On September 16, 2014, in Drexan Energy Systems Inc. v. Canada (Commissioner of Patents), the Federal Court rejected a claim by Drexan Energy Systems Inc. (“the Applicant”) to have two additional individuals named as co-inventors of the heating cable described in Canadian Patent 2,724,561 (the ‘561 Patent). The decision confirms the test for inventorship, and provides guidance on the distinction between mere helpful involvement in the development of a product, and a contribution to an inventive concept that would be sufficient to allow the contributor to be named a co-inventor.

Heating cables are incorporated into pipes used in cold environments to prevent the transported substances from freezing. In 2006, four individuals decided to work together to create a new type of heating cable that eliminated some of the defects in cables available at the time. By 2010, however, the relationship between the men had broken down, and only two individuals were listed as inventors on the ‘561 Patent, which was issued in 2012.

The two named inventors assigned their rights in the patent to their corporation, WWUS, which in turn assigned them to Thermon Manufacturing Co (“the Respondent”). The two unlisted individuals assigned what rights they had in the patent to the Applicant, a competitor of the Respondent.

Establishing Inventorship

Under section 52 of the Patent Act, the Court is given the authority to add or remove inventors from a patent. In this case, the Court confirmed that the applicant bears the burden of meeting the test for inventorship, which can be done by establishing a contribution to the inventive concept, even if it is others that later reduce the concept to the definite shape required for patentability. A co-inventor, therefore, does not need to be wholly responsible for the inventive concept; it is sufficient that his or her contribution is applied to that concept, as something more than mere verification.

Though the Court did not make specific reference to the inventive concept claimed in the ‘561 Patent, it did note that in this case it was the combination of particular elements that made up the inventive concept, and not the elements themselves.  In such a case, the focus of the inventorship inquiry is directed to whether the contributions of the unlisted individuals were in respect of how the elements of the patent could be combined (which would be sufficient to have them named as co-inventors), or whether they were directed only to suggested features and individual elements of the patent. The decision references the Federal Court’s confirmation in Weatherford Canada Ltd. v. Corlac Inc. that in a combination patent it is the combination itself that is the novelty, and as such, even if a certain element is contributed by a person, that person would not have contributed sufficiently to the inventive concept to be called a co-inventor.

In this case, the Applicant argued that between 2006 and 2008, the unlisted individuals contributed to the inventive concept in several ways: i) in 2006, a phone conversation in which  one of the unlisted individuals  described his idea for a new heating cable; ii) in 2007, a presentation to Fujikura Inc. in hopes of obtaining funding; and iii) in 2007, a collaborative brainstorming session in which both unlisted individuals participated and suggested some concepts that ended up in the patent. The Applicant claimed that as a result of the brainstorming session, there was a definite and practical shape to the invention and that at that point, the inventive concept existed and had been contributed to.

The Respondent, in arguing that the unlisted individuals made no contribution to the inventive concept, challenged both their expertise and their credibility, as well as the Applicant’s interpretation of the law on inventorship. In particular, the Respondent argued that a mere idea or suggestion is not inventive; it must actually be reduced to practice in order to meet the test, and in all instances of contribution raised by the Applicant, this threshold was not met.

Analysis of the Claim

In focusing the inquiry on whether a contribution had been made to the novel combination of several elements that amounted to the inventive concept, the Court drew an analogy between two competing products with different advantages and disadvantages. It would be nothing special, the Court reasoned, to merely suggest a new product with all the advantages of both products and none of the disadvantages; the real ingenuity is in the process of creating a product with the desired attributes of both.

Ultimately, however, the Court was not convinced that acceptance of the inventorship claim was appropriate for three reasons. First, the experience of the unlisted individuals, being mostly in sales, was not comparable with the expertise of the two named inventors in research, development, and manufacturing. Second, one of the named inventors was able to provide a great deal of contemporaneous documentation (in the form of design work and memorandums circulated to the other men) supporting his version of events leading up to, and following, the brainstorming session. And finally, the named inventors were able to show that they had been willing to credit one of the unlisted individuals in a separate application for a variation he proposed at one of their meetings, which the Court took as an indication of willingness to accept the unlisted individuals as co-inventors of the ‘561 Patent if they had made any inventive contributions.

In short, the Court concluded that the Applicant had not discharged its burden of proving that the input of the unlisted individuals, while useful, comprised anything more than, in this case, communicating feedback from potential customers and providing suggestions on desired features. The application was dismissed with costs awarded to the Respondent.

This decision is demonstrative of the importance of detailed record-keeping for those involved in the development of inventive concepts. Ownership of any joint project should be discussed early on, and the patent application process and its implications should be thoroughly considered by all those involved in order to avoid protracted and costly disputes.