Richards Packaging Inc. v. Canada (Attorney General)

• Jurisdiction: Federal Jurisdiction (Canada)
• Court: Court of Appeal (Canada)
• Judge: Décary, Létourneau and Nadon, JJ.A.
• Citation: 2008 FCA 4,(2008), 371 N.R. 377 (FCA)
• Date: 08 January 2008

Richards Packaging Inc. v. Can. (A.G.) (2008), 371 N.R. 377 (FCA)

MLB headnote and full text

Temp. Cite: [2008] N.R. TBEd. JA.023

Distrimedic Inc. (appellant) v. Richards Packaging Inc. (respondent)

(A-68-07; 2008 FCA 4)

Indexed As: Richards Packaging Inc. v. Canada (Attorney General)

Federal Court of Appeal

Décary, Létourneau and Nadon, JJ.A.

January 8, 2008.

Summary:

Richards Packaging Inc. filed an alleged disclaimer with the Canadian Intellectual Property Office pursuant to s. 48(1) of the Patent Act. The Commissioner of Patents refused to record the alleged disclaimer on the basis that it was not a disclaimer because it attempted to broaden, rather than narrow, the scope of at least one claim of the patent. Richards applied for judicial review.

The Federal Court, in a decision reported at 305 F.T.R. 99, allowed the application. The court set aside the decision refusing the filing of Richards' disclaimer and declared that the disclaimer was filed and effective as of its filing date, subject to its propriety or validity being questioned before a court of competent jurisdiction in an action or proceeding under the Act respecting the patent in issue. The appellant, Distrimedic Inc., appealed.

The Federal Court of Appeal dismissed the appeal.

Patents of Invention - Topic 446

Registration - Statutory duties of commissioner - Respecting disclaimers - Richards Packaging Inc. filed an alleged disclaimer with the Canadian Intellectual Property Office pursuant to s. 48(1) of the Patent Act - The Commissioner of Patents refused to record the alleged disclaimer on the basis that it was not a disclaimer because it attempted to broaden, rather than narrow, the scope of at least one claim of the patent - Richards applied for judicial review - The application was allowed - The application judge ruled that the Commissioner or an examiner possessed no discretion under s. 48 of the Act to make any inquiry or to make any decision with respect to a disclaimer submitted by a patentee in the prescribed form and manner - The Federal Court of Appeal dismissed an appeal - The application judge did not err in concluding that the Commissioner did not have the power to refuse the filing or recording of the alleged disclaimer.

Cases Noticed:

Monsanto Co. v. Commissioner of Patents, [1976] 2 F.C. 476; 13 N.R. 56 (F.C.A.), refd to. [para. 3].

ATCO Gas and Pipelines Ltd. v. Energy and Utilities Board (Alta.) (2006), 344 N.R. 293; 380 A.R. 1; 363 W.A.C. 1; 2006 SCC 4, refd to. [para. 10].

Statutes Noticed:

Patent Act, R.S.C. 1985, c. P-4, sect. 48 [para. 1].

Counsel:

George Locke and Louis Gratton, for the appellant;

Donald Wright, Q.C., and Dale E. Schlosser, for the respondent.

Solicitors of Record:

Ogilvy Renault LLP, Montréal, Quebec, for the appellant;

Lang Michener LLP, Toronto, Ontario, for the respondent.

This appeal was heard on January 8, 2008, at Montreal, Quebec, before Décary, Létourneau and Nadon, JJ.A., of the Federal Court of Appeal. The following judgment of the Court of Appeal was delivered orally by Létourneau, J.A., on the same date.