In Qualcomm Incorporated v Canada (Commissioner of Patents), 2016 FC 499, Qualcomm applied for a court order pursuant to s 52 of the Patent Act to vary the entries in the records of the Patent Office to delete Mr. Ravi Palanki as co-inventor of their ‘309 Patent. Mr. Palanki had been incorrectly listed as a co-inventor in the PCT application filed in 2009. The applicant corrected the error shortly thereafter with WIPO, which issued a Notification of the Recording of a Change indicating that Mr. Palanki should be deleted as co-inventor. This notification did not reach CIPO, and as such, the Canadian patent was granted in 2015 with Mr. Palanki listed as co-inventor.
As the application to vary pursuant to s 52 of the Patent Act was not opposed by the respondent or Mr. Palanki, it was granted. Simpson J, of the Federal Court, noted that the correct test to follow is set out in Section 31(3) of the Patent Act. This test has two parts: (1) the supposed inventor clearly had no part in the invention; and (2) affidavit evidence is presented that shows the remaining patent applicants to be the sole inventor or inventors. In this case, no affidavit evidence was presented, but the application was granted regardless. Simpson J, in the context of this case, found the affidavit evidence to be “essentially a housekeeping requirement” that is not relevant under s 52 of the Patent Act.