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.

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