Military vet battles government over intellectual property

[Colin Parkinson]

Interesting, Supp Reserve is a "Public Servant". A member of the armed force, but not a PS in my eyes.


A recent court decision is raising concerns — and potential conflicts — for Canadian military veterans and reservists who develop new technology and intellectual property after they've left the forces.

In February, a Federal Court of Appeal ruling determined that anyone whose name is on the Canadian Armed Forces' supplementary reserve list — even if he or she receives no pay or benefits — is considered a public servant.

"What it means for veterans who are on the supplementary reserve list is that their rights, with respect to things that they invent after they leave the military, are now in a bit of a state of flux," said Susan Beaubien, an intellectual property lawyer with Macera and Jarzyna in Ottawa. 

It also means veterans and reservists working full time in the private sector must first seek permission from the federal government before applying for a patent for their inventions.  Rest on link  http://www.cbc.ca/news/canada/ottawa/military-veteran-government-intellectual-property-1.3475301

 

[Oldgateboatdriver]

This merely reinforces my view that we, in Canada, have been misusing terminology for years: Our insistence in calling "public service" the civilians working in our government instead of using the proper English terminology of "civil service" just screws up everything.

Correcting that type of terminology, rather than re-introducing  "Royal" this and "Royal" that, should be a priority in the bells and whistle department, as it actually does mean something.

/RANT OFF

 

[FJAG]

Truly a problematic decision.

The Court of Appeal decision is here:

http://decisions.fct-cf.gc.ca/fca-caf/decisions/en/item/135341/index.do

IMHO this is not a badly reasoned decision by the court but instead is a proper decision based on a very poorly worded law. While the English wording of s 2 might leave some ambiguity as to whether or not the law applies to a reservest only while they are "employed in a department" the French version makes it clear that any reservist, whether employed or not, is considered a public servant for the purposes of the Act.

The court has to interpret the intent of the legislature from the wording of the Act and various statutory interpretation rules which I think they did correctly. I think that the reality of the situation is that no one in the legislature at the time when this Act was created ever addressed their minds to the bizarre result that their wording would lead to.

My guess is that there were "high fives" all around when the crown counsel came up with this argument. Quite frankly -- shame on them. Sometimes it's so obvious that a piece of legislation is such a pile of crap that you should refuse to enforce it although I'm sure that they don't believe that.  :2c:

:cheers:

 

[dapaterson]

Worse, what of members of the Primary Reserve with civilian employment that could involve aspects of R&D? 

 

[Colin Parkinson]

Truly a problematic decision.

The Court of Appeal decision is here:

http://decisions.fct-cf.gc.ca/fca-caf/decisions/en/item/135341/index.do

IMHO this is not a badly reasoned decision by the court but instead is a proper decision based on a very poorly worded law. While the English wording of s 2 might leave some ambiguity as to whether or not the law applies to a reservest only while they are "employed in a department" the French version makes it clear that any reservist, whether employed or not, is considered a public servant for the purposes of the Act.

The court has to interpret the intent of the legislature from the wording of the Act and various statutory interpretation rules which I think they did correctly. I think that the reality of the situation is that no one in the legislature at the time when this Act was created ever addressed their minds to the bizarre result that their wording would lead to.

My guess is that there were "high fives" all around when the crown counsel came up with this argument. Quite frankly -- shame on them. Sometimes it's so obvious that a piece of legislation is such a pile of crap that you should refuse to enforce it although I'm sure that they don't believe that.  :2c:

:cheers:

I have been highly unimpressed with the wording of Acts that have come out in the last few years, particularly ones I have to enforce and regulate.

 

[Old Sweat]

I suppose using that ruling the government could come after any book royalties and advances I received for works produced while I was on the SR. What say you, FJAG?

 

[dapaterson]

Likely not.  The Act in question refers to inventions, which are defined for th epurpose of the act as "invention means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter;".

However, I'm not familiar with what copyright rules apply to works written by members of the "public service", nor what that legislation defines as being a "public servant".

 

[Old Sweat]

One can only hope. When I was serving, way back in 1969, the government gave me an award of $120.00 (about half a week's pay back then) for a device I had come up with to improve the computation of corrections for weather for artillery firing. So sometimes it works both ways.

 

[dapaterson]

The Corpyright act states:

Where copyright belongs to Her Majesty

12 Without prejudice to any rights or privileges of the Crown, where any work is, or has been, prepared or published by or under the direction or control of Her Majesty or any government department, the copyright in the work shall, subject to any agreement with the author, belong to Her Majesty and in that case shall continue for the remainder of the calendar year of the first publication of the work and for a period of fifty years following the end of that calendar year.

R.S., 1985, c. C-42, s. 12;
1993, c. 44, s. 60.

Unless your books were written " by or under the direction or control of Her Majesty or any government department" you're probably free and clear.

 

[cupper]

That creates a conflict though, which may need to be clarified by the Supreme Court.

If a reservist working in his civilian job creates intellectual property as part of his civilian job, who holds the rights to that property?

 

[dapaterson]

That creates a conflict though, which may need to be clarified by the Supreme Court.

If a reservist working in his civilian job creates intellectual property as part of his civilian job, who holds the rights to that property?

There is a positive obligation to report it to the MND within the Act in question.  There is within the act a standard that must be met to vest rights with the Crown.

http://laws-lois.justice.gc.ca/eng/acts/P-32/FullText.html

3 The following inventions, and all rights with respect thereto in Canada or elsewhere, are vested in Her Majesty in right of Canada, namely,

(a) an invention made by a public servant while acting within the scope of his duties or employment, or made by a public servant with facilities, equipment or financial aid provided by or on behalf of Her Majesty; and

(b) an invention made by a public servant that resulted from or is connected with his duties or employment.

The intent is to avoid a individual develop something through their job, then come back and sell it to the Crown (who already paid for its development).

My read of this case is that a "cunning" lawyer for the Crown decided to leverage this legislation to invalidate a patent to escape from the lawsuit against the Crown for violating that patent.

 

[Cloud Cover]

At one point there were more than 300 people working at BlackBerry that were formerly public servants performing R and D work and for patent purposes, most notably with the CSE, DRDC, RCMP, and Finance.  I know this because I held their clearances and negotiated many nondisclosure agreements with the Crown. BlackBerry once had a patent portfolio in excess of 17,000 patents. Think about Nortel, etc.

The trigger here was the plaintiff in this case brought a lawsuit alleging patent infringement, in an attempt to oust a winning competitive bid. He probably had a solid case, save and except for the patent itself. I'm not sure when the Crown decided it was going to get into the business of invalidating patents as a defence to lawsuits, they better think this one through for they may have just created a precedent where they will now have to go after every similar patent claim if they think they have some ownership. One has to be actively defending their IP portfolio in order to keep the trolls out...

Second: to the point of "If a reservist working in his civilian job creates intellectual property as part of his civilian job, who holds the rights to that property?".  If there is no nexus between the reservists invention for his civilian employer, there is no obligation to report it. Generally civilian employees must assign their IP created during the course of employment to their employer. If a reservist were to report the invention to the MND, the reservist may end up breaching the confidentiality provisions of his employment contract. 

This all needs to be sorted out calmly and with 21st century forethought of an aspiring knowledge based economy. However, when I arrived at work this morning there were no less than 15 "Fwd Re: XXXX" in my mailbox, all from start ups in the tech triangle. "Should we NOT hire reservists?" "Should we FIRE all former public servants?" "How do I protect my company from government lawyers". 

To complicate matters, there are many, many contracts between private industry and government that specifically carve out IP ownership and put the government on notice that ownership of IP resides with the private industry contractor or supplier. Are those provisions now void ab initio because such a clause may violate some obscure, poorly written law?  Will it make it even harder and less desirable for companies to develop and supply unique items to the government? And many of those thousands of private companies have hundreds of former federal public servants working with them, in fact the reason they are hired is because of their affiliation with the government.

In theory, this ruling could apply to a coast guard auxiliary who invents a better fishing rod.

If anything, this decision creates bad law by tainting a public policy that is supposed to encourage innovation, and the public interest is damaged because it creates more cost in due diligence and potentially slows down or even shuts down (in some aspects) government procurement because an RFP may have to contain terms that explicitly consider and reflect the outcome of this decision. 

I hope some patent troll company comes and kicks the doors in at DoJ with some smashing big infringement case, and files the lawsuit in the eastern district of Virginia.







 

 

[kratz]

I can read it now,

"this does not conform to the Government of Canada's common look and feel"

    [

 

[ModlrMike]

The next obvious question is if SupRes members don't own their IP, where does that leave Class A? Those folks who ferret away in their basements developing the next big idea.

 

[Michael OLeary]

The next obvious question is if SupRes members don't own their IP, where does that leave Class A? Those folks who ferret away in their basements developing the next big idea.

How about all those authors who published books on military subjects while working for the CAF, who owns those if this is upheld?

 

[dapaterson]

How about all those authors who published books on military subjects while working for the CAF, who owns those if this is upheld?

Copyright applies to books, not patents.  Look upstream in the thread for a quote from the copyright act discussing when the Crown can assert a copyright.

 

[FJAG]

Second: to the point of "If a reservist working in his civilian job creates intellectual property as part of his civilian job, who holds the rights to that property?". If there is no nexus between the reservists invention for his civilian employer, there is no obligation to report it. Generally civilian employees must assign their IP created during the course of employment to their employer. If a reservist were to report the invention to the MND, the reservist may end up breaching the confidentiality provisions of his employment contract.

Much of what you say in the rest of your post is very true but the question of "no nexus" equals "no obligation to report" is not correct based on the PSIA and this interpretation by the FCA. The mere status as a public servant triggers the requirement to report.

Note that the FCA overturned the motion's judge's invalidation of the patent and summary judgement in favour of the crown. The FCA held that while the inventor may be liable to the penalties set out under the PSIA his patent was nonetheless valid although there was an open question as to whether he or the crown were the ultimate owner of the patent is the inventor or the crown is an open one (presumably for the trial court).

I think any reservist patent holder or potential patent holder has grounds to be concerned. The purpose of the PSIA is to put an obligation on a public servant inventor to make his invention known to the appropriate minister so that the crown can determine if it should waive, abandon, or assert and transfer the rights in the invention to the crown. The failure to give notice can result in penalties and, as you state, the whole thing makes being a reservist while involved in the business of patentable inventions a problematic issue. I think any reservist (primary or supplementary) involved with patentable inventions should seek appropriate legal advice.

To OldSweat - luckily when I hit CRA they had changed the rules on SuppRes and I couldn't join anyway--statutorily deemed too old and feeble-minded, I guess.  [ The PSIA doesn't apply to copyrights and in any event everything I wrote and published was done so after becoming a full fledged civilian.  :nana:

:cheers:

 

[Cloud Cover]

Much of what you say in the rest of your post is very true but the question of "no nexus" equals "no obligation to report" is not correct based on the PSIA and this interpretation by the FCA. The mere status as a public servant triggers the requirement to report.

As you say, it was this interpretation in this decision. All of what I wrote was correct, look at the statute,  it plainly says:

3. The following inventions, and all rights with respect thereto in Canada or elsewhere, are vested in Her Majesty in right of Canada, namely,
(a) an invention made by a public servant while acting within the scope of his duties or employment, or made by a public servant with facilities, equipment or financial aid provided by or on behalf of Her Majesty; and
(b) an invention made by a public servant that resulted from or is connected with his duties or employment.

It was this court in this decision in yet another spectacular error of law, decided to ignore the temporal/ present tense precedent of "an invention made by a public servant" which using the principles of statutory interpretation implies actually serving at the material time as a public servant. And then for their next act, the court further  broadened the meaning of "duties of employment" to include ideas and inventions that occurred long after actual employment ceased. If Parliament wanted this to extend to a person that was a public servant, they would have clearly said so in both official languages. It isn't that much more extra typing or use of the Queens ink and paper. By checking this against the French version of the statute, the court opted to take that as a broader interpretation, for which there was no compelling justification that I could see.  They are changing the nature of intellectual property duties owed to the state through public sector employment to continue basically forever. There are clear cases for certain duties, but these duties are  generally limited to state secrets or tools, techniques and investigative methods, i.e. sensitive tradecraft items that are not publicly filed patents! In this case, the patent application was filed long after employment ceased and consequently this is too onerous of an employment duty to survive cessation of employment. 

This case needs to be put in a box and forgotten. It causes too much uncertainty, and no lawyer would ever advise risking disclosure of an invention to a government entity for potential waiver without some form of protection for the IP to begin with. Better to advise a client to develop and file in another jurisdiction with more certainty, one without the potential extra legal steps of fighting a bad decision made by a Minister of the Crown, let alone a Court of "flaw".  The Canadian government can try and use the "in Canada or elsewhere" provision for enforcement, but good luck with that in Texas.

 

[FJAG]

As you say, it was this interpretation in this decision. All of what I wrote was correct, look at the statute,  it plainly says:

3. The following inventions, and all rights with respect thereto in Canada or elsewhere, are vested in Her Majesty in right of Canada, namely,
(a) an invention made by a public servant while acting within the scope of his duties or employment, or made by a public servant with facilities, equipment or financial aid provided by or on behalf of Her Majesty; and
(b) an invention made by a public servant that resulted from or is connected with his duties or employment.

It was this court in this decision in yet another spectacular error of law, decided to ignore the temporal/ present tense precedent of "an invention made by a public servant" which using the principles of statutory interpretation implies actually serving at the material time as a public servant. And then for their next act, the court further  broadened the meaning of "duties of employment" to include ideas and inventions that occurred long after actual employment ceased. If Parliament wanted this to extend to a person that was a public servant, they would have clearly said so in both official languages. It isn't that much more extra typing or use of the Queens ink and paper. By checking this against the French version of the statute, the court opted to take that as a broader interpretation, for which there was no compelling justification that I could see.  They are changing the nature of intellectual property duties owed to the state through public sector employment to continue basically forever. There are clear cases for certain duties, but these duties are  generally limited to state secrets or tools, techniques and investigative methods, i.e. sensitive tradecraft items that are not publicly filed patents! In this case, the patent application was filed long after employment ceased and consequently this is too onerous of an employment duty to survive cessation of employment. 

This case needs to be put in a box and forgotten. It causes too much uncertainty, and no lawyer would ever advise risking disclosure of an invention to a government entity for potential waiver without some form of protection for the IP to begin with. Better to advise a client to develop and file in another jurisdiction with more certainty, one without the potential extra legal steps of fighting a bad decision made by a Minister of the Crown, let alone a Court of "flaw".  The Canadian government can try and use the "in Canada or elsewhere" provision for enforcement, but good luck with that in Texas.

You're jumping the gun here. The court never dealt with s. 3 to any extent as the original motion was one for summary judgement by the crown based on the argument that since the inventor failed to report the patent the patent was void and therefore his lawsuit should be dismissed. The FCA overturned that decision and therefore the matter goes to trial where any s.3 arguments might still be made by either side.

The issue thought is not whether or not the patent belongs to the crown under s.3 but the reporting obligations under s.4. Obviously we're all dealing with wild-ass guesses here but under the circumstances of a member on the supplementary reserve for a long period of time I would think that the likelihood that the crown could actually claim ownership under s.3 is highly unlikely.

I don't think any lawyer would tell an inventor to shop the jurisdiction around just for this issue (Take a look at s 4(b) which prohibits that). The inventor can protect his patent by simply making the public service disclosure through the patent office under s.4(c) so that the patent disclosure is official and then do the 4(a) notification. Please note that lawyers generally do not advise clients to break or avoid the law. They tell clients what the law is and what the penalties for avoidance etc are. After that it's up to the client.

Stop blaming the FCA. They got it right. It's the PSIA and the dork crown attorneys that brought this argument in the first place that created the problem

:cheers:

 

[Journeyman]

Well the "B" Ark folks are off and running.....    op: