Thursday, June 8, 2023

Routine Correction of Inventorship re Patent which is the Subject of Litigation

Regeneron Pharmaceuticals, Inc v Canada (Attorney General) 2023 FC 768 Grammond J


This was a routine correction of inventorship pursuant to s 52, to add an inventor who had been inadvertently omitted. Two points of note: Regeneron did not provide affidavits from the other inventors, but Grammond J noted that this is not a bar to such an application, citing CAE Inc 2021 FC 307 [22]. Second, the main consideration on a change of inventorship is whether third party rights might be affected. Consequently, “[a]n application pursuant to section 52 should include a statement that the patent at issue is not the subject of pending litigation or evidence allowing the Court to find that granting the application would not affect the rights of third parties” [4]. In this case, the 276 patent is currently the subject of litigation. Counsel for Regeneron gave notice of the application to counsel for the other parties in these other proceedings, and as no one has sought to intervene in this application, Grammond J was satisfied that third party rights were not affected [4].

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