The Federal Court has recently confirmed the principle that an inventor can be added to an issued patent’s list of inventors. In Plasti-Fab Ltd. v. Canada (Attorney General),1 four individuals were listed as inventors on a patent application in the United States. After obtaining their American patent, the inventors filed a patent application in Canada for the same invention. This patent application listed only three of the investors identified in the U.S. patent. To justify leaving the fourth inventor, Mr. Doren, off the list, affidavits were filed attesting that he did not qualify as an inventor.
A few years later, after becoming better acquainted with the criteria for qualifying as an inventor, the four individuals reconsidered their initial position and realized that Mr. Doren did indeed qualify as an inventor and, as such, should be added to the two Canadian patents. In support of their claims, Mr. Doren and another inventor claimed that the omission was a mistake and not for the purpose of a delay; rather, they were unaware of the correct legal test for inventorship when they filed their Canadian patent application.
The Federal Court found that the Commissioner’s authority is limited when it comes to adding an inventor to an issued patent. It ruled that a patent holder cannot avail himself of Section 8 of the Patent Act, which provides for the correction of clerical errors, to add an inventor, thus upholding Micromass UK Ltd. v. Canada (Commissioner of Patents).2 On other hand, paragraph 31(4) of the same act grants the Commissioner the discretion to add an applicant, but only if the patent is pending.
Once a patent is issued, the Federal Court alone has the jurisdiction to amend the list of inventors. The Court confirmed that the word “entry” in section 52 of the Act is broader than the acquisition of rights by assignments: it also covers matters relating to the root of the titles, namely the listing of inventors. The Federal Court’s jurisdiction therefore extends to correcting clerical errors relating to the naming of inventors on an issued patent, including errors of a clerical nature relating to the transcribing of inventor names. In other words, the powers conferred by section 52 are very broad and allow the Court to accomplish what the Commissioner would have been able to do before the patent was issued.
The Court therefore applied the test set out in section 31(4) of the Act to determine if Mr. Doren should be added to the list of inventors. Since the evidence showed that Mr. Doren had met with another inventor before the patent application was filed in the United States, that they had discussed concepts, that Mr. Doren did in fact qualify as an inventor and that the affidavits filed at the same time as the Canadian patent were not for the purpose of a delay, the Court ordered the records amended to include the name of Mr. Doren as an inventor.
This case may have ended well, but it nonetheless remains that the proceedings instituted before the Federal Court to amend the records were far more onerous than the procedure that could have been taken while the patent applications were still pending. This case teaches the importance of fully grasping the notion of “inventor” before a patent application is filed and taking whatever corrective measures may be necessary as soon as possible.