A-201-75
Monsanto Company (Appellant) (Plaintiff)
v.
Commissioner of Patents (Respondent) (Defend-
ant)
Court of Appeal, Pratte, Heald and Urie JJ.—
Ottawa, April 14 and 15, 1976.
Jurisdiction—Patents—Disclaimer—Commissioner's refus
al to record—Case against decision established—Trial Divi
sion finding decision of Commissioner quasi-judicial and that
relief should be judicial review and not mandamus—Jurisdic-
tion in Court of Appeal over judicial review—Appeal—Patent
Act, R.S.C. 1970, c. P-4, s. 51 Federal Court Act, s. 28.
Appellant, owner of a Canadian patent, sought to file with
the Commissioner of Patents, a "disclaimer" under section 51
of the Patent Act. The Commissioner refused to record the
disclaimer. A writ of mandamus, requiring him to do so was
refused by the Trial Division, on the basis that the Trial
Division had no jurisdiction to grant relief by way of man-
damus. The Commissioner was a "federal board" etc., the
decision was one of an administrative nature required by law to
be made on a judicial or quasi-judicial basis, and the Court of
Appeal had jurisdiction to hear and determine an application
under section 28(1) to review and set aside the Commissioner's
refusal. Appellant appealed.
Held, allowing the appeal, the Commissioner's refusal to
record the disclaimer was not a decision within the meaning of
section 28 of the Federal Court Act. Section 21 of the Patent
Act does not empower the Commissioner to make any decision
or vest him with any discretion; it merely imposes on him the
duty to record certain documents. If he fails in his duty,
mandamus will lie. The Trial Division was correct, however, in
disagreeing with the Commissioner for refusing to record dis
claimers which did not disclaim one or more complete claims.
Section 51 allows a patentee not to disclaim claims in letters
patent, but to disclaim parts of an invention. The right of a
patentee to file a disclaimer cannot depend upon the way in
which the letters patent are drafted. The judgment of the Trial
Division is set aside, and a writ of mandamus will issue.
Bay v. The Queen [1974] 1 F.C. 523, applied.
APPEAL.
COUNSEL:
D. Watson, Q.C., and B. Morgan for
appellant.
•
G. W. Ainslie, Q.C., for respondent.
SOLICITORS:
Gowling & Henderson, Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment of
the Court delivered orally in English by
PRATTE J.: The judgment appealed from' dis
missed an action for a writ of mandamus requiring
the respondent to record a disclaimer filed by the
appellant under section 51 of the Patent Act.
The Trial Judge thought that the respondent
should have recorded the appellant's disclaimer.
However, he was of the view that the respondent's
refusal was a decision "required by law to be made
on a judicial or quasi-judicial basis" within the
meaning of section 28(1) of the Federal Court
Act; he therefore dismissed the appellant's action
on the ground that section 28(3) precluded the
Trial Division from entertaining any proceeding in
respect of that decision.
As we indicated at the hearing, we are of opin
ion that the Trial Judge should not have reached
that conclusion. In our view, the refusal of the
Commissioner of Patents to record a disclaimer
under section 51 of the Patent Act is not a decision
within the meaning of section 28 of the Federal
Court Act (see Bay v. The Queen [1974] 1 F.C.
523). Section 51 does not empower the Commis
sioner 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 Commis
sioner fails in that duty, mandamus lies against
him.
The sole explanation given by the Commissioner
for his refusal to record the appellant's disclaimer
was that it was against his policy to record dis
claimers which did not disclaim one or more com
plete claims. The Trial Judge expressed his disa
greement with that policy; he considered it to be
based on a misinterpretation of section 51. We
agree with him on this point. Section 51 allows a
patentee not to disclaim claims in letters patent,
[ 1975] F.C. 197.
but to disclaim parts of an invention. In our view,
the right of a patentee to file a disclaimer cannot
depend upon the way in which the letters patent
are drafted.
For these reasons, the appeal will be allowed;
the judgment of the Trial Division will be set aside
and a writ of mandamus will issue requiring the
respondent to record the disclaimer submitted to
him by the appellant on November 26, 1973.
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.