Sunday, February 3, 2013

Removing Inventors Post-Grant

Segatoys Co., Ltd. v. Canada (Attorney General) 2013 FC 98 O’Keefe J
            2,547,539 T-1472-12, Date: January 30, 2013

Somehow the Segatoys decision escaped my notice last week, even though I had been staring straight at it when looking at FC website. (Alan Macek’s useful daily IP update brought it to my attention.)

Segatoys was an uncontested application by Segatoys for an order to replace the named inventors on a granted patent by removing the two listed inventors, who had worked on the appearance of the final product without contributing to the inventive concept, and adding the two real inventors. It was uncontested that the error was inadvertent.

In Micromass 2006 FC 117 Layden-Stevenson J held that inventorship of a patent cannot be changed under s 8, which allows the Commissioner to make changes, as that relates only to clerical errors. Prior to grant, the change can be made under s 31(3), (4), which allow the Commissioner to remove or join an applicant to a pending application, but after grant, such a chance can only be made under s 52, which gives the Federal Court broad powers to rectify matters relating to title. Subsequently, in Plasti-Fab 2010 FC 172, O'Keefe J followed Micromass, and held further that when considering an application under s 52 to add an inventor to a granted patent, the Court will engage the test set out under s 31(4) that would be applied by the Commissioner in adding an applicant prior to grant. In Segatoys, O’Keefe J, in a straightforward extension of Plasti-Fab, held that when considering an application under s 52 to remove an inventor, the Court will engage the test set out under s 31(3) that would be applied by the Commissioner in removing an applicant prior to grant.

Apart from this, the decision suggests that the Court will try not to place unnecessary burdens on the applicant in this type of uncontested motion, where, as O’Keefe J noted “nothing suggests that third party rights will be affected” [26]. In particular, the facts were established by notarized declaration rather than affidavit, as specified in s 31(3) of the Act, but O’Keefe J held that this was adequate, as “the declarations thus fulfill the same function as an affidavit and it would be overly formalistic to reject them on the basis of their labelling” [18]

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