Date:
20130130
Docket:
T-1472-12
Citation: 2013
FC 98
Ottawa, Ontario,
January 30, 2013
PRESENT: The
Honourable Mr. Justice O'Keefe
BETWEEN:
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SEGATOYS CO., LTD. AND SEGA
CORPORATION
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Applicants
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and
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THE ATTORNEY GENERAL OF CANADA
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Respondent
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REASONS FOR
JUDGMENT AND JUDGMENT
[1]
This
is an application by Segatoys Co., Ltd. and Sega Corporation (Sega or
applicants) under section 52 of the Patent Act, RSC 1985, c P-4 (the Patent
Act) for an order amending the named inventors of Canadian Patent No.
2,547,539 (the ‘539 Patent). This application is uncontested as the respondent,
the Attorney General, did not file any affidavit evidence or memorandum or
appear at the hearing.
[2]
The
applicants seek the following relief:
1. Pursuant
to section 52 of the Patent Act, an order that the Commissioner of
Patents vary all entries in the records of the Patent Office with respect to
the inventorship of Canadian Patent No. 2,547,539 by adding Satoshi Yamada and
Fujio Nobata as inventors.
2. Pursuant
to section 52 of the Patent Act, an order that the Commissioner of
Patents vary all entries in the records of the Patent Office with respect to
the inventorship of Canadian Patent No. 2,547,539 by removing Wataru Sato and
Noriyoshi Matsumura as inventors.
Background
[3]
The
‘539 Patent relates to a transformable toy named “Bakugan”.
[4]
The
‘539 Patent was originally filed in Japan on February 20, 2006. On May 23,
2006, Sega’s business partner responsible for marketing and selling the Bakugan
toy in Canada (Spin Master Ltd.) filed a Canadian patent application based on
the original Japanese patent. The Canadian patent was issued on September 22,
2009.
[5]
While
preparing a Patent Cooperation Treaty (PCT) application, Sega’s manager for
legal and intellectual property, Toshimine Arai, found that the original
Japanese patent application listed Wataru Sato and Noriyoshi Matsumura (the listed
inventors) as inventors, as opposed to Satoshi Yamada and Fujio Nobata (the real
inventors). This mistake was carried over to the Canadian Patent, hence the
present application to amend the ‘539 Patent.
[6]
The
real inventors are behind the design and inventive concept of the ‘539 Patent.
The listed inventors worked on the appearance of the finished product while it
was being designed, but did not contribute to the inventive concept. The listed
inventors appear on the patent as a result of an inadvertent error or mistake;
there was no intent to mislead or cause delay.
[7]
One
of the listed inventors, Mr. Matsumura, worked for Sega’s partner, Research and
Development MAK CO., Ltd. (R&D MAK). He has since left the company due to
illness and his contact information is unknown. The other listed inventor, Mr.
Sato, was an employee of Sega and does not dispute the facts above. He has also
stated in his declaration that the same applies to Mr. Matsumura. Mr. Sato has
consented to his name being removed.
[8]
At
the time of the invention, the real inventors were employees of Sega (Mr.
Yamada) and R&D MAK (Mr. Nobata). Under the terms of agreement between Sega
and R&D MAK, all rights in the ‘539 Patent belong to Sega. The change of
inventorship requested herein will not affect these rights.
Issue
[9]
The
applicants raise the following issue:
1. Should the Court
order that the records of the Patent Office relating to the ‘539 Patent be
varied by replacing the listed inventors with the real inventors?
Applicants’ Written Submissions
[10]
The
applicants argue that while the Commissioner of Patents has authority to add an
inventor during the period when an application is pending, only this Court has
the jurisdiction to do so after the patent has been issued. The Federal Court
has the authority to do what the Commissioner could have during the relevant
period, so it applies the test set out in subsection 31(4) of the Patent Act
to determine whether inventorship should be amended.
[11]
In
this case, by inadvertence or mistake, the listed inventors were listed instead
of the real inventors. The erroneous identification of the inventors was not
made wilfully for the purpose of misleading. Therefore, the records in the
Patent Office with respect of the inventorship of the ‘539 Patent should be
amended. No party, other than the Commissioner, will be affected.
Analysis and Decision
[12]
The
Federal Court is responsible for amending the inventorship of a patent that has
already been issued, such as the ‘539 Patent (see Micromass UK Ltd v Canada (Commissioner of Patents), 2006 FC 117 at paragraph 12, [2006] FCJ No 148).
[13]
Moreover,
the word “title” in section 52 of the Patent Act includes inventorship,
which is the “root” of title. Section 52 confers “very broad” powers upon the
Court so that it may accomplish what the Commissioner of Patents would have
done (see Micromass above, at paragraphs 13 and 15).
i.
The
Application of Subsection 31(3) of the Patent Act
[14]
Subsection
31(3) of the Patent Act relates to the removal of the listed nventors.
It sets out two criteria:
1. Does it
appear that one or more of the named inventors had no part in the invention?
[15]
In
the present case, although the listed inventors were responsible for the
appearance of the finished product, they had no part in conceiving or
developing the ‘539 Patent. This is uncontested by either the real inventors or
the listed inventor, Wataru Sato, who provided a declaration. As noted above,
the other listed inventor, Noriyoshi Matsumura, could not be contacted.
2. Has
an affidavit been provided to satisfy the Court that the remaining inventors
are the sole inventors?
[16]
Mr.
Yamada and Mr. Nobata have provided notarized declarations establishing that
they are the co-inventors of the ‘539 Patent. This is corroborated by a declaration
from Mr. Arai, manager of intellectual property for Sega.
[17]
Moreover,
as noted above, one of the listed inventors provided a declaration stating that
neither he nor the other listed inventor (who could not be contacted) had any
part in inventing the ‘539 Patent.
[18]
Although
these declarations are not referred to as affidavits (which is the wording used
in subsection 31(3) of the Patent Act), they are notarized. In my view,
the declarations thus fulfill the same function as an affidavit and it would be
overly formalistic to reject them on the basis of their labelling.
ii.
The
Application of Subsection 31(4) of the Patent Act
[19]
The
real inventors in this case can be added through the operation of subsection 31(4)
of the Patent Act (see Plasti-Fab Ltd v Canada (Attorney General),
2010 FC 172 at paragraph 14, [2010] FCJ No 204). This section sets out the
following criteria:
1. Does it appear that one or
more further individuals should have been joined as inventors?
[20]
As
noted above, all stakeholders (except for the listed inventor who could not be
contacted) agree that the real inventors, Mr. Yamada and Mr. Nobata, are
responsible for the inventive concept and design of the ‘539 Patent.
2. Is the Court satisfied
that:
i. The inventors should
have been joined.
[21]
The
relevant stakeholders have provided notarized declarations to the effect that
the real inventors, not the listed inventors, invented the ‘539 Patent. This satisfies
the Court that the real inventors should have been joined.
ii. The omission was due
to inadvertence or mistake.
[22]
Sega
has stated that the omission of Mr. Nobata and Mr. Yamada as the real inventors
was due to a mistake or inadvertence, most likely caused by the fact that the listed
inventors were working on the appearance of the toy at the same time as it was
being designed by the real inventors. This error was discovered while preparing
a PCT application (see Arai Declaration at paragraphs 3, 5 and 6).
iii. The omission was
not for the purpose of delay?
[23]
Sega
has provided the notarized declaration of Mr. Arai, its manager for legal and
intellectual propery, stating that the omission was made without any intent to
mislead or cause delay. As such, the patent is not invalid; this is
uncontested. Moreover, the failure to name an inventor is not a material misrepresentation
that would entail a violation of section 53 of the Patent Act (see 671905
Alberta Inc v Q’Max Solutions Inc, 2003 FCA 241 at paragraph 32, [2003] FCJ
No 873).
[24]
In
light of the above analysis, the order sought by Sega to amend the Patent
Office’s records by adding Mr. Yamada and Mr. Nobata as inventors of the ‘539 Patent
and by removing Mr. Sato and Mr. Matsumura should be granted.
[25]
This
case meets the criteria set out in subsections 31(3) and (4) of the Patent
Act.
[26]
Moreover,
the evidence is uncontradicted. All stakeholders who could be reached agree
that the omission was a mistake, the Commissioner of Patents has not opposed
the application and nothing suggests that third party rights will be affected.
JUDGMENT
THIS
COURT’S JUDGMENT is that:
1. The Commissioner of
Patents, pursuant to section 52 of the Patent Act, shall vary all
entries in the records of the Patent Office with respect to the inventorship of
Canadian Patent No. 2,547,539 by adding Satoshi Yamada and Fujio Nobata as
inventors.
2. The Commissioner of
Patents, pursuant to section 52 of the Patent Act, shall vary all
entries in the records of the Patent Office with respect to the inventorship of
Canadian Patent No. 2,547,539 by removing Wataru Sato and Noriyoshi Matsumura
as inventors.
“John A. O’Keefe”
ANNEX
Relevant
Statutory Provisions
Patent Act, RSC, 1985, c P-4
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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.
(4) Where
an application is filed by one or more applicants and it subsequently appears
that one or more further applicants should have been joined, the further
applicant or applicants may be joined on satisfying the Commissioner that he
or they should be so joined, and that the omission of the further applicant
or applicants had been by inadvertence or mistake and was not for the purpose
of delay.
52. The
Federal Court has jurisdiction, on the application of the Commissioner or of
any person interested, to order that any entry in the records of the Patent
Office relating to the title to a patent be varied or expunged.
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31.
. . .
(3) Lorsqu’une
demande est déposée par des codemandeurs et qu’il apparaît par la suite que
l’un ou plusieurs d’entre eux n’ont pas participé à l’invention, la poursuite
de cette demande peut être conduite par le ou les demandeurs qui restent, à
la condition de démontrer par affidavit au commissaire que le ou les derniers
demandeurs sont les seuls inventeurs.
(4) Lorsque
la demande est déposée par un ou plusieurs demandeurs et qu’il apparaît par
la suite qu’un autre ou plusieurs autres demandeurs auraient dû se joindre à
la demande, cet autre ou ces autres demandeurs peuvent se joindre à la
demande, à la condition de démontrer au commissaire qu’ils doivent y être
joints, et que leur omission s’est produite par inadvertance ou par erreur,
et non pas dans le dessein de causer un délai.
52. La
Cour fédérale est compétente, sur la demande du commissaire ou de toute
personne intéressée, pour ordonner que toute inscription dans les registres
du Bureau des brevets concernant le titre à un brevet soit modifiée ou
radiée.
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