BETWEEN:
and
REASONS FOR ORDER
[1] The applicant, Micromass UK Limited (Micromass) applies for an order, pursuant to section 52 of the Patent Act, R.S. 1985, c. P-4 (the Act), to vary all entries in the records of the Patent Office with respect to the inventorship of Canadian Patent No. 2,192,915 (the 0915 patent) by adding Mr. Roger Giles as an inventor.
[2] Micromass is the assignee and registered owner of the 0915 patent filed in Canada on December 13, 1996 and claiming priority from a December 14, 1995 provisional patent application in the United Kingdom. The Canadian patent was issued on November 20, 2001. There are corresponding foreign patents, including in the United Kingdom and the United States.
[3] The evidence establishes that Stevan Bajic and Roger Giles were co-inventors of the 0915 patent. Only Stevan Bajic was named as an inventor in the patent application. The omission of Mr. Giles as an inventor was through inadvertence during a period of corporate restructuring. The error was discovered during an internal review of United States Patent No. 5,756,994, which occurred after the 0915 patent was issued.
[4] Messrs. Bajic and Giles both recognize Mr. Giles as an inventor of the 0915 patent and both consent to this application. Mr. Bajic has assigned his rights in the patent to Micromass and Mr. Giles has agreed to do the same.
[5] Micromass has been successful in having Mr. Giles added as an inventor in the United Kingdom and its application to do so in the United States is pending.
[6] There are no legal disputes in Canada with respect to the 0915 patent and Micromass is not aware of any party, other than the Commissioner of Patents (the Commissioner), that is directly affected by the order sought or is required to be named under an Act of Parliament.
[7] The Commissioner was served with the application and has informed the Court that the Commissioner takes no position and will not attend on the return of the application.
[8] The relevant statutory provisions are as follows:
| Patent Act, R.S. 1985, c. P-4
8. Clerical errors in any instrument of record in the Patent Office do not invalidate the instrument, but they may be corrected under the authority of the Commissioner.
31.(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.
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.
Patent Rules, SOR/96-423
35. Clerical errors in any document relating to an application, other than a specification, a drawing or a document effecting a transfer or a change of name, which are due to the fact that something other than what was obviously intended was written, may be corrected by the applicant. |
Loi sur les brevets, L.R. 1985, ch. P-4
8. Un document en dépôt au Bureau des brevets n'est pas invalide en raison d'erreurs d'écriture; elles peuvent être corrigées sous l'autorité du commissaire.
31.(4) Lorsque la demande est déposée par un ou plusieurs demandeurs et qu'il apparaît par la suite qu'un autre ou plusieurs autres demandeurs auraient dû se joindre à la demande, cet autre ou ces autres demandeurs peuvent se joindre à la demande, à la condition de démontrer au commissaire qu'ils doivent y être joints, et que leur omission s'est produite par inadvertance ou par erreur, et non pas dans le dessein de causer un délai.
52. La Cour fédérale est compétente, sur la demande du commissaire ou de toute personne intéressée, pour ordonner que toute inscription dans les registres du Bureau des brevets concernant le titre à un brevet soit modifiée ou radiée.
Règles sur les brevets, DORS/96-423
35. Les erreurs d'écriture contenues dans tout document relatif à une demande, autre que le mémoire descriptif, un dessin ou un document attestant un transfert ou un changement de nom, peuvent être corrigées par le demandeur lorsqu'elles ont été substituées à ce que l'auteur voulait évidemment dire. |
[9] Before the issuance of a patent, clerical errors in any document relating to an application, other than a specification, a drawing, or a document effecting a transfer or a change of name may be corrected by an applicant without application to the Commissioner where something other than what was obviously intended was written: Patent Rules, rule 35.
[10] Certain types of clerical errors not covered by rule 35 may be addressed by making a request to the Commissioner under section 8 of the Act. The addition of an inventor is not contemplated as an error that can be corrected under section 8: Patent Act, section 8.
[11] When an application is pending, recourse may be had to subsection 31(4) of the Act to add an inventor to an application. Under subsection 31(4), the Commissioner has the discretion to join an applicant, if the Commissioner is satisfied that the applicant should be so joined, and the omission of the further applicant was by inadvertence or mistake and was not for the purpose of delay.
[12] After the patent has issued, the Commissioner has no discretion, under section 8 of the Act or otherwise, to amend the inventorship of an issued patent. Such action falls exclusively within the jurisdiction of the Federal Court. Specifically, section 52 of the Act provides that 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 the patent be varied or expunged.
[13] The word "title" in section 52 of the Act is broader than acquisition by assignment and covers matters relating to the root of title. The jurisdiction of the Court extends to correcting inadvertent errors relating to the naming of the inventors of an issued patent, including errors of a clerical nature relating to the transcribing of inventor names: BF Goodrich v. Commissioner of Patents (1960), 32 C.P.R. 122 (SEC.I) (Ex. Ct.).
[14] An application under section 52 of the Act may be brought by an assignee of a patent, with notice to the Commissioner, by way of an originating process or by way of notice of motion during a pending infringement case relating to the patent in question. The assignee must notify any persons who are claiming an interest in the patent, and if there is a pending infringement case involving the patent at issue, any persons that may have a defence that could be affected by the order sought: Clopay Corporation and Canadian General Tower Ltd. v. Metalix Ltd. (1960), 34 C.P.R. 232 (Ex. Ct.) aff'd. (1961), 39 C.P.R. 23 (S.C.C.).
[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)
[...]
I am of the opinion, however, that the provisions of s. 54 of our Patent Act are by themselves sufficiently broad to encompass a situation such as the one before me, in which the grantee of the patent was dissolved prior to the grant, and that there is power in the Court to direct that the records be corrected to accomplish that which the Commissioner would have done had the two assignments now recorded been registered prior to the grant (p. 236).
[16] 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:
Apotex Inc. v. Wellcome Foundation Ltd. (1998), 79 C.P.R. (3d) 193 (F.C.T.D.) appeal allowed in part, but not on this issue (2000), 10 C.P.R. (4th) 65 (F.C.A.) aff'd. (2002), 21 C.P.R. (4th) 499 (S.C.C.).
[17] I am satisfied on the basis of the noted authorities and the evidence before me that the applicant is entitled to the requested relief and an order will so provide. Pursuant to section 25 of the Act, there will be no costs.
Ottawa, Ontario,
February 2, 2006
FEDERAL COURT
NAME OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1537-05
STYLE OF CAUSE: MICROMASS UK LIMITED
v.
THE COMMISSIONER OF PATENTS
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: February 2, 2006
REASONS FOR ORDER: LAYDEN-STEVENSON J.
APPEARANCES:
| Solomon R. Avisar
|
|
| No appearance |
SOLICITORS OF RECORD:
| Avisar Venture Law Ottawa, Ontario
|
|
| John H. Sims, Q.C. Deputy Attorney General of Canada |