Qualcomm Incorporated v Canada (Commissioner of Patents), 2016 FC 499

When attempting to remove a named inventor from an issued patent, evidence that the remaining named individual(s) are the sole inventor(s) is not necessary.

In this case, the Federal Court (“FC”) allowed the removal of named co-inventor, Ravi Palanki, (“Mr. Palanki”) from Canadian Patent No. 2,860,309 (“the ‘309 Patent”). [11] Through inadvertence or mistake, Mr. Palanki was incorrectly listed as a co-inventor in the PCT Patent Application, the correction for which did not reach the Canadian Intellectual Property Office (“CIPO”). [3] As such, the ‘309 Patent also incorrectly listed Mr. Palanki as a co-inventor. [3]

The issue to be decided was whether the court should order that CIPO records be varied to delete Mr. Palanki as a co-inventor. [4] The FC determined that the two-part test to be used when deciding whether or not to remove a co-inventor is found in section 31(3) of the Patent Act: [5]

31 (3) Where an application is filed by joint applicants and it subsequently appears that one or more of them has had no part in the invention, the prosecution of the application may be carried on by the remaining applicant or applicants on satisfying the Commissioner by affidavit that the remaining applicant or applicants is or are the sole inventor or inventors [emphasis added].

The first part of the test was easily met, as it was clear that Mr. Palanki had no part in inventing the ‘309 Patent. [7] The second part of the test, however, was not strictly met. [7] This step required “satisfying the Commissioner by affidavit that the remaining applicant or applicants is or are the sole inventor or inventors.” [6] While no such affidavit was provided, the FC found that this was essentially a “housekeeping requirement” to promote efficient processing of pending patent applications and was not relevant when an issued patent was being considered by the court. [9, 10] As such, the order was made to remove Mr. Palanki as a co-inventor.