Suggesting desired features is not inventive – Federal Court of Canada

On September 16, 2014, Justice O’Keefe dismissed an application under Section 52 of the Patent Act seeking to amend the named inventors of Canadian Patent No. 2,724,561. The 561 Patent is directed to heating cables, also known as heat tracing products, used to ensure that pipes used to transport substances do not free in cold environments.

In 2006, Steve Makar, Konrad Mech, Wells Whitney and Umesh Sopory decided to create a new type of heating cable to address deficiencies in products that existed at the time. This led to the 561 patent application which was filed in 2009.  By 2010, the relationship between the four men had broken down and Mr. Mech and Mr. Makar petitioned the Canadian Intellectual Property Office to be added as co-inventors on the 561 application. Their petition was initially granted but subsequently reversed by CIPO.

The 561 Patent issued on September 4, 2012, naming Dr. Whitney and Mr. Sopory as the only inventors.  Drexan Enery System, which had acquired whatever rights Mr. Makar and Mr. Mech had, then brought an application to the Federal Court of Canada to have Mr. Makar and Mech be added as co-inventors of the 561 Patent. Drexan’s application was resisted by the owner of 561 Patent, Thermon Manufacturing Co.

In the case before him, Justice O’Keefe held that the inventive concept was the combination of particular elements and not in the element themselves. Accordingly, the relevant inquiry was whether Mr. Makar’s and Mr. Mech’s contributions were directed not only to suggested features but how they could actually be combined.

Justice O’Keefe preferred the evidence of the named inventors, concluding that on the record before him, Drexan has not proven that Mr. Makar’s and Mr. Mech’s contribution was anything more than suggesting desired features and communicating feedback from potential customers.  While undoubtedly helpful, such actions are not inventive.

Thermon was represented by Aitken Klee LLP.

A copy of Justice O’Keefe’s Reasons may be found here.