Missing or Wrong Inventors?

Occasionally, patent applications are filed or issued identifying the wrong inventors, or the allegedly wrong inventors. This can arise due to inadvertence at the time of filing or from disputes between inventors, claimed inventors and owners of the intellectual property.

All patent applications must identify the inventor or inventors of the invention being claimed. This is typically done in the petition for the patent or equivalent under the international Patent Cooperation Treaty rules at the time of filing.

The identity of the inventors is important because ownership of the patent flows from the inventors, usually through an employment arrangement or assignment. If there are multiple inventors, ownership has to be followed from each inventor. Co-ownership of a patent can complicate the ability to assign or license the patent. For example, in Forget, the British Columbia Court of Appeal said, “a co-owner could not dispose of anything less than his entire interest in the patent without first obtaining the consent of the other co-owners.”

Complications typically arise when someone asserts co-inventorship in a patent and asks to be identified as an inventor. If successful, this person, by being named as inventor, obtains part ownership of the patent, potentially frustrating the intentions of the patent’s other owners.

Recently, the Federal Court considered this issue in Drexan Energy Systems Inc. v Thermon Manufacturing Co., 2014 FC 887. As recounted in the decision, the relationship between four individuals broken down and only two were listed as inventors in the patent application. The unlisted individuals assigned their rights to Drexan which brought an application in the Federal Court, pursuant to Section 52 of the Patent Act for an order adding the two individuals as inventors.

Section 52 of the Patent Act provides the Federal Court (but not the provincial superior courts – see my earlier post: Where Should You Launch Your Intellectual Property Case?) broad jurisdiction to vary or expunge the records relating to title of a patent. The Courts have held that the Patent Office is not able to correct an issued patent absent an order from the Court.

In Drexan, the Court weighed the factual evidence as to the events leading to the invention and ultimately concluded that the two individuals were not co-inventors and dismissed the application.

While a patent application is pending at the patent office, adding and removing an inventor may be done without involving the court. Section 31(4) of the Patent Act states that:

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.

Section 31(3) of the Patent Act similarly addresses removing a joint applicant if it subsequently appears that one of them had no part in the invention.

A potential difficulty with adding or removing inventors using this procedure is that pursuant to Section 6(1) of the Patent Rules, only correspondence received from the ‘authorized correspondent’ shall be considered by the Patent Office. In situations where the change is non-contentious, the patent agent of record can file the necessary request with the patent office to make the change to list of inventors for the patent application.

If the change is contentious, the patent office may not take into account a request received from a party which is not the agent of record for the patent application. The court in Baksh v. Probiohealth, 2012 FC 1388, stated that a removed inventor, could not have had “a legitimate expectation that he would have an opportunity to make submissions” and the Commissioner of Patents properly did not consider the removed inventor’s affidavit evidence prior to making the decision to remove the inventor. While the court in Baksh did suggest that the removed inventor could have applied under Section 31(4) of the Patent Act to be re-added as an inventor or under Section 52 of the Patent Act, a third party attempting to use Section 31(4) may face the same difficulties of not being the authorized correspondent and Section 52 applies to “patents” and not explicitly pending applications so it is not clear if these sections would be helpful.

In Suncor Energy Inc. v. MMD Design and Consultancy Limited, 2008 FC 488, Justice O’Keefe held that the Federal Court did not have jurisdiction to make declarations as to ownership of a pending patent application and instead the issue must be dealt with by the Commissioner of Patents at the Patent Office. An appeal from the patent office to the Federal Court may be made pursuant to Section 31(5) of the Patent Act by the applicant.

While the Federal Court has exclusive jurisdiction to vary the records at the patent office, often in disputes between inventors, alleged inventors and applicants, recourse must be made to the provincial superior courts for adjudication under contracts, misuse of trade secrets, or employment agreements as to the ownership of the invention.