Are patent applicants under an obligation to bring others into
the proceeding when removing an inventor? Not according to
the Federal Court of Canada in Bing Baksh v. Probiohealth,
LLC, 2012 FC 1388. In this case, the Federal Court found
that in inventorship disputes in front of the Patent Office, the
Commissioner of Patents (the
"Commissioner") is required to deal only
with inventors and their legal representatives or authorized
Probiohealth, LLC ("Probiohealth")
had applied to patent in Canada a probiotic nutritional supplement.
The application named Dr. Naidu and Mr. Baksh as
co-inventors. Naidu had assigned his rights to Probiohealth
but Baksh refused. In order to proceed with the application,
Probiohealth filed a voluntary amendment cancelling all claims
relating to Baksh's encapsulation system; Probiohealth and
Baksh then agreed Baksh could file a separate divisional
application for the encapsulation system.
Probiohealth also requested that Baksh be removed as an inventor
to which the Commissioner agreed. Baksh, however, challenged the
decision since Probiohealth had not supported its request with
affidavit evidence as required by the Patent Act (the
"Act"). Baksh and the Commissioner
settled the matter and, pursuant to a settlement agreement (the
"Settlement Agreement"), Baksh agreed to
discontinue legal proceedings and the Commissioner agreed to
reverse his decision removing Baksh as a co-inventor.
In response, Probiohealth subsequently filed a second request to
remove Baksh as co-inventor. This time, the request was supported
by an affidavit sworn by the co-inventor, Naidu. Probiohealth
reminded the Commissioner that any future correspondence relating
to the case should not be copied to Baksh.
After he was again removed as a co-inventor, Baksh sought an
appeal and made an application for judicial review of the
Commissioner's decision to remove him as an inventor.
While decisions of the Commissioner can be appealed to the
Federal Court, Justice O'Reilly found that Baksh could not
appeal as he was neither a party to the proceeding nor an applicant
(he had been removed as an inventor). As such, Baksh was not
permitted to exercise the right of appeal set out in the Act. The
Court dismissed his appeal and proceeded, instead, by judicial
Baksh claimed that the Settlement Agreement stopped the
Commissioner from removing him as a co-inventor of the
patent. The Federal Court disagreed. According to the
Court, the Commissioner reversed its earlier decision to remove
Baksh as an inventor because the provisions of the Act had not been
complied with by Probiohealth. The Settlement Agreement did
not constitute a promise to Baksh about how any future requests
would be decided. The Court held that the Settlement Agreement did
not stop the Commissioner from granting Probiohealth's second
request to remove Baksh as a co-inventor, provided it complied with
Baksh also argued that the Settlement Agreement required the
Commissioner to invite him to make submissions before the
Commissioner could remove Baksh as an inventor. Baksh further
submitted that the Commissioner treated him unfairly by failing to
give him an opportunity to make submissions in response to
Probiohealth's request to remove him as a co-inventor. Baksh
claimed that the Commissioner had a duty to invite him to make
representations since the Settlement Agreement created a legitimate
expectation that he would remain named as an inventor.
Once again, the Court disagreed. The test under the Act
according to the Federal Court was whether Probiohealth could
satisfy the Commissioner, by affidavit, that Baksh should be
removed as a co-inventor. Neither the Settlement Agreement nor the
Act required the Commissioner to hold a hearing or receive
submissions from Baksh. Therefore, Baksh could not have had a
legitimate expectation that he would be able to make submissions.
Under the Patent Rules, the Commissioner was
permitted only to communicate and consider evidence put forward by
the applicant or its authorized correspondent (e.g., a patent
agent). Baksh was neither a party to the proceedings nor an
inventor. As such, the Commissioner could not have
communicated with or considered his submissions. The only
requirement was that Probiohealth satisfy the Commissioner, by
affidavit, that Naidu was the sole inventor. Having fulfilled
this requirement under the Act, Probiohealth alone was entitled to
prosecute the application.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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