Qualcomm Incorporated v Canada (Commissioner of Patents), 2016 FC 1092

In this Federal Court (“FC”) decision, Qualcomm Incorporated (“Qualcomm”) applied for an Order pursuant to section 52 of the Patent Act to vary the records of the Patent Office for Canadian Patent No. 2,630,594 (“the ‘594 Patent”). [1] The particulars of the application were to correct the names of the inventors by deleting the named inventors, Uppinder Singh Babbar and Rohit Kapoor (collectively, “Babbar and Kapoor”), and adding Bohuslav Rychlik (“Rychlik”) as the sole inventor. [1] Qualcomm brought forth a copy of the Assignment of the ‘594 Patent to Qualcomm and copies of the replacement sheets of the PCT Request form for the original application. [1] The Commissioner of Patents (“the Commissioner”) did not contest the application. [2]

Satisfied with the evidence, the FC held to amend the records as requested. [15]

Background and Issues

Qualcomm is the owner of the ‘594 Patent, entitled “Expansion of a Stacked Register File Using Shadow Registers.” A PCT Application was filed November 13, 2006 and entered the national phase in Canada on May 21, 2008. [3] Qualcomm stated that Rychlik was correctly named as the inventor in the original United States Application, however an administrative error resulted in Babbar and Kapoor being incorrectly named as the inventors on the PCT Application. [5] Despite the filing of replacement sheets for the application, [6] the entrance of the PCT Application into Canada was based on the original PCT application and listed the incorrect inventors. [7]

The two issues in this decision were whether the FC should grant the request to vary the records at the Patent Office for the ‘594 Patent, and if the Replacement Documents should be recorded at the Patent Office against the ‘594 Patent. [8]

Patent Act: The Tests for Adding and Removing Inventors

The FC referred to sections 31(3), 31(4) and 52 of the Patent Act pertaining to the procedure when one joint applicant retires, joining applicants and the jurisdiction of the FC, respectively. [9] As section 52 is silent on the test to be used for removing inventors, the FC referred to another recent case, Qualcomm Incorporated v Canada (Commissioner of Patents), 2016 FC 499, which indicated that the test to be used is set out in section 31(3) of the Patent Act. [11] Similarly, section 31(4) of the Patent Act sets out the test for adding inventors. [11]

Both Babbar and Kapoor provided sworn affidavits, confirming that they were not inventors of the invention disclosed in the ‘594 Patent. [13] The FC was satisfied that these affidavits covered the requirements stipulated in sections 31(3) and 31(4) of the Patent Act, and that the requested variance to the ‘594 Patent be allowed. [15]

Federal Court Has No Authority to Record Documents at the Patent Office

Qualcomm submitted that that FC has broad powers stemming from section 52, but could not produce any authorities interpreting section 52 as authorizing the FC to record documents. [16] In light of the lack of authorities, the FC refused to record the Replacement Documents at the Patent Office, stating that section 52 only provides the FC with jurisdiction to vary or expunge records at the Patent Office relating to the title of a patent. [17] Another reason for this refusal was that Qualcomm’s objective had already been achieved. [17]

Commentary

The key takeaway from this case is the FC’s implicit confirmation that it does not have authority to record documents at the Patent Office. Restating section 52 of the Patent Act, the FC emphasized that it only has authority “to order that any entry in the records of the Patent Office relating to the title to a patent be varied or expunged.” While this case was uncontested, it may be likely that parties in more contentious cases will argue that recording documents is within the power of the FC.