A-447-77
Samuel Moore & Company (Appellant)
v.
Commissioner of Patents (Respondent)
Court of Appeal, Jackett C.J.—Ottawa, August
14, 1979.
Patents — Appeal from decision of Commissioner of Pat
ents refusing grant of patent — Application by appellant to
have appeal heard in camera — Application is an exception to
general rule that all judicial proceedings are public — Excep
tion where publicity would destroy the subject-matter —
Whether patent applications fall within that exceptional class
— Application dismissed — Patent Act, R.S.C. 1970, c. P-4,
ss. 10, 28(1), 42, 44 — Patent Rules, C.R.C. 1978, Vol. XIII, c.
1250 — Federal Court Rule 201(3).
APPLICATION.
COUNSEL:
G. Henderson, Q.C. for appellant.
J. A. Scollin, Q.C. for respondent.
SOLICITORS:
Gowling & Henderson, Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
delivered orally in English by
JACKETT C.J.: By notice of appeal dated June
30, 1977, the appellant appealed to this Court
from the decision of the Commissioner of Patents
"refusing the grant of a patent in Canadian Patent
Application 152,573". The appellant today applies
for certain orders, viz.:
1. An Order directing that the Administrator of this Court
remove from the Court file maintained in connection with this
Appeal the Patent Office file records relating to Application
No. 152,573, the transcript of the hearing before the Patent
Appeal Board, all affidavits filed, the Appeal Book and all
appendices thereto prepared in connection with this Appeal and
keep such materials and all further materials filed or added to
the case in a sealed envelope the contents of which shall be
available for inspection only by the Court, the parties to the
within Appeal and their solicitors;
2. For an Order enjoining the Respondent, its agents, servants
and any other person acting on its behalf to keep confidential
and secret the materials and the contents of the materials
referred to in Paragraph I above.
3. For an Order enjoining the Respondent, its agents, servants
and any person acting on its behalf from disclosing or giving
any information respecting the materials referred to in Para
graph I and the prosecution of this application before the
Patent Office or on the within Appeal to any person other than
the Appellant or its solicitors or this Court;
4. For an Order directing the Respondent to take all reason
able steps within its power to retrieve all materials or copies or
summaries of any of the materials referred to in Paragraph 1
given or provided by the Respondent or its agents, servants or
any person acting on its behalf to any person other than the
Appellant or its solicitors or this Court;
5. For an Order directing that all further proceedings in con
nection with this Appeal be held in camera; and
The appeal from the Commissioner gets before
this Court by virtue of sections 42 and 44 of the
Patent Act, R.S.C. 1970, c. P-4, which, as far as
applicable, read:
42. Whenever the Commissioner is satisfied that the appli
cant is not by law entitled to be granted a patent he shall refuse
the application and, by registered letter addressed to the appli
cant or his registered agent, notify the applicant of such refusal
and of the ground or reason therefor.
44. Every person who has failed to obtain a patent by reason
of a refusal ... of the Commissioner to grant it may, at any
time within six months after notice as provided for in section(s)
42 ... has been mailed, appeal from the decision of the
Commissioner to the Federal Court and that Court has exclu
sive jurisdiction to hear and determine such appeal.
In effect, the principal orders sought would be
exceptions from the general rule that all judicial
proceedings are public. In so far as the Court file
is concerned, this rule is contained in Federal
Court Rule 201(3), which provides, in effect, that,
subject to supervision and the exigencies of the
work of the Court "Any person may ... inspect
any Court file or the annex thereto". With refer
ence to public hearings, in so far as I am aware,
the law has never been laid down, authoritatively,
An application for orders to the same effect was made on
Court file A-446-77 based on the argument on this application.
These reasons will also explain the disposition of that applica
tion and it is hereby requested that a copy be placed on that
file.
less stringently than in Scott v. Scott, 2 per Vis
count Haldane L.C. at pages 437-438, where he
said:
While the broad principle is that the Courts of this country
must, as between parties, administer justice in public, this
principle is subject to apparent exceptions, such as those to
which I have referred. But the exceptions are themselves the
outcome of a yet more fundamental principle that the chief
object of Courts of justice must be to secure that justice is
done. In the two cases of wards of Court and of lunatics the
Court is really sitting primarily to guard the interests of the
ward or the lunatic. Its jurisdiction is in this respect parental
and administrative, and the disposal of controverted questions
is an incident only in the jurisdiction. It may often be neces
sary, in order to attain its primary object, that the Court should
exclude the public. The broad principle which ordinarily gov
erns it therefore yields to the paramount duty, which is the care
of the ward or the lunatic. The other case referred to, that of
litigation as to a secret process, where the effect of publicity
would be to destroy the subject-matter, illustrates a class which
stands on a different footing. There it may well be that justice
could not be done at all if it had to be done in public. As the
paramount object must always be to do justice, the general rule
as to publicity, after all only the means to an end, must
accordingly yield. But the burden lies on those seeking to
displace its application in the particular case to make out that
the ordinary rule must as of necessity be superseded by this
paramount consideration. The question is by no means one
which, consistently with the spirit of our jurisprudence, can be
dealt with by the judge as resting in his mere discretion as to
what is expedient. The latter must treat it as one of principle,
and as turning, not on convenience, but on necessity.
It is worth repeating Viscount Haldane's language
with reference to what exception can legally be
made to public hearings in the course of genuine
litigation. In that connection, he refers to
... litigation as to a secret process, where the effect of publicity
would be to destroy the subject matter
as illustrating a class which stands on a "different
footing."
Counsel for the appellant bases his application
on the contention that this appeal falls within this
exceptional classa. In so contending, he does not
say that the material on file establishes that the
subject matter of this appeal is a secret process. As
2 [1913] A.C. 417.
3 I assume, without expressing any view thereon, that this
class would also be an implied exception to Rule 201(3).
I understand him (and I checked my understand
ing with him as closely as possible), his contention
is that every application for a patent under the
Canadian Patent Act is per se a trade secret so
that, where it is the subject matter of litigation,
the general rule of public hearings should not be
applied. Alternatively, if I understood him aright,
he put it that, in every case of a patent application,
the application and all supporting material is sup
plied by an applicant for a patent to the Commis
sioner in confidential circumstances that bring into
play the general rule laid down in Scott v. Scott,
(supra).
In support of these contentions, counsel relied on
section 10 of the Patent Act, which reads:
10. All specifications, drawings, models, disclaimers, judg
ments, returns, and other papers, except caveats, and except
those filed in connection with applications for patents that are
still pending or have been abandoned shall be open to the
inspection of the public at the Patent Office, under such
regulations as are adopted in that behalf.
and Rule 13 of the Patent Rules, C.R.C. 1978,
Vol. XIII, c. 1250, which reads:
13. Except as provided by section 11 of the Act or by these
Rules, the Office shall not give any information respecting an
application for patent to any person other than the person with
whom the correspondence relating to the application is conduct
ed or his duly constituted successor or a person specially
authorized by the applicant or his patent agent to receive the
information.
and he contended very strenuously that the whole
scheme of the Patent Act would be defeated unless
a person induced thereby to disclose his inventions
to the Commissioner is protected from having
what he disclosed to the Commissioner published
to his competitors prior to grant of a patent. 4
I have not been persuaded that there is to be
found in the Patent Act a scheme that would be
defeated by public hearings of appeals from deci
sions of the Commissioner. An inventor has a
choice between maintaining and developing his
invention as a trade secret and applying for a
patent. If he chooses to apply for a patent and is
granted one, his invention is thereby made patent
to all the world and he receives in consideration a
° In particular, he referred to how prior publication could be
utilized to obtain rights under section 58 to the prejudice of the
applicant.
seventeen-year monopoly. 5 It would seem that
when an application ceases to be pending in the
Patent Office "by reason of a refusal", papers
connected with it would also be open to the public
by virtue of section 10. In that case, the applicant
has an option to appeal (section 44) but such an
appeal must be taken pursuant to the "rules and
practice" of the Federal Court (section 17). In
other words, as I understand it, the appeal must be
in public unless being in public would destroy the
"subject matter" of the litigation or otherwise
defeat the ends of justice.
What must be considered, therefore, is what is
the subject matter of the appeal. Put briefly, if the
appellant wins, it gets a patent entitling it to a
seventeen-year monopoly for its invention. The
essential elements of the appellant's case on appeal
are spelled out in section 28(1) of the Patent Act, 6
an examination of which shows that all the facts
essential to its success are facts that were in
existence at or before the time of its application
for a patent. Knowledge acquired subsequently by
third persons cannot destroy the appellant's right
to its seventeen-year monopoly, if that right exist
ed at the time of the appeal.
The lack of any practical need to restrict the
usual glare of publicity regarded by us as essential
5 Section 10 is the provision that makes his invention "pat-
ent"—"All ... papers ... shall be open to inspection of the
Public at the Patent Office". I should not have thought that the
exception in favour of "pending" applications would apply to an
application that had been refused; but, in any event, the section
has, of its own force, no application to the Court.
6 Section 28(1) reads:
28. (1) Subject to the subsequent provisions of this sec
tion, any inventor or legal representative of an inventor of an
invention that was
(a) not known or used by any other person before he
invented it,
(b) not described in any patent or in any publication
printed in Canada or in any other country more than two
years before presentation of the petition hereunder men
tioned, and
(c) not in public use or on sale in Canada for more than
two years prior to his application in Canada,
may, on presentation to the Commissioner of a petition
setting forth the facts (in this Act termed the filing of the
application) and on compliance with all other requirements
of this Act, obtain a patent granting to him an exclusive
property in such invention.
to maintaining the purity of judicial administra
tion is, in my view, demonstrated by the fact that,
as far as I can ascertain, no similar application has
ever been made in such a case or in a "conflict"
case where the same grounds would be available.
The application will be dismissed.
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.