Qualcomm Incorporated v. Canada (Commissioner of Patents) 2016 FC 1092 Southcott J
This decision concerned an uncontested application by Qualcomm pursuant to s 52 of the Act to
correct the name of the inventor on the 594 patent by adding the true inventor and deleting two
incorrectly named inventors. In a previous Qualcomm decision, 2016 FC 499 (blogged here),
Simpson J held that the affidavits that would be required to amend the inventorship for a pending
application under s 31 are not strictly required under s 52. Qualcomm nonetheless provided
affidavits, out of an abundance of caution , .
Qualcomm also sought to have certain documents recorded against the 594 patent, including a
copy of replacements sheets for the PCT Declarations of Entitlement . Southcott J declined to
grant that relief, but without actually holding that the FC does not have the jurisdiction to grant
such relief under s 52. Qualcomm did not urge the point very strongly, acknowledging that it
would have other means have filing the replacement documents. Accordingly, in the absence of
case law holding that s 52 authorized the FC to order the recording of documents, Southcott J
declined to grant the relief, without any express holding as to whether he had the necessary
authority to do so -.