Routine Correction of Inventorship in the Face of Pending Litigation

H Lundbeck A/S v Canada (Commissioner of Patents) 2021 FC 1394 Pentney J

2,705,163

This is a routine correction of inventorship under s 52, with a twist in that the application for correction was brought in the face of what was arguably pending litigation.

Pentney J ordered the records of the Patent Office varied to remove three of the original four named inventors from Lundbeck’s 163 patent, and also removing one of the original two named co-owners. The error arose because the claims had been substantially narrowed during prosecution, such that the new claims were addressed exclusively to the contribution of only one of the four original named inventors [7]–[8]. The ownership point arose because the four original named inventors were employees of two different companies, which thereby became co-owners. With inventorship changed to one of the inventors, their employer was accordingly the sole owner. By inadvertence, inventorship and ownership were not amended accordingly.

Pentney J noted that “[i]n previous cases involving the addition or deletion of an inventor’s (or co-inventor’s) name, the Court has considered the test set out in subsections 31(3) and (4) of the Act, which relate to the addition or removal of applicants to a pending patent application” [15]. The use of the word “considered,” is significant, as Pentney J is not suggesting that the test in s 31(3), (4) is the same as the test under s 52. On its face the powers granted to the Court by s 52 are broader than the Commissioner’s powers of correction under s 31(3), and it is now clear in practice that the Court is not restricted by the criteria set out s 31(3), (4): see eg Inguran 2020 FC 338, (discussed here) removing an inventor without the affidavits from the remaining applicants required by s 31(3); SALT v Baker 2020 FCA 127 (here) adding an owner in a contested case in which the omission was not by inadvertence. The effect is that the criteria in s 31(3), (4) are sufficient but not necessary for removal or addition in a granted patent; the Court will consider those criteria, and if they are satisfied, the addition or removal will be ordered routinely, but the power of correction under s 52 is not limited to those routine cases.

There was one “wrinkle,” namely that “subsequent to filing its Motion Record in this matter, Lundbeck received a Notice of Allegation (NOA) in relation to the 163 Patent” [20], and “[t]he question is whether this constitutes “pending litigation” and as a consequence any other party should have been given notice of this proceeding” [20] While accepting that this arguably constituted pending litigation, Pentney J ordered the correction nonetheless, noting that there was no indication that the parties to the NOA would be prejudiced [22], given that the NOA did not allege improper inventorship or ownership [20]. The key principle is that “It is immaterial to the public whether there is one inventor or two joint inventors as this does not go to the term or to the substance of the invention nor even to entitlement” Micromass v Comm’r of Patents 2006 FC 117 [16], quoted at [22]. As Pentney J noted, this principle has been regularly affirmed and applied [21]. This is perhaps not to say that a change in inventorship can never be material, but rather that it must be shown to be material before an amendment will be refused on this basis. As Martineau J commented in Everlight 2017 FC 1108 (here) [5], quoted by Pentney J at [21], “[t]he proposed variation will cause no prejudice to third parties, as no outsider is claiming an interest in the Patent, there is no ongoing infringement case, and the rest of the Assignment is immaterial to the public.”

First Decision on Patent Agent Privilege

Janssen Inc v Sandoz Canada Inc 2021 FC 1265 Horne CMJ

This is the first decision I’m aware of dealing with the newly introduced s 16.1 which provides for patent agent privilege. Prior to the introduction of this provision, communications between patent agents and their clients were not privileged in Canada [7]. Consequently, the scope of the patent agent privilege is limited by the language of the Patent Act, and in particular the three part test set out in s 16.1 [16], which requires that the communication must be (a) between a patent agent and their client; (b) intended to be confidential; and (c) relating to the protection of an invention.

A few points emerge from the decision. First, patent agent privilege does not extend to all communications between the agent and the client. Section 16.1(1)(c) provides that privilege arises in respect of advice relating to “the protection of an invention.” This means that the privilege does not extend to a non-infringement opinion ie an analysis as to whether a product infringes third party patent rights [18]. However, “whether patent agent privilege applies to an infringement opinion of one’s own patent, that is not before the Court on this motion, and is therefore not a point to be decided here” [18].

Second, when that privilege does arise under the statutory provisions, the legal principles governing the privilege and the exceptions are likely the same as those governing legal privilege [12].

Third, the privilege belongs to the client, not the individual with whom the patent agent initially communicated: see s 16.1(1)(a), 16.1(2), [22]. When the client is a company, as in this case, the privilege is not lost when it is communicated within the firm, without the involvement of third parties [22].

The party asserting privilege had the burden of establishing the privilege, which is to say the burden of establishing the three requirements of s 16.1(1) [4]. Section 16.1(2) provides that the privilege does not apply if it is expressly or implicitly waived by the client. The party asserting privilege does not bear the onus of establishing the absence of waiver: “Once the party asserting the privilege has met the test set out in section 16.1 on a balance of probabilities, the privilege attaches and is assumed to endure. The onus then shifts to the opposite party to establish waiver” [33].

Thanks to Alan Macek's IPPractice for making this decision available.