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Time for a Change – Federal Court Confirms that it can Amend the Inventorship and Ownership of a Patent after it is Issued

On October 28, 2015 Justice LeBlanc released his judgment and reasons in Imperial Oil Resources Ltd. v. ExxonMobil Upstream, 2015 FC 1218, an application by Imperial and Upstream under section 52 of the Patent Act, for an order to vary the inventorship and ownership of Canadian Patent 2,740,481.

The 481 Patent named 11 co-inventors and identified Imperial and Upstream as the co-owners of the Patent. However, during the prosecution of the 481 Patent, the scope of the claimed subject matter was restructured and it was determined that only 3 of the 11 listed co-inventors (Adeyinka, Myers, and Ghosh) contributed to the elected subset of claims. Despite this finding, the patent was issued without the proper modifications to inventorship.

Imperial and Upstream sought to amend the inventorship and ownership of the 481 patent and requested an order to (i) vary all entries in the record of the Patent Office to remove the other 8 listed inventors and (ii) remove Upstream as a co-owner.

Eight of the named inventors swore affidavits stating that they had no part in the invention, while named inventors Adeyinka, Mayers and Ghosh swore affidavits that they contributed to the invention and were correctly named as co-inventors.

Justice LeBlanc held that Section 52 of the Patent Act granted the Federal Court broad powers to vary the records of the Patent office, including the power to vary the named inventors. Justice LeBlanc further held that the Court would remove an inventor upon considering the criteria set out in subsection 31(3) of the Patent Act:

  1. Does it appear that one or more of the named inventors have no part in the invention? and;
  2. Has an affidavit been provided to satisfy the Court that the remaining inventors are the sole inventors?

The Court ordered that the names of the 8 named inventors, who swore that they had no part in the invention, be removed.

With respect to the application to remove Upstream as a co-owner of the Patent, Justice LeBlanc held that the Court had the jurisdiction to vary ownership of the 481 Patent as a consequence of correcting the inventorship of the Patent given that: (i) ownership was not being contested; (ii) the parties agreed Imperial should be listed as the sole owner of the patent; and (iii) the co-inventors assigned their interest in the Patent to Imperial alone.

A copy of the decision can be found here.