They have the power: Canadian Energy Services v Commissioner of Patents
In a recent decision, the Federal Court upheld the Commissioner of Patents’ decision to vary the Patent Office records and name Mr. Simon Levey as the sole owner of Canadian Patent 2,624,834. In the Court’s view, the Commissioner was obligated to vary the patent records and follow a previous decision of the Federal Court.
In 2023, the Federal Court declared that Secure Energy was the sole owner of the 834 Patent and that Mr. Simon Levey was the sole inventor. The Court saw its declaration as sufficient and declined to order the Patent Commissioner to vary the patent records. Following this decision, the Commissioner of Patents updated the patent records at Secure Energy’s request.
Here, Canadian Energy Services questioned whether the Commissioner of Patents had erred by altering the patent records without a direct court order. CES argued that the Commissioner did not have the authority to change the records based solely on a declaratory judgment.
Standard of review
The Court applied the reasonableness standard to the Commissioner’s decision despite CES’s assertion that the correct standard of review was correctness.
There is a presumption that the standard of review is reasonableness unless applying reasonableness creates inconsistencies. Courts recognize two instances where the reasonableness presumption can be rebutted. First, the presumption may be rebutted when courts and administrative bodies have overlapping first-instance jurisdiction over a legal issue. Second, the presumption is rebutted when two or more administrative bodies have overlapping jurisdiction, which could lead to conflicting orders.
The Court noted that Federal Courts are not an alternative forum to the Patent Commissioner and are not considered an administrative body, so neither exception applies. The Court deemed the correct standard of review as reasonableness because section 52 of the Patent Act empowers the Federal Court to declare changes to patent records, ensuring there is no risk of conflicting interpretations or orders between the Court and the Commissioner.
Amendment of patent records was appropriate
Next, the Court held that the Commissioner’s decision was reasonable because the Court’s 2023 decision obligated the Commissioner to vary the patent office records. The Court focused on whether the Commissioner’s decision was reasonable based on the circumstances. The Court noted that the Court’s 2023 decision determined the ownership and inventorship of the 834 Patent, and the Commissioner must maintain accurate records per Section 4(2) of the Patent Act. The Court itself was also required by the principles of judicial comity and horizontal stare decisis to remain consistent with the 2023 decision and find that the Commissioner acted reasonably when following that decision.
The Court also highlighted that CES’s attempt to challenge the Commissioner’s actions through judicial review was not the appropriate route to contest the 2023 decision. Instead, the Court said that CES should address their concern to the Federal Court of Appeal in their pending appeal of the 2023 decision.
Canadian Energy Services v Commissioner of Patents displays the interplay between the Federal Courts and the Patent Commissioner’s Office surrounding patent record management.
A copy of the decision can be found here.
