Wednesday, September 24, 2014

Inventorship in a Combination Invention

Drexan Energy Systems Inc v The Commissioner of Patents and Thermon Manufacturing Co, 2014 FC 887 O'Keefe J

In 2006 Steve Makar, Konrad Mech, Wells Whitney and Umesh Sopory perceived some deficiencies heating cables used to keep pipes from freezing in cold environments, and they decide to create a new type of heating cable without those defects [3]. Their collaboration resulted in the ‘561 patent, for which Dr Whitney and Mr Sopory were the only listed inventors. By 2010 the relationship between the men had broken down. The interest of Dr Whitney and Mr Sopory was assigned to Thermon, and Mr Makar and Mr Mech was assigned to whatever rights they had Drexan, one of Thermon’s competitors. In this application Drexan sought to have Mr Makar and Mr Mech added to the ‘561 patent as co-inventors [6]. The court noted that s 52 of the Act gives the court the authority to make such an order, and that the burden lay on the applicant [23].

The court reviewed established law on inventorship and noted that the question is whether Mr Makar and Mr Mech were in some way responsible for the inventive concept, though it is not necessary for them to be wholly responsible for it, “so long as his or her ingenuity is applied to the original inventive concept and not just verification” [24, 26 citing inter alia Wellcome / AZT, 2002 SCC 77, [96]). 

The main legal point of interest is that the heating cable was a combination of elements known in the prior art, and the inventive concept lay in the combination of particular elements, not in the elements themselves [27].

[29] This means that the focus has to be on whether Mr. Makar’s and Mr. Mech’s contributions were directed not only to suggested features (see Weatherford (FC) at paragraph 260), but to how they could actually be combined. Put another way, if there are two competing products that have different advantages and disadvantages, it takes no ingenuity at all to suggest that it would be great if there could be a product that has the advantages of both without the disadvantages of either. If there is any inventive concept at all in combining those two products, it lies in discovering how to make a product that has the desired attributes of both and it is to that process that the inventive contribution must be made.

The case then came down to an issue of credibility [30], and ultimately O’Keefe J held that Mr Makar and Mr Mech were not co-inventors: “Undoubtedly, Mr. Makar and Mr. Mech had useful input into the design of the cable, but the applicant has not proven that it was anything more than suggesting desired features and communicating feedback from potential customers” [56]. The application was therefore dismissed [57].

(Thanks again to IPPractice for posting this case - that's six in a row.)

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