Court, Trial Division).
If I am mistaken in this matter, and section 52
does not empower this Court to order the Commis
sioner to expunge the entry in question, then I am
of the view that such power emanates from section
18 of the Federal Court Act, and that a writ of
certiorari would lie with respect to an administra
tive decision made by the Commissioner of Pat
ents, a federal board. Clearly, that remedy can
only be prescribed by this Court.
Under Rule 603, proceedings under section 18,
other than proceedings for declaratory relief, may
be brought by an originating motion. As the plain
tiff is not seeking a declaration, but expungement,
an originating motion is also the proper vehicle
under section 52 of the Patent Act, in which the
"application" is akin to an application made under
section 58 of the Trade-marks Act [R.S.C., 1985,
c. T-13]. In Clopay, Cameron J. said that "I have
no doubt that an application under s. 54 could be
launched in that way" (by a petition or by origi
nating notice of motion addressed to the Court).
Consequently, I do find that this Court has the
jurisdiction, pursuant to section 52 of the Patent
Act, to order that the entry in the records of the
Canadian Patent Office of the respondent Numor
Coolant Technologies Ltd., as assignee of Canadi-
an Patent Application No. 552,339, be expunged.
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.