Does an Order to the Commissioner to Vary the Patent Office Records Engage the Limitations Period?

Secure Energy (Drilling Services) Inc v Canadian Energy Services LP 2023 FC 906 Zinn J

2,624,834 / Water-Based Polymer Drilling Fluid

This case raises a difficult question as to whether the limitations period in s 39(2) of the Federal Courts Act applies to a declaration of inventorship and consequent declaration of ownership. It also raises a subsidiary question as to whether a formal order directing the Commissioner to vary the records of the Patent Office is required when the court issues a declaration of ownership under s 52. For convenience, I will refer to the corporate parties’ predecessors by the name of the current parties, namely Canadian Energy Services (CES) and Secure; some arguments based on chain of title were raised, but these came to nothing: [78]–[83]. (CES’s predecessor was Mud King and Secure’s predecessors are Genesis, New West, Marquis, 1658774 Alta Inc.)

The 834 patent relates to drilling mud with anionic polymers as an anti-accretion additive to prevent the mud from sticking to the drilling components [2]. Ewanek, currently the named inventor on the 834 patent, worked for Secure. He hired Levey to work on anti-accretion additives [10]. In this decision, Zinn J found that it was in fact Levey alone who devised the anionic polymer additive which was the subject of the 834 patent [55]. In 2005, after Levey devised the anionic additive, Ewanek left Secure to work for CES [13]–[14]. CES then filed an application for what became the 834 patent, with Ewanek listed as the sole inventor. The 834 patent issued in 2016, with CES as the owner of record of the 834 patent and Ewanek as the sole inventor, which is the way the record stands as of the date of the decision. (It’s worth noting that Levey also devised a cationic polymer, which led to a separate patent 2,508,339, which issued to Secure; both Ewanek and Levey were named inventors on the 339 patent application, relating to the cationic polymer, but Ewanek’s name was subsequently removed: Secure v CES 2021 FC 1169 Zinn J discussed here.)

So, at heart, this was a case of contested inventorship, in which Zinn J found on the facts that Levey was the true sole inventor, and not Ewanek, who was listed as inventor on the record. This was the easy part. The finding that Levey was the true inventor was not a close call [42]–[54], and there was no real dispute that if Levey was the true inventor, then Secure as his employer was properly the owner, as Levey did not advance any personal claim to ownership [81].

The difficult issue related to the application of the limitations period. This was complicated by the procedural history. In Feb 2018 CES brought an infringement action against Secure in the Federal Court, based on the 834 patent,. Secure sought a stay on the basis that it would be commencing an action in the Alberta Court of Queen’s Bench seeking a declaration of ownership of the 834 patent; this was before SALT v Baker 2020 FCA 127 (see here), so both parties believed that the FC did not have jurisdiction to determine ownership [20]. This evidently alerted CES to the fact that Secure was going to defend on the basis of ownership, so in July 2018, CES commenced an action in the ABQB seeking a declaration that it was the owner of the 834 patent and that Secure had infringed. Secure defended and counterclaimed on the basis that it was the true owner or at least co-owner [18]–[19]. The FC action was stayed on consent until the Alta decision was received: [23].

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

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

3,007,276

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].

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.”

Routine Correction of Inventorship

Secure Energy (Drilling Services) Inc v Canadian Energy Services LP 2021 FC 1169 Zinn J

            2,508,339 / Drilling Fluid and Methods of Use Thereof

This was a routine correction of inventorship under s 52, with Zinn J ordering the records of the Patent Office varied to remove one of the two named inventors from Secure Energy’s 339 patent. The error arose because the patent agent who prepared the application had simply asked one of the named inventors, Levey, for the names and addresses of all the inventors, without informing him of the test for inventorship [24]. Levey and the other named inventor, Ewanek, discussed the matter between themselves and decided that both should be listed, without either having the benefit of advice as to who would legally be considered an inventor [25]. In light of Levey’s uncontested evidence of the course of invention, based on his lab notebooks, Zinn J had no difficulty in finding that Levey was the sole inventor [34]–[41].

There was a minor complication because Ewanek, the named inventor who was removed from the 339 patent, was also the sole named inventor in a different patent for a related invention (the 2,624,834 patent), that was being asserted against Secure Energy by Canadian Energy Services. Secure asserted that it was the true owner of the 834 patent [6]. Because of this relationship, CES was a party to this proceeding. While CES did not contest the change in inventorship of the 339 patent, it wished to ensure that no findings would be made on the evidence relevant to both patents that might prejudice its position with respect to ownership of the 834 patent. Fortunately, Zinn J was able to decide the issue of the ownership of the 339 patent without recourse to any of the contested material [17], [34].

Routine Correction of Inventorship

CAE Inc v Canada (Commissioner of Patents) 2021 FC 307 Manson J

            3,000,463

This was a routine correction of inventorship under s 52. Two of the four inventors listed on the priority US application had inadvertently been left off the Canadian application [3]–[5]. The application was supported by affidavits and it was established that the mistake arose through inadvertence. No interesting issues were raised and the application for correction was granted [5].

Routine Correction of Inventorship

Alfasigma SPA v Canada (Attorney General) 2020 FC 561 Grammond J

            2,538,546

This was a routine correction of inventorship under s 52. One inventor has been named on the Italian priority application, but his name had inadvertently been left off the PCT application [3]. The application was supported by affidavits of all the other inventors [4]. No interesting issues were raised and the application for correction was granted [5].

Correcting Inventorship Post-Grant

Inguran LLC dba STgenetics v. Canada (Commissioner of Patents) 2020 FC 338 Brown J

2,518,882 / 2,752,218 / 2,752,244 / 2,752,247

This decision concerned an uncontested application to remove six named inventors from several granted patents. Brown J followed Qualcomm 2016 FC 499 (here) in holding that an affidavit from remaining inventors to the effect that they are the sole inventors is not required, so long it is adequately established on the other evidence that the named inventors to be removed are not in fact inventors. The case also illustrates that the power of the FC to correct inventorship is post-grant pursuant to s 52 is broader than the power of the Commissioner to correct inventorship pre-grant pursuant to s 31.

In this case, the original application had twelve named inventors. After a unity of invention objection by CIPO, the application was divided into divisional applications relating separately to electro-mechanical subject-matter and biological subject-matter. All twelve inventors were left on the divisionals, even though the named inventors sought to be removed in this application had not contributed to electro-mechanical subject-matter claimed in the patents at issue. This application sought to remove those non-inventors.

Before a patent is granted, inventors can be removed by the Commissioner pursuant to s 31(3) and added by the Commissioner pursuant to s 31(4). The Commissioner does not have the authority to add or remove inventors after grant: Micromass 2006 FC 117. (The Commissioner can correct some essentially clerical errors under the Patent Rules, including a spelling error in the name of an inventor pursuant to Rule 109 (this was previously authorized by s 8, now repealed).)

Post-grant, grant, inventors may be added or removed on application to the FC pursuant to s 52, which gives the Court broad authority to “order that any entry in the records of the Patent Office relating to the title to a patent be varied or expunged.” A number of decisions by the FC have invoked the test under s 31 in a decision pursuant to s 52, notwithstanding that on its face s 31 applies only to the Commissioner in respect of applications (see here). Presumably this is because s 31 provides more specific guidance regarding changes in inventorship specifically.

There is a bit of a concern regarding this practice, as s 31 is more restrictive than the broad powers granted to the Court by s 52. In particular, s 31(3) regarding removal of non-inventors (ie named inventors who in fact did not contribute to the development of the claimed inventions), specifies that the application may be carried on by the remaining inventors “on satisfying the Commissioner by affidavit” that they are the true inventors. S 31(4), regarding addition, provides that inventors may be added on satisfying the Commissioner that (i) they should be so joined, and (ii) that the omission of the further applicant or applicants had been by inadvertence or mistake and (iii) was not for the purpose of delay. The question is whether these—in particular (ii) and (iii) are all required under s 52 as well.

Brown J agreed with the submission that in an application under s 52 the Court “may apply” the tests set out for the Commissioner of Patents in subsections 31(3) and 31(4) [35], citing various cases. I’d quibble a bit on this point, at least to the extent that “apply” suggests that the test under s 31 is also the strict test under s 52. Section 31 was certainly considered in the cases cited by Brown J, but I’m not sure it was actually adopted as the test under s 52, rather than as identifying relevant considerations. While the application to correct inventorship under s 52 will certainly be granted when the test under s 31 is satisfied, the question is whether it is necessary to satisfy the test under s 31 to correct inventorship under s 52. Brown J’s decision suggests that the answer is no.

First, Brown J noted at [37] that in Imperial Oil 2015 FC 1218 Leblanc J set out two criteria for the removal of named inventors set out by subsection 31(3):

[15] Subsection 31(3) of the Act sets out two criteria for the removal of named inventors:

i. does it appear that one or more of the named inventors have no part in the invention?; and

ii. has an affidavit been provided to satisfy the Court that the remaining inventors are the sole inventors?

However, in this case, two of the six remaining true inventors could not be located [29] and so they did not provide affidavits. There was plentiful evidence from the other named inventors, including both the true inventors and the non-inventors, that the non-inventors were indeed not inventors, and Brown J followed Qualcomm 2016 FC 499 (here) in holding this was a housekeeping requirement that is “not relevant when an issued patent is being considered by the Court under section 52 of the Act” (Qualcomm [10], quoted at [39]).

Thus, whether or not affidavits from all remaining applicants are required under s 31(3), there is no such requirement under s 52. This indicates that the test under s 52 is not the same as the test under s 31(3).

This makes sense functionally. It may be much more difficult to find the remaining inventors post-grant, as is illustrated on the facts of this case. Further, while it may make sense for the Commissioner to want to be satisfied that the remaining applicants are in fact the inventors before the patent is granted to them, it is not clear why the FC would need to be satisfied that the remaining inventors are in fact inventors, given that the Commissioner was already satisfied of this fact on granting the patent. Surely, post-grant, that can be presumed. The real question post-grant is simply whether the inventors sought to be removed were not in fact inventors, and it would seem that affidavits from those non-inventors to that effect would normally be sufficient evidence. I suppose the point will really be tested if one named inventor is to be removed, on the basis of satisfactory evidence that the named inventor not in fact an inventor, in circumstances in which none of the remaining named inventors can be located. It seems to me that it would be clearly appropriate for the FC to order the non-inventor to be removed in such circumstances.

Routine Correction of Inventorship

General Transport Equipment Pty Ltd v Canada (Attorney General) 2019 FC 309 McDonald J
            2,639,371

In the third decision released this week that raises no interesting issues of law, McDonald J granted a routine uncontested application, pursuant to s 52, to amend the records to add a co-inventor to the 371 patent.

Is the Test for Correcting Inventorship Errors under S 52 the Same as under S 31?

Pharma Inc. v. Canada (Commissioner of Patents) 2019 FC 208 Pentney J
            2,503,570

This decision concerned an uncontested application to add the name of a co-inventor who had been inadvertently omitted from the original application [1], [2]. The leading case on this issue is Micromass UK Ltd v Canada (Commissioner of Patents), 2006 FC 117 [10], which held that an application to the Court is required, as the Commissioner cannot make corrections related to inventorship under s 8 of the Act, which only gives the Commissioner authority to correct “clerical errors” [4]. Pentney J granted the application pursuant to s 52, which provides that:

52 The Federal Court has jurisdiction, on the application of the Commissioner or of any person interested, to order that any entry in the records of the Patent Office relating to the title to a patent be varied or expunged.

While the matter was routine, one point caught my eye. Pentney J remarked that:

[5] In prior cases involving the addition or deletion of an inventor’s (or co-inventor’s) name, the Court has considered the test set out in sub-sections 31(3) and (4) of the Act, which relate to the addition or removal of applicants to a pending patent application: Plasti-Fab v Canada (Commissioner of Patents), 2010 FC 172, at para 14; Qualcomm Inc v Canada (Commissioner of Patents), 2016 FC 1092; Gilead Sciences Inc. v Canada (Commissioner of Patents), 2019 FC 70. The pertinent part for the purposes of this application requires that the Court be satisfied: (i) that the person should be joined as a co-inventor; and (ii) “that the omission of the further applicant or applicants had been by inadvertence or mistake and was not for the purpose of delay” (sub-section 31(4)).

Note the careful language. Pentney J did not say that the test for changing inventorship under s 52 is the same as under s 31(3)(4), but rather that the Court “has considered” that test. Nonetheless, on the facts he applied the s 31 test, and there seems to be a creeping tendency to import the s 31 test into s 52.

While the point didn't make any difference on the facts, it seems to me that it would be wrong in principle to hold that the s 31(4) test applies under s 52 as well. (And I would repeat that Pentney J did not so hold.) Section 31(4), relevant to adding an inventor, provides as follows:

(4) Where an application is filed by one or more applicants and it subsequently appears that one or more further applicants should have been joined, the further applicant or applicants may be joined on satisfying the Commissioner that he or they should be so joined, and that the omission of the further applicant or applicants had been by inadvertence or mistake and was not for the purpose of delay.

The second part of the test stated by Pentney J in [5], that “that the omission of the further applicant or applicants had been by inadvertence or mistake and was not for the purpose of delay,” is drawn directly from s 31(4), as Pentney J noted. Section 52 is much broader on its face. As Layden-Stevenson J noted in Micromass:

[15] The powers conferred on the Court under section 52 are very broad. In Clopay, Cameron J. described section 54 (now section 52) of the Act in the following manner:

...I think, therefore, that s. 54 was enacted so as to enable the rectification by the Court of the records in the Patent Office relating to title in order that the party or parties actually entitled to the grant or to be registered as to the assignees of the patent, might have their rights properly recorded (p. 235).

There is no suggestion in Micromass, or in s 52 itself, that s 52 is in any way restricted to cases of inadvertence or mistake.

The notion that the test from s 31 is relevant to s 52 appears to stem from Plasti-Fab 2010 FC 172 [14], where O’Keefe J, after quoting at length from Micromass, stated “Therefore this Court may, in place of the Commissioner, engage the test set out in subsection 31(4) to determine if an individual should be joined.” With respect, there is nothing whatsoever in the passage quoted by O’Keefe J, or anywhere else in Micromass, to suggest that s 52 engages the test set out in s 31(4).

Other cases have considered the relationship between the provisions. In Gilead 2019 FC 70 [2], Grammond J stated that “This Court has said, however, that the criteria found in section 31(4), which governs the addition of applicants to a patent application, are relevant to an application under section 52,” citing Micromass and Pasti-Fab. Plasti-Fab does stand for this proposition, via the questionable interpretation of Micromass, just discussed, but Micromass does not.

Qualcomm #1 2016 FC 499 (blogged here) concerned an application under s 52 to remove a co-inventor from a granted patent. Simpson J considered s 31(3), which relates to the removal of an named inventor from an application, where (i) “it . . . appears that one or more of them has had no part in the invention,” and (ii) the Commissioner is satisfied “by affidavit that the remaining applicant or applicants is or are the sole inventor or inventors.” Simpson J stated at [7] that “I am satisfied that the first part of the test in [s 31(3)] is relevant” under s 52; but this is only to say that a named inventor should not be removed unless they are in fact not an inventor. No doubt the Court would have come to that conclusion under s 52, even without consulting s 31(3). She then went on to say that the second part of s 31(3), the requirement for an affidavit, did not apply [8]-[11]. Thus, Qualcomm #1 is authority for the proposition that the test from s 31(3) is not applicable under s 52, though some of the same considerations may be relevant.

In Qualcomm #2 2016 FC 1092 (blogged here) Southcott J noted that Simpson J in Qualcomm #1 had held that affidavits were not required under s 2, but he accepted them nonetheless given that they had been sworn and introduced into evidence. He did not suggest that he disagreed with Simpson J’s holding.

It does seem entirely reasonable to say that the test from s 31 may be relevant under s 52, in that whenever the more restrictive requirements of s 31 are met, it will almost always be appropriate to order the correction under s 52. But on the face of the Act, and in light of Micromass and Qualcomm #1, it seems to me that the opposite is not true; s 52 might properly be invoked even in circumstances where the test from s 31 is not satisfied.

This is a longer post than is perhaps necessary given that the issue discussed made no difference on the facts. But I am concerned that by slow accretion of obiter statements it might become accepted that the s 31 test is required under s 52, thereby effectively reading a restriction from s 31 into s 52. I appreciate Pentney J’s careful language on this point, noting that prior decisions had considered the test from s 31, without saying that it was necessary under s 52.

Testing is not Invention

MIPS AB v Bauer Hockey Ltd 2018 FC 485 Gagné J
            2,798,542 [MIPS Patent]
            2,784,316 / 2,821,540 / 2,838,103 / 2,847,669 [Bauer Patents]

MIPS v Bauer concerns an invention near and dear to me, namely sports helmets designed to absorb rotational energy in order to minimize brain injury. (I do a lot of cycling, and all of my current helmets are equipped with MIPS technology.) Both Bauer and MIPS had developed and patented technology addressed at this problem. In this litigation, MIPS alleged that it was a co-inventor of the Bauer technology; that the Bauer products infringed the MIPS patent, and that the Bauer patents were invalid. In response, Bauer attacked the validity of the MIPS patent. The decision, that the MIPS employees were not co-inventors of the Bauer technology, the MIPS patents were valid but not infringed, and that the narrower claims of the Bauer patents were valid, turned on the facts and claim construction.

MIPS was an early leader in this technology, which is at the core of MIPS’ business. MIPS was founded in 2001 [15], and a patent for its first generation technology (MIPS I) was granted in Sweden in 2002. MIPS I used a sliding facilitator apparatus to allow rotational movement between the hard outer shell of the helmet and the inner energy-absorbing layer [13]. Its first product using this technology, an equestrian helmet, was launched in 2007 [16]. MIPS II technology was developed starting in 2009 [19], to address in-mold helmets, in which the inner energy absorbing layer is fused directly to the outer shell, making it impossible to place a sliding facilitator between the two. MIPS II technology uses an “attachment device” (3) as an interface between the wearer’s head and the inner energy absorbing layer, allowing relative rotation between the head and the inner layer.




Concussions are an increasing concern in hockey, and around the same time as MIPS was developing MIPS II, Bauer was also developing a technology to address rotational impact, specifically in hockey helmets, known as RE_AKT, using a SUSPEND-TECH floating liner.

Rotational impact is a relatively new concern in helmet design, and older testing equipment had been made to test only linear impact. The inventorship dispute arose because part-way through its development cycle, Bauer lost its academic partner responsible for testing, and Bauer, which had become aware of the MIPS I helmet, approached MIPS with the aim, as Gagné J held, of having MIPS test the Bauer designs. Gagné J’s decision recounts the details of the collaboration, but at the end of the day, she held that the MIPS team were not co-inventors of the Bauer product. The legal principle is that a party who tests an invention does not thereby become a co-inventor [93], and in this case Bauer employees had wholly conceived of the inventive concept, which had only been tested by MIPS [94], [100]. She noted that a series of events and coincidences (such as the fact that the inner liner on both products happened to be made of yellow material) had contributed to MIPS’ misperception of the facts [91].

On the issue of infringement, the MIPS products use an attachment device which is fixed securely to the head, with elastic fixation members between the attachment device and the inner energy absorbing layer. The attachment device and inner layer slide freely against one another, and energy absorption is achieved by deformation of the fixation members. The Bauer helmets, in contrast, have a floating liner, which is not securely attached to the head, and there are no fixation members as such, but rather energy absorption is provided by friction between the liner and the inner layer [184]. As Gagné J noted, to determine infringement, the defendant’s product is compared with the patent, not with the plaintiff’s product, even if that product embodies the invention. She held that using friction as a mechanism for absorbing rotational energy did fall within the broadest claims of the MIPS patent [163]. However, she also held that the claimed attachment device had to be coupled to the head, both before and during impact, and Bauer’s SUSPEND-TECH floating liner did not operate in that manner [192]. In effect, MIPS had not invented the concept of permitting rotation decoupling between the head and the helmet, but only one way of achieving that decoupling, and Bauer had independently developed another method. Because the attachment device was a crucial element of the claims, the Bauer products did not infringe [192], [197]. (MIPS also lost on other independent points, so the finding of no infringement did not rest on this issue alone [219].)

Bauer’s attack on the MIPS patent on the basis of anticipation and obviousness failed in large part because MIPS got caught in an infringement / validity squeeze [231], [243]. Because the court construed the “attachment device” more narrowly than MIPS’ experts, the validity attacks failed but so did infringement claim. A broader interpretation of the element would have led to a finding of invalidity [244]. (An overbreadth attack also failed on the facts [256].)

MIPS attacked the Bauer patents as being obvious in light of the MIPS II technology, which was on sale before the Bauer patent application was filed [257]. The broadest Bauer claim was held to be invalid for obviousness, on the basis that it would have been obvious to a skilled person to put a MIPS attachment device inside a hockey helmet, and that would fall within the claims [286], [287]. However, the narrow claims, addressed to Bauer’s specific implementation, were upheld [294].

Uncontested Change of Inventorship

Qualcomm Incorporated v. Canada (Commissioner of Patents) 2016 FC 1092 Southcott J
            2,630,594

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 [13], [14].

Qualcomm also sought to have certain documents recorded against the 594 patent, including a copy of replacements sheets for the PCT Declarations of Entitlement [1]. 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 [16]-[17].

Uncontested Removal of Co-Inventor

Novartis AG v Canada (Attorney General) 2016 FC 229 McDonald J

            2,782,650

In this decision, decided in February but only recently released, McDonald J granted an uncontested application by Novartis to delete one of the named co-inventors on the ‘650 patent. The decision states that the application was made “pursuant to sections 31(3) and 52” of the Act [1]. This is a bit odd as was established in Micromass 2006 FC 117 that s 31(3) applies only prior to grant, and after grant, as in this case, s 52 is appropriate: accordingly, the judgment itself was made “pursuant to section 52" of the Act. The application also proceeded on the basis that the test to be met for removal of an co-inventor is that set out under s 31(3), which requires affidavits from the remaining applicant or applicants satisfying the Commissioner that they are the sole inventor or inventors [6]. At the time the application was made, there were some cases suggesting that in deciding whether to remove a co-inventor under s 52, the court should follow the test set out for the Commissioner of Patents in s 31(3) (see here). That view would also explain why the application was brought pursuant to both sections. Subsequently, however, in Qualcomm 2016 FC 499 (blogged here) Simpson J has held that such affidavits are not strictly required under s 52. The decisions are not inconsistent in the result, since the affidavits were provided in this case and the application was granted, and no doubt it was simpler for Novartis to provide those affidavits rather than argue the point, as the law was unsettled at the time of its application.

Affidavit from Remaining Inventors Not Required When Correcting Inventorship of Granted Patent

Qualcomm Incorporated v Canada (Commissioner of Patents) 2016 FC 499 Simpson J
            3,860,309

Qualcomm applied for an order pursuant to s 52 of the Act, to delete Mr Palanki as a co-inventor on the ‘309 patent. The application was not opposed by CIPO and Mr Palanki consented to the order sought on the basis that he was not a co-inventor. The only difficulty is that some decisions, in particular Imperial Oil 2015 FC 1218 (blogged here) and Segatoys 2013 FC 98, had suggested that in deciding whether to remove a co-inventor, the Court should follow the test set out for the Commissioner of Patents in s 31(3) [5], which provides that when a joint applicant for a patent is removed as not being an inventor, the prosecution may be carried on by the remaining applicants “on satisfying the Commissioner by affidavit that the remaining applicant or applicants is or are the sole inventor or inventors” [6]. In this case, even though it was uncontested that Mr Palanki was not an inventor, there was no affidavit that the remaining named inventors were the sole inventors. Simpson J held that the affidavit in question is essentially a housekeeping requirement to promote the efficient processing of pending patent applications in the Patent Office and it is not required when an issued patent is being considered by the Court under s 52 [9]-[10]. She therefore granted the application. I note that this is not inconsistent with Imperial Oil and Segatoys in the result, since in both of those cases the application was also granted: neither was a case in which an application to amend under s 52 was refused for failure to provide the affidavit in question.

Failure to Disclosure Status as Public Servant Not Material for Purposes of s 53

Brown v Canada 2016 FCA 37 Boivin JA: Webb, de Montigny JJA rev’g 2014 FC 831 Kane J

2,285,748

Mr Brown was a member of the Canadian Forces Supplementary Reserve when he filed his application for the 748 patent. The patent related to technology used for decontamination and containment of biological and chemical hazards, which has military applications [9]-[10]. After the firm started by Mr Brown failed to win a contract with Public Works to supply related technology, Mr Brown launched infringement proceedings against the Crown and the winning bidder. The Crown defended by bringing a motion for summary judgement on the basis that (a) Mr Brown was a “public servant” as defined by s 2 of the Public Servants Inventions Act, and as such he was required by s 4(1)(c) of that Act to disclose that he is a public servant in his patent application; and (b) Mr Brown’s failure to make such a disclosure was an untrue material allegation which invalidated the 748 patent pursuant to s 53 of the Patent Act. In the Federal Court, Kane J held that Mr Brown was a public servant, and that the failure to make that disclosure was an untrue material allegation, but whether it was wilfully made for the purpose of misleading was a matter for trial. On appeal, the FCA held that Mr Brown was indeed a public servant, but the failure to disclose was not material to the Patent Act.

On the first issue, the FCA held that “for the purpose of the PSIA, all members of the Canadian Forces are ‘public servants’ whether they are in the Regular Force or the Reserve Force” [27]. While the English version of s 2 is somewhat ambiguous, saying that a public servant means an employee “and includes” a member of the Canadian Forces, the French version of s 2 is perfectly clear that public servant means an employee and a member of the Forces [25].

On the second issue, the FCA held that there was an “apparent conflict and lack of consistency” between the forms and regulations under the PSIA and the Patent Act, in that the former require disclosure of the public servant status and the latter do not. The FCA concluded that the Patent Act prevails and hence there was no requirement on the Patent Act for the applicant to disclose their status a public servant [45]. Moreover, even apart from this inconsistency, a reading of the two Acts together supports the conclusion that Parliament did not intend that a patent could be void for a failure to disclose public servant status [46], as penalties for failure to make that disclosure are provided by s 4(1) of the PSIA [48]. This second point strikes me as entirely compelling. Indeed, the contrary conclusion would be perverse. The purpose of the PSIA is to vest in the Crown inventions that are made by public servants: s 3. If the position advanced by the Crown was correct, then any public servant inventor could unilaterally deprive the Crown of a valid patent to which the Crown was entitled by law, simply by failing to disclose their status as a public servant. Yes, the sanction of invalidity would provide an incentive to disclose, but not a very strong one, since the inventor would not be entitled to the invention either way: if the inventor didn’t disclose, the inventor would run the risk that the patent would be held invalid, and if the inventor did disclose, the inventor would run the risk that the patent would be vested in the Crown. And in any event, the sanction of invalidity puts the victim and the wrongdoer together in front of the firing squad. The offences of s 11 of the PSIA, which are target the public servant, are a far more sensible sanction. I can’t help but think that there was a failure of communication between the Crown’s litigation team and those responsible for longer term policy.

Section 52 Allows Correction of Ownership

Gray Manufacturing Company, Inc. v. Canada (Attorney General) 2016 FC 55 Shore J
            2,406,340

This was an uncontested application under s 52 of the Act, which gives the Federal Court broad jurisdiction to vary or expunge Patent Office records related to the title to the patent, to correct the ownership of the patent. The inventor had intended to assign his rights in the invention to Gray Automotive Products Co., but the assignment document (which was attached to the patent application) inadvertently specified Gray Automotive Products, Inc., and the Patent Office consequently registered it against that name [4]. The mistake was unintentional, made in good faith, and, was made without any attempt to mislead or cause delay [10]. Shore J held that the broad jurisdiction conferred by s 52 includes the power to vary errors relating to the ownership of a patent [9] and he ordered the appropriate correction.

For a slightly more extended discussion of s 52, see here.

Update: Here is an interesting note by Ken Bousfield describing Gray Manufacturing as symptomatic of a secular shift in CIPO's attitude towards clerical errors.

Inventorship in a Combination Invention

Drexan Energy Systems Inc v The Commissioner of Patents and Thermon Manufacturing Co, 2014 FC 887 O'Keefe J
            2,724,561

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.)

Removing Inventors Post-Grant

Segatoys Co., Ltd. v. Canada (Attorney General) 2013 FC 98 O’Keefe J

            2,547,539 T-1472-12, Date: January 30, 2013

Somehow the Segatoys decision escaped my notice last week, even though I had been staring straight at it when looking at FC website. (Alan Macek’s useful daily IP update brought it to my attention.)

Segatoys was an uncontested application by Segatoys for an order to replace the named inventors on a granted patent by removing the two listed inventors, who had worked on the appearance of the final product without contributing to the inventive concept, and adding the two real inventors. It was uncontested that the error was inadvertent.

In Micromass 2006 FC 117 Layden-Stevenson J held that inventorship of a patent cannot be changed under s 8, which allows the Commissioner to make changes, as that relates only to clerical errors. Prior to grant, the change can be made under s 31(3), (4), which allow the Commissioner to remove or join an applicant to a pending application, but after grant, such a chance can only be made under s 52, which gives the Federal Court broad powers to rectify matters relating to title. Subsequently, in Plasti-Fab 2010 FC 172, O'Keefe J followed Micromass, and held further that when considering an application under s 52 to add an inventor to a granted patent, the Court will engage the test set out under s 31(4) that would be applied by the Commissioner in adding an applicant prior to grant. In Segatoys, O’Keefe J, in a straightforward extension of Plasti-Fab, held that when considering an application under s 52 to remove an inventor, the Court will engage the test set out under s 31(3) that would be applied by the Commissioner in removing an applicant prior to grant.

Apart from this, the decision suggests that the Court will try not to place unnecessary burdens on the applicant in this type of uncontested motion, where, as O’Keefe J noted “nothing suggests that third party rights will be affected” [26]. In particular, the facts were established by notarized declaration rather than affidavit, as specified in s 31(3) of the Act, but O’Keefe J held that this was adequate, as “the declarations thus fulfill the same function as an affidavit and it would be overly formalistic to reject them on the basis of their labelling” [18]