Canada: Court Grants Order Correcting Inventorship, But Declines To Order Recording Of Documents At Patent Office (Intellectual Property Weekly Abstracts Bulletin — Week Of October 10)

Last Updated: October 14 2016
Article by Chantal Saunders, Beverley Moore, Adrian J. Howard and Jillian Brenner

Most Read Contributor in Canada, September 2016

Patent Decisions

Court Grants Order Correcting Inventorship, but Declines to Order Recording of Documents at Patent Office
Qualcomm Incorporated v. Canada (Commissioner of Patents), 2016 FC 1092

Qualcomm sought an order pursuant to s. 52 of the Patent Act to add Mr. Rychlik as the sole inventor and to remove two of the named inventors. The Application was uncontested and the Respondent, the Commissioner of Patents, did not appear.

Qualcomm submitted that Mr. Rychlik was correctly named as inventor in the US Application, but, as a result of an administrative error, two other employees were incorrectly named as inventors on the Request form for the PCT Application. While Qualcomm had filed replacement sheets to name Mr. Rychlik as sole inventor and a Notification of the Recording of a Change in Inventorship for the PCT Application was issued, the PCT Application entrance into Canada was based on the originally published PCT Application.

Qualcomm also sought to have a copy of these replacement sheets and the assignment from Mr. Rychlik to Qualcomm (together the "Replacement Documents") recorded at the Patent Office against the patent.

Affidavit evidence was filed indicating that Mr. Rychlik was the sole inventor, that both named inventors consented to their removal, and that the incorrect naming of inventors was by inadvertence or mistake and was not for the purpose of delay. The Court was satisfied with the evidence and granted the order.

The Court declined to order that the Replacement Documents be recorded at the Patent Office. Section 52 provides that the Court may vary or expunge a record. However, Qualcomm was unable to establish that the recording of a replacement document represented variation or expungement of a record of the Patent Office. The Court also noted that Qualcomm could achieve its objectives without the Court ordering the recording of the Replacement Documents.

Expert "Blinding" is a Question of Relevance, Reliability and Weight, but not Admissibility
Gilead Sciences, Inc. v. Canada (Health), 2016 FC 857

On August 23, 2016, the Federal Court released its public judgment granting the Order of prohibition for Gilead's '619 Patent. The '619 Patent covered a prodrug useful in the treatment and prophylaxis of HIV. Apotex had alleged that the '619 Patent was invalid on the basis of anticipation, obviousness, invalid selection patent and inutility.

The Court first addressed the issue of "blinding" of experts. Gilead had provided the legal framework to its experts early concerning anticipation, obviousness and utility. In contrast, Apotex stated that it had waited to provide this information until the experts had drawn their own conclusion on various issues, including the promise of the patent, claim construction and prior art. The Court preferred the approaches taken in the recent decisions in Eli Lilly Canada Inc v Apotex Inc, 2015 FC 875, and Shire Canada Inc v Apotex Inc, 2016 FC 382. The Court stated that "the blinding of a witness is a factor, one of perhaps several, that goes to weight, but it is not a matter that goes to admissibility". The Court also noted that "the blinding issue is a question of relevance, reliability and weight, and is not a doctrinal matter".

The Court held that the '619 Patent was not anticipated since the EP 214 application did not disclose tenofovir disoproxil (TD). The Court also held that the '619 Patent was not an invalid selection patent from the genus disclosed in the EP 214 Application. The evidence and law did not establish that the EP 214 Application encompassed TD. The Court noted that even if the Application did include TD, it would still find that TD presented particular and special advantages over other members of the claimed genus that were not disclosed.

The '619 Patent was also not found to be obvious. The Court noted that there was strong motivation to invent a drug, including financial and medical motivation, as well as motivation to find a nontoxic, stable drug with effective oral delivery. However, the Court concluded that these motivations to invent a drug with TD's properties did not render the invention obvious or obvious to try.

Finally, in respect of utility, the Court found that the goal of the '619 Patent was to improve treatment of HIV, whereas the promise was to offer efficient oral delivery of the compound. After defining the promise of the '619 Patent, the Court held that utility was demonstrated.

Patent Related Decisions

IP Licence Provided Contractual Right, Not a Property Right in the Asset
Golden Opportunities Fund Inc v Phenomenome Discoveries Inc, 2016 SKQB 306

The Applicant, the court appointed receiver, sought an order approving the sale of the Debtor's assets, and vesting the Debtor's assets free and clear of encumbrances, except for those permitted by the Purchase and Sale Agreement. Yol Bolsum Canada Inc. ("YCBI") objected to the relief sought by the Receiver pertaining to the draft Vesting Order. YCBI asserted that it had an interest in the property of the Respondent, provided by a Licence Agreement, which the Receiver sought to sell. Counsel for YCBI suggested that s. 65.11(7) of the Bankruptcy and Insolvency Act and s. 32(6) of the Companies' Creditors Arrangement Act now prohibits a receiver from disclaiming an agreement pertaining to intellectual property.

The Court noted that these sections did not apply to court-appointed receivers. Rather, the Court found that the decision in Royal Bank of Canada v Body Blue Inc. (2008), 2008 CanLII 19227 (ON SC) continued to apply to licences within the context of court-appointed receiverships. In that case, the Court stated that a licence is a contractual right, and does not confer any interest or property in the thing being licenced.

YBCI's right in the present case is a contractual right. Therefore, the Court concluded that YBCI is entitled to pursue a claim against the net sale proceeds, but has no property right in the assets of the Respondent that are the subject of the Receiver's sale.

Industry Update

Health Canada has published a Consultation on the Health Canada Draft Guidance Document: Quality (Chemistry and Manufacturing) Guidance: New Drug Submissions (NDSs) and Abbreviated New Drug Submissions (ANDSs). This consultation period is stated to be open until December 4, 2016.

About BLG

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.

In association with
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.