Tuesday, December 18, 2012

Named Co-inventor Has No Right to Be Heard Before Being Removed from Application

Baksh v Probiohealth LLC 2012 FC 1388, O’Reilly J
            Application 2,503,510

It seems that a named co-inventor has no right to be heard before being removed from an application. In 1999 Mr Bing Baksh was involved in helping Probiohealth develop a probiotic nutritional supplement involving bacteria suspended in oil and packaged in a particular encapsulation system. Mr Baksh had been primarily responsible for the encapsulation system, while a Dr Naidu was primarily responsible for developing the oil suspension [3]. In 2002 Priobiohealth filed a patent application, that became the ‘510 application, in which Mr Baksh and Dr Naidu were named as co-inventors [4]. In 2006 Dr Naidu assigned his rights to Probiohealth, but Mr Baksh refused to do so [5]. Probiohealth filed a voluntary amendment cancelling the claims related to the encapsulation system [6]. Probiohealth then filed a request under 31(3) of the Act to remove Mr Baksh as a co-inventor on the application [9], supporting this with an affidavit from Dr Naidu swearing that he was the sole inventor of the remaining claims. The Commissioner granted the request, and sent Mr Baksh a letter confirming that he had been removed as a co-inventor [11]. Mr Baksh appealed that decision and also sought judicial review. Both the appeal and the application for judicial review were addressed in O’Reilly J’s reasons.

O’Reilly J dismissed Mr Baksh’s appeal on the basis that s 31(6) of the Act does not provide him with a right of appeal because he was not a party to the original proceeding: [17]-[18].

Turning to the judicial review point, Mr Baksh argued that it was unfair to remove him as a co-inventor without giving him an opportunity to make submissions [25]. O’Reilly J disagreed [26], saying.

[29] Subsection 31(3) does not contemplate the holding of a hearing or receiving submissions from other interested parties. The question is whether the remaining applicant (Probiohealth) could satisfy the Commissioner, by affidavit, that Mr Baksh should be removed as a co-inventor. Therefore, the Commissioner did not err in considering only Dr Naidu’s affidavit.

Indeed, O’Reilly J stated that the Commissioner was actually prohibited by Rule 6(1) from even asking Mr Baksh for submissions [30]. Nor did the Commissioner have any duty to give reasons to Mr Baksh [31].

O’Reilly J then concluded that the Commissioner’s decision, on the material before him, was not unreasonable. This conclusion was not surprising, given O’Reilly J’s holding that the only material properly before him was the affidavit submitted by Mr Naidu [36].

The result is that Mr Baksh was removed as a co-inventor without any opportunity to be heard. While this initially seems counter-intuitive, in some circumstances at least, it makes sense. If a person is inadvertently named as an inventor by a clerical error in the office of the patent agent, for example, it might not be sensible to give that person a right to be heard before having them removed. This case, however, is more difficult, as it was apparently uncontested that Mr Baksh made the initial suggestion to suspend the bacteria in oil, although Dr Naidu had worked out the details. Depending on the nature of the inventive concept, Mr Baksh’s contribution could have amounted to co-inventorship. O’Reilly J addressed this, saying that “Dr Naidu’s affidavit provided sufficient evidence to support the Commissioner’s decision. . . . While Mr Baksh may have originally planted the idea of using oil emulsions to solve problems with viability and stability, this did not form part of the subject matter of the ‘510 patent application” [36]. This conclusion was no doubt reasonable on the sole evidence of Dr Naidu’s affidavit, but, without doubting Dr Naidu’s good faith, the basic premise of our adversarial system is that conclusions drawn on one-sided evidence are suspect.

The solution suggested by O’Reilly J is that “Mr Baksh had other remedies available to him. He could have applied under s 31(4) to be added as a co-inventor, or he could have moved to correct the patent register under s 52.” Section 31(4) provides

(4) Where an application is filed by one or more applicants and it subsequently appears that one or more further applicants should have been joined, the further applicant or applicants may be joined on satisfying the Commissioner that he or they should be so joined, and that the omission of the further applicant or applicants had been by inadvertence or mistake and was not for the purpose of delay.

On its face this does not give Mr Baksh standing to object to being removed as a named inventor, but now that he has been removed, it seems that he will be able to make an application to the Commissioner to be added back again, and if the Commissioner refuses to do so, he will be entitled to appeal under s 31(6). Similarly, it appears that s 52 would not have given Mr Baksh a right to be heard before being removed (see Cellcor Corp. v. Kotacka, (1976) 27 C.P.R. (2d) 68 (FCA), noting that “[t]he 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”), but only allows an appeal after a decision has been made (Love v Claveau (1989) 28 CPR (3d) 241 (FCTD)).

Thus an inventor does not have an opportunity to be heard before being removed, but can act only after a decision has been made. And in this case, despite Mr Baksh’s abundance of caution in seeking both appealing and seeking judicial review, he was not cautious enough; he should also have brought an application under s 52 or s 31(4). This does seem to follow the scheme of the Act, but it is Dickensian way of providing a chance to be heard to a party with a prima facie argument.

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