Canada: In An Inventorship Dispute, Timing May Be Everything

Last Updated: July 8 2015
Article by Mee Ling Wong and Jenna L. Wilson

Prompt steps may be needed to preserve a patent application during an inventorship or ownership dispute

What happens when your client discovers that a patent application for his or her invention was filed by an erstwhile business partner without identifying your client as an inventor or applicant? The result could be an irrevocable loss of rights if your client does not quickly act to seize control of the application, as seen in the recent Federal Court decision of Cloutier c. Thibault, 2014 CF 1135—but figuring out how to accomplish this feat is another matter.

In a Canadian patent application, only the applicants currently recognized by the Commissioner of Patents are able to direct the course of the application: whether it should be amended, maintained in good standing, or allowed to go abandoned to thereby forfeit any future patent rights. While ownership and applicantship can change during the life of the application, the right to be recognized as an applicant flows from the correct identification of the inventors and their legal representatives (e.g., employers or assignees), as they are the parties entitled to make an application for a patent in the first place. In most cases, inventors and their legal representatives cooperate in filing patent applications; but in some situations inventors find themselves excluded from the patenting process and at risk of losing rights to their own invention due to decisions made by others.

Cloutier was one of those special situations. In 2003, the inventor Cloutier had relied on a business partner, Thibault, to assist him in obtaining patents and commercializing his inventions, but learned the next year that Thibault had filed patent applications for the inventions in his name alone, to the exclusion of Cloutier. In related commercial litigation, the Quebec Superior Court found that Cloutier was the sole inventor, but not the owner of the patent applications (Cloutier c. Thibault, 2009 QCCS 4881). As the litigation continued, Thibault allowed the applications to become irrevocably abandoned. Cloutier wrote to the Commissioner of Patents in 2012 to seek restoration of the applications, but this remedy was refused not only because the statutory deadlines to reinstate the applications had passed, but also because in the Commissioner's view, only Thibault, as the recognized applicant, was permitted to take such steps. Cloutier sought review of this decision by the Federal Court.

The Court, while sympathetic to Cloutier, concluded that both the Court and the Commissioner lacked jurisdiction to restore the abandoned applications as the statutory reinstatement period had already expired, and no equitable remedy was available. The Court also noted that Cloutier had been aware of the existence of the applications prior to their abandonment, and might have taken timely steps to have himself recognized by the Patent Office in order to maintain the applications in good standing. Cloutier is thus a cautionary tale illustrating that an inventor should take prompt action to preserve his or her rights when misappropriation of an invention is discovered.

Where the action should be taken depends on whether the application is still pending or a patent has been granted. If the patent has granted, s. 52 of the Patent Act gives the Federal Court jurisdiction to determine the identity of the inventors and vary inventorship and ownership of the patent in the Patent Office records, as demonstrated by multiple Federal Court decisions, including Drexan Energy Systems Inc. v. Canada (Commissioner of Patents), 2014 FC 887, which involved a dispute over inventorship. But while the patent application is still pending, as explained in Suncor Energy Inc. v. MMD Design and Consultancy Ltd., 2008 FC 488, it is up to the Commissioner to decide who will receive the granted patent; the Federal Court will only have jurisdiction if a party challenges the Commissioner's decision.

If a spurned inventor is expected to seek recourse in the Patent Office when the application is still pending, this is often easier said than done. While sections 31(3) and (4) of the Patent Act provide for removing and adding inventors ("applicants"), and section 31(2) permits the Commissioner to resolve disputes between co-applicants about proceeding with an application, these provisions must be read in conjunction with section 6(1) of the Patent Rules and current Office practice. Section 6(1) prevents parties other than the "authorized correspondent"—the first-named inventor or a patent agent appointed by the recognized applicant—from communicating with the Office regarding prosecution or maintenance of an application. While this does not preclude correspondence with third parties about inventorship or title, the file history of the application in Drexan shows that the Office reversed a decision to add two inventors at their request, after the authorized correspondent objected to the change. While that reversal should not be considered precedential, the reason for reversal is not clear. In any event, the Federal Court found that the additional parties had not contributed to the invention. The Office's current position is that removal under section 31(3) only applies when there were originally joint applicants and it is one of the original joint applicants that is to be removed.

When neither the Federal Court nor the Patent Office by themselves appear to be a viable forum for relief in a case with disputed inventorship, an excluded inventor may need to consider a multi-pronged approach using the provincial superior courts, which have jurisdiction to rule on ownership of an invention. With a court order settling ownership of the invention in hand, the inventor may be able to gain control over a pending application in the Office.

As Cloutier demonstrates, it is incumbent on inventors who find themselves in inventorship or ownership disputes to take whatever steps possible to keep the patent application (or patent) alive pending resolution, because it is highly unlikely that the Court or Patent Office will able to restore patent rights once they have been irrevocably lost through operation of law. In urgent cases with looming Office deadlines, it is worth considering obtaining an interlocutory court order restricting what the current applicant can do to the application pending resolution of the dispute.

A version of this article was published by LexisNexis Canada in The Lawyers Weekly, 13 March 2015.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Bereskin & Parr LLP
Bennett Jones LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Bereskin & Parr LLP
Bennett Jones LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions