Sunday, November 1, 2015

FC Has Authority to Vary Ownership When Uncontested

Imperial Oil Resources Ltd v Canada (Attorney General) Exxonmobil Upstream, 2015 FC 1218 LeBlanc J

This was an uncontested application by Inperial Oil and Exxonmobil Upstream, as listed co-owners of the ‘481 patent, to amend inventorship and ownership. The application for the patent listed11 inventors. During prosecution, the scope of the claimed subject-matter was restricted, and only three of the 11 inventors contributed to the elected subset of claims and in consequence of the change in inventorship, Upstream should not have been listed as owner. The patent was issued without the proper modifications. This was all uncontested, and the only question was whether the court had jurisdiction to order the amendment pursuant to s 52. The application was not opposed by the Commissioner.

LeBlanc J noted that “This Court has interpreted the word ‘title’ in section 52 of the Act broadly to include ‘matters relating to the root of title’ such as inventorship” [12] and consequently the court had jurisdiction to amend the inventorship. On the issue of ownership, LeBlanc J noted that while the court does not have jurisdiction under section 52 of the Act to determine ownership of patents, as this would require the application and interpretation of the provincial law on contracts, in this case there was no substantive issue as to ownership, and therefore the Court had jurisdiction to vary the ownership of the ‘481 Patent as a consequence of correcting inventorship [18].

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