A-303-74
Cellcor Corporation of Canada Limited, Plasti-
starch Corporation Limited and John F. Hughes
(Appellants) (Defendants)
v.
Jean Emile Kotacka (Respondent) (Plaintiff)
Court of Appeal, Pratte and Le Dain JJ. and Hyde
D.J.—Montreal, September 28 and October 15,
1976.
Jurisdiction—Patents—Action to declare plaintiff inventor
in stead of defendants Claim that defendant falsely trying to
patent invention—Motion to dismiss action for lack of juris
diction, dismissed by Trial Division—Appeal—Whether Trial
Division has jurisdiction to make declaration sought—British
North America Act, s. 91(22) Federal Court Act, s. 20.
The appellants (defendants) appealed the judgment of the
Trial Division dismissing their motion for an order dismissing
the action on the ground that the Court lacked jurisdiction to
hear the action. The allegations in the statement of claim are
that the respondent (plaintiff) confidentially disclosed his
invention to the defendant Hughes and Hughes then falsely
represented himself as the inventor and filed an application for
letters patent in the United States, which application he
assigned to his co-defendant Cellcor Corporation. They, then,
filed an application for letters patent in Canada and entered
into negotiations offering to grant licences in respect of the
invention. The plaintiff by his action claimed (1) a declaration
that the plaintiff is the inventor, (2) a declaration that the
defendants hold the invention in trust for the plaintiff, (3) an
order directing the Commissioner of Patents to amend the
record file to show the plaintiff as inventor and (4) an injunc
tion restraining defendants from granting licences in respect of
the invention. The Trial Division found that section 20 of the
Federal Court Act gave it jurisdiction to try the action. In view
of the constitutional implications of the wide interpretation
given to section 20 by the Trial Judge, the Attorneys General
for Canada, Quebec and British Columbia intervened in the
appeal on the ground that section 20 does not raise any
constitutional issue but does not, either, endow the Trial Divi
sion with jurisdiction in this case. The appellants contend that
legislative power under section 91(22) of the British North
America Act is limited to legislation relating to "patents of
invention and discovery" and therefore the jurisdiction of the
Trial Division under section 20 of the Federal Court Act is
subject to the same limitation; the issues raised by the state
ment of claim do not relate to the patents of invention but
merely to the ownership of an invention for which no patent has
yet been obtained or applied for, and for that reason the Trial
Division does not have jurisdiction in this case.
Held, the appeal is allowed and the action is dismissed.
Assuming that the declaration sought is a remedy respecting a
patent of invention, within the meaning of section 20 of the
Federal Court Act, in the circumstances of this case, it is not a
relief that the Federal Court has power to grant because there
is no legal basis for it. tinder the Patent Act it is the Commis
sioner of Patents who must first decide whether a patent may
issue to an applicant. The Act does not empower the Courts to
give him directions; 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. It is contrary to the scheme of the Patent
Act to assume the power, by making the declaration sought.
MacDonald v. Vapor Canada Ltd. (1976) 22 C.P.R. (2d)
1, applied. Kellogg Co. v. Kellogg [1941] S.C.R. 242 and
Radio Corporation of America v. Philco Corporation
(Delaware) [1966] S.C.R. 296, referred to.
APPEAL.
COUNSEL:
J. Nelson Landry for appellants.
R. Hughes for respondent.
Jean Lefrancois for Attorney-General of
Quebec.
T. B. Smith, Q.C., for Attorney General of
Canada.
N. M. Tarnow for Attorney-General of Brit-
ish Columbia.
SOLICITORS:
Ogilvy, Cope, Porteous, Montgomery,
Renault, Clarke & Kirkpatrick, Montreal,
for appellants.
Roger T. Hughes, c/o Donald F. Sim, Q.C.,
for respondent.
Geoffrion, Prud'homme, Chevrier, Cardinal,
Marchessault, Mercier & Greenstein for
Attorney-General of Quebec.
Deputy Attorney General of Canada for
Attorney General of Canada.
Deputy Attorney-General of British
Columbia for Attorney-General of British
Columbia.
The following are the reasons for judgment
rendered in English by
PRATTE J.: The appellants are the defendants in
an action in the Trial Division. They appeal from a
judgment of that Court dismissing their motion for
an order dismissing the action on the ground that
the Court does not have the jurisdiction to decide
it.
The parties are now in agreement that, even if
the appeal were to be otherwise unsuccessful, in
view of the recent decision of the Supreme Court
of Canada in MacDonald v. Vapor Canada Ltd.',
it should be allowed in part and paragraphs 17 and
18 of the statement of claim which allege that the
defendants contravened section 7(e) of the Trade
Marks Act should be struck out.
The Trial Division found that section 20 of the
Federal Court Act gave it the jurisdiction to try
the action. In view of the constitutional implica
tions of the wide interpretation given to section 20
by the Trial Judge, the Attorney General for
Canada, the Attorney-General of Quebec and the
Attorney-General of British Columbia intervened
in the appeal. The intervenants did not try to
sustain the judgment under appeal. They all sup
ported the appellants' submission that, correctly
interpreted, section 20 does not raise any constitu
tional issue but does not, either, endow the Trial
Division with jurisdiction in this case.
The allegations of the statement of claim may
be easily summarized. In December 1973, the
plaintiff (respondent in this appeal) made an
invention which, shortly afterwards, was disclosed
confidentially to the defendant Hughes. In spite of
the fact that the invention was clearly the property
of the plaintiff, Hughes falsely represented himself
as the inventor and caused an application for
letters patent to be filed in the United States,
which application he assigned to his co-defendant
Cellcor Corporation of Canada Limited. The
defendants "have prepared and filed, or in the
alternative intend to prepare and file an applica
tion or applications for patent in Canada corre
sponding to the United States application ...".
Hughes has also, in his personal capacity as well as
on behalf of his two co-defendants, entered into
negotiations with third parties offering to grant
licences in respect of the invention. The prayer for
relief reads as follows:
THE PLAINTIFF THEREFORE CLAIMS:
(a) a declaration that as between the parties the Plaintiff is
the inventor of the subject matter of the inventions relating
' (1976) 22 C.P.R. (2d) 1.
to a process and apparatus for producing a new product
useful in the formulation of paints and in other applications
and in particular is the inventor of the subject matter of
United States Patent Application No. 439,715 filed by or on
behalf of the Defendant Hughes and the person entitled to
apply for and obtain letters patent therefor in Canada;
(b) a declaration that the Defendants and each of them hold,
in trust for the Plaintiff the invention described in United
States Patent Application Serial No. 439,715 and any and all
corresponding foreign applications covering the same subject
matter as the said United States application;
(c) an order directing the Commissioner of Patents to amend
the record file of any Canadian application filed by or on
behalf of the Defendants or any of them and corresponding
to United States Patent Application No. 439,715 or covering
the subject matter of the Plaintiff's invention to show the
Plaintiff as inventor of and applicant.therefor;
(d) an injunction and an interim injunction restraining the
Defendants and each of them by their servants, officers or
otherwise from licensing, assigning or otherwise dealing in,
or purporting to licence, assign or otherwise deal in the
subject matter of the Plaintiffs invention, United States
Patent Application No. 439,715, or corresponding or equiva
lent applications therefor in the United States or any other
country or any patent issued or to issue therefrom;
(e) such further and other relief as to this Honourable Court
may seem just; and
(f) costs.
The appellants' motion for an order dismissing
the action for lack of jurisdiction was dismissed 2
for reasons that the Trial Judge expressed as
follows:
(a) Some of the remedies sought by the Plaintiff in the
amended statement of claim are, for all practical purposes,
identical to some of the remedies sought in the Supreme
Court case of Kellogg v. Kellogg ([1941] S.C.R. 242). In
that case, it was held (p. 250) that this Court had jurisdiction
under what is now section 20 of the Federal Court Act, and,
in particular, that portion thereof which confers jurisdiction
between subject and subject where a "remedy is sought"
"respecting any patent of invention" "under the authority of
any Act of the Parliament of Canada or at Common Law or
in Equity". Here, as there, the invention or the right to the
patent for the invention is primarily the subject-matter of the
Plaintiffs claim and the remedy sought for is clearly
"respecting any patent of invention" and is thus covered by
said section 20. The Kellogg case was followed by Cameron
2 [No written reasons for judgment circulated—Ed.]
J. in Booth v. Sokulsky (Vol. 18, Canadian Patent Reporter,
p. 86).
Section 20 of the Federal Court Act reads as
follows:
20. The Trial Division has exclusive original jurisdiction as
well between subject and subject as otherwise,
(a) in all cases of conflicting applications for any patent of
invention, or for the registration of any copyright, trade mark
or industrial design, and
(b) in all cases in which it is sought to impeach or annul any
patent of invention, or to have any entry in any register of
copyrights, trade marks or industrial designs made,
expunged, varied or rectified,
and has concurrent jurisdiction in all other cases in which a
remedy is sought under the authority of any Act of the Parlia
ment of Canada or at law or in equity, respecting any patent of
invention, copyright, trade mark or industrial design.
Counsel for the appellants submitted that, as the
federal legislative power under section 91(22) of
The British North America Act is limited to legis
lation relating to "patents of invention and discov
ery" and does not extend to legislation relating to
inventions in themselves, similarly, the jurisdiction
of the Trial Division under section 20 of the
Federal Court Act is subject to the same limita
tion. He contended that the issues raised by the
statement of claim do not relate to patents of
invention but merely to the ownership of an inven
tion for which no patent has yet been obtained or
applied for; for that reason, said he, the Trial
Division does not have jurisdiction in this case.
Counsel for the appellants also submitted that the
Federal Court does not have jurisdiction in respect
of letters patent of invention if a right to relief
does not exist under federal legislation. Section 20
of the Federal Court Act, said he, deals merely
with jurisdiction; it does not create a right to relief.
It follows, according to counsel, that the Court
cannot exercise its jurisdiction under section 20
unless a right to relief exists by virtue of some
other statutory provision. It was his contention
that, in this case, it is impossible to find any legal
basis for the relief sought by the plaintiff.
Counsel for the respondent first argued that
section 54 of the Patent Act afforded a foundation
for at least part of the relief sought. It is sufficient,
on this point, to say that a mere reading of section
54 shows the futility of that contention.
The respondent's main argument was that sec
tion 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 appel
lants' 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 exercise is not expressly or
impliedly contemplated by the Patent Act or
another statute within the legislative jurisdiction of
Parliament.
3 As to the other remedies sought, it was not suggested that
they were authorized by a provision other than section 54 of the
Patent Act.
I know that my conclusion may be difficult to
reconcile with the statement made by Mr. Justice
Rinfret (as he then was) at page 250 of his reasons
for judgment in Kellogg Company v. Kellogg
[1941] S.C.R. 242. However, I find that statement
equally difficult to reconcile with the subsequent
decision of the Supreme Court in Radio Corpora
tion of America v. Philco Corporation (Delaware)
[1966] S.C.R. 296.
For these reasons, I would allow the appeal with
costs and dismiss the action with costs.
* * *
LE DAIN J.: I agree.
* * *
HYDE D.J.: I agree.
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.