Recently, the Federal Court released its decision in SALT Canada Inc v Baker, 2016 FC 830, a case in which the Court considered its jurisdiction to hear and determine an application for a declaration that records in the Patent Office be varied to list SALT as the owner of Canadian Patent No. 2,222,058. Ultimately, the dispute was determined to require the interpretation of principles of contract law and, for that reason, the Court held that it lacked jurisdiction to adjudicate on the matter. The application was dismissed.
The background to the proceeding involved a series of assignments of the patent, the most recent of which was signed by the inventor, Dr Markels, and purported to assign patent rights to SALT. However, at that time, and due to previous assignments, the listed owner on the patent register was Mr Baker and not Dr Markels. Dr Markels, when assigning rights to SALT, agreed that he would take steps to remove Mr Baker as the registered owner. To this end he signed a reassignment; however, this was never executed by Mr Baker.
The reassignment was subsequently filed with the Patent Office, prompting Mr Baker to file an objection. For its part, the Patent Office refused to record the reassignment as it was not executed by Mr Baker. Following this refusal, SALT initiated the application at hand.
It was noted that, on its own, the application sought by SALT—to vary the records of the Patent Office—would appear to be within the jurisdiction of the Federal Court. However, the Court was of the view that the issuance of any order in that regard would be secondary to, and would dependent upon, a prior interpretation of the various assignment agreements, which would determine rightful patent ownership. The Court found that the interpretation of the agreements was clearly a matter of contract law, and not patent law, and held that the issues associated with such ownership would have to be resolved before the case could be heard by the Federal Court.
In coming to its conclusion, the Court distinguished the case before it from Q’Max wherein the Federal Court of Appeal had suggested that the Federal Court may have jurisdiction to determine ownership of a patent if all relevant evidence was on the record, and all possible claimants were present and properly notified. In this case, certain parties to the string of assignments that ended up with Mr Baker being the registered owner of the patent were not parties to the application by SALT and were not before the Court.