Date: 20160516
Docket:
T-72-16
Citation: 2016 FC 499
Ottawa, Ontario, May 16, 2016
PRESENT: The
Honourable Madam Justice Simpson
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BETWEEN:
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QUALCOMM
INCORPORATED
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Applicant
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and
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COMMISSIONER OF
PATENTS
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Respondent
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JUDGMENT AND REASONS
[1]
Qualcomm Incorporated [the Applicant] has
applied for an order pursuant to section 52 of the Patent Act, RSC 1985,
c. P-4 [the Act] varying the entries in the records of the Patent Office to delete
Mr. Ravi Palanki [Mr. Palanki] as a co-inventor on Canadian Patent No. 3,860,309
[the “309” Patent] which was issued on June 23, 2015.
[2]
The application is not opposed by the Respondent
and Mr. Palanki has consented to the order sought on the basis that he is not a
co-inventor of the invention described in the 309 Patent.
[3]
The affidavits filed by Mr. Palanki (sworn on
October 29, 2015) and by Mr. Anthony B. Morris, the Applicant’s Patent Counsel,
(sworn December 7, 2015) establish the following:
a)
The Applicant filed four United States
provisional patent applications which correctly do not name Mr. Palanki as one
of the co-inventors;
b)
The Applicant later filed United States Patent Application
No. 12/269,676 claiming priority from the provisional applications. Mr.
Palanki is correctly not listed as one of the co-inventors.
c)
However, through inadvertence or mistake, Mr.
Palanki was incorrectly listed as a co-inventor [the Error] in the Patent
Cooperation Treaty Application No. PCT/US2008/083658 [the PCT Application] filed
on November 14, 2008 and published on May 22, 2009;
d)
The Applicant recognized the Error and attempted
to have it corrected by submitting a request to the International Bureau of the
World Intellectual Property Office [WIPO] dated May 13, 2010. On May 17, 2010,
a Notification of the Recording of a Change was issued by the International
Bureau of the WIPO [the Notification] indicating that Mr. Palanki should be
deleted from the records of the PCT Application as a co-inventor. However, since
it does not appear in the relevant file histories, the Notification apparently
did not reach the Canadian Patent Office;
e)
Accordingly, when the 309 Patent was issued on
June 23, 2015, it incorrectly listed Mr. Palanki as a co-inventor;
f)
Mr. Palanki has reviewed the 309 Patent and
deposes that he is not an inventor of the invention described therein. Further,
as mentioned above, he consents to the order sought.
I.
THE ISSUE
[4]
Should the Court order that the entries in the records
in the Patent Office be varied to delete Ravi Palanki as a co-inventor?
II.
THE LAW
[5]
Section 52 of the Act gives the Court jurisdiction
to order the removal of a co-inventor once a patent has issued but it is silent
about the test to be used. However, recent decisions of this Court have suggested
that, in deciding whether to remove a co-inventor, the Court should follow the
test set out for the Commission of Patents in section 31(3) of the Act
[the Section]. In this regard, see Imperial Oil Resources Ltd. v Canada
(Attorney General), 2015 FC 1218 and Segatoys Co., Ltd. v Canada
(Attorney General), 2013 FC 98.
[6]
The Section was written to apply to the
Commissioner of Patents’ decision about whether to remove a co-inventor listed
in a pending patent application. The Section reads as follows:
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(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.
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(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.
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[My emphasis]
III.
DISCUSSION
[7]
I am satisfied that the first part of the test
in the Section is relevant and has been met; Mr. Palanki clearly had no
part in the invention described in the 309 Patent. However, the second part of
the test described in the Section is not met because the affidavits described
above do not clearly state that the remaining co-inventors listed in the 309
Patent are the sole inventors.
[8]
In these circumstances, I must decide whether an
affidavit is required.
[9]
In my view, the affidavit mentioned in the
Section is essentially a housekeeping requirement to promote the efficient
processing of pending patent applications in the Patent Office. It makes sense
that, if a patent applicant has made an error in a pending application, the
Commissioner would want to ensure that the application was correct once it was
amended. This was accomplished by requiring applicants to consider the
inventor(s) and confirm in an affidavit that they were accurately listed.
[10]
However, these considerations are not relevant
when an issued patent is being considered by the Court under section 52 of the Act.
[11]
Accordingly, the application will be granted notwithstanding
the fact that the Applicant did not provide the affidavit mentioned in the
Section stating that the remaining co-inventors listed in the 309 Patent are
the sole inventors.
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