Drexan Energy Systems Inc v The Commissioner of Patents and Thermon Manufacturing Co, 2014 FC 887(O’Keefe J)

Summary – On September 16, 2014, the Federal Court delivered its decision in Drexan, in which an application to add the inventors, Steve Makar and Konrad Mech, to Canadian Patent No. 2,724,561 (the ‘561 patent) was rejected.

Analysis – The ‘561 patent relates to heat tracing cable for heating pipes in cold environments to prevent freezing. The named inventors are Dr. Wells Whitney and Mr. Umesh Sopory, who assigned their rights to Thermon. Mr. Makar and Mr. Mech assigned their rights, if any, to Drexan, a competitor of Thermon. The relationship between the inventors and alleged inventors broke down such that Whitney and Sopory were the only listed inventors upon filing and issuance of the ‘561 patent. During prosecution, Makar and Mech petitioned the Patent Office to be added as co-inventors and succeeded at first, but that decision was eventually reversed for undisclosed reasons.

The Court stated that in order to succeed in adding inventors, Drexan must prove that Makar and Mech are “probably co-inventors” (see Weatherford Canada Ltd v Corlac Inc2010 FC 602 at paragraph 238) and this requires that Makar and Mech are “in some way responsible for the inventive concept” (see Apotex Inc v Wellcome Foundation Ltd2002 SCC 77 at paragraph 96). Drexan argued that this test is satisfied so long as it is shown that Makar and Mech “discussed concepts that became incorporated into embodiments disclosed” with the named inventors (see Plasti-Fab Ltd v Canada (Attorney General)2010 FC 172 at paragraph 15). The Court stated that the inventive concept of the ‘561 patent lies in the combination of particular elements, not in the elements themselves, thus the focus of the analysis should be on whether Makar’s and Mech’s contributions were directed, not only to suggested features, but to how they could actually be combined. The Court found that this determination came down to the credibility of the testimony from the named inventors over Makar and Mech.

Ultimately, the Court was not convinced that Makar and Mech were co-inventors for several reasons. Firstly, Mr. Makar is a career salesman and Mr. Mech is a mechanical engineer who has never before designed a heat tracing cable, while Dr. Whitney and Mr. Sopory had expertise in research, development and manufacturing. Labour was likely divided along the lines of each individual’s experience. Secondly, Whitney provided documentation showing his design work prior to a project discussion meeting, while Makar and Mech provided no such documentary evidence. Thirdly, Mr. Mech is a named inventor on a variant covered in another patent, and thus, Whitney and Sopory appear willing to credit Makar and Mech for their inventive contributions, when present, and thus, since they were not credited in the ‘561 patent, Makar and Mech likely made no inventive contributions thereto. The Court concluded that Drexan failed to prove that Mr. Makar and Mr. Mech provided anything more than desired features and feedback from potential customers which may have been helpful, but not inventive.

Practice Point – While this decision was reached largely on the merits of the evidence before the Court, Applicants are reminded to ascertain who the inventive contributors are early in the patenting process. It is important to note that the Court found the inventive concept of the ‘561 patent to be the combination of elements, not the individual elements themselves. Thus, simply suggesting features of a combination may not be considered sufficient to meet the threshold for inventorship of the combination.