Docket: T-623-15
Citation:
2015 FC 1218
Ottawa, Ontario, October 28, 2015
PRESENT: The
Honourable Mr. Justice LeBlanc
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BETWEEN:
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IMPERIAL OIL
RESOURCES LTD.
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AND
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EXXONMOBIL
UPSTREAM RESEARCH CO.
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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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JUDGMENT AND REASONS
I.
Introduction
[1]
This is an application by Imperial Oil Resources
Ltd (Imperial Oil) and Exxonmobil Upstream Research Co (Upstream)
(collectively, the Applicants) under section 52 of the Patents Act, RSC
1985, c P-4 (the Act) for an order to vary the entry in the records of the
Patent Office relating to the inventorship and ownership of Canadian Patent No.
2,740,481 (the ‘481 Patent).
[2]
This application is uncontested as the
Respondent did not participate in the proceedings.
II.
Background
[3]
The ‘481 Patent entitled “Integrated Processes for Recovery of Hydrocarbon from Oil
Sands” was filed on May 17, 2011 and lists eleven inventors: Olusola B.
Adeyinka (Adeyinka), Ronald D. Myers (Myers), Mainak Ghosh (Ghosh), Fritz
Pierre Jr. (Pierre), Emilio Alvarez (Alvarez), Robert D. Kaminsky (Kaminsky),
Justin D. Pace (Pace), Thomas R. Palmer (Palmer), David C. Rennard (Rennard),
Payman Esmaeili (Esmaeili), and Brian C. Speirs (Speirs).
[4]
The ‘481 Patent lists Imperial and Upstream as
co-owners. The Applicants do not dispute the ownership of the ‘481 Patent.
[5]
The ‘481 Patent claimed priority over Canadian
Patent Application No. 2,704,927 (‘927 Patent Application) and claimed subject-matter
directed to embodiments described in the ‘927 Patent Application as well as
other embodiments. The ‘927 Patent Application lists three inventors: Adeyinka,
Myers, and Ghosh.
[6]
During prosecution of the ‘481 Patent, the scope
of the claimed subject-matter was restricted in response to a unity objection
from the Patent Office and it was determined that only Adeyinka, Myers, and
Ghosh contributed to the elected subset of claims, yet the patent was issued
without the proper modifications to inventorship.
[7]
The Applicants now seek to amend the
inventorship and ownership of the ‘481 Patent by order pursuant to section 52
of the Act requesting that the Commissioner vary all entries in the records of
the Patent Office with respect to the title of the ‘481 Patent by removing
Pierre, Alvarez, Kaminsky, Pace, Palmer, Rennard, Esmaeili, and Speirs as
co-inventors and an order removing Upstream as co-owner of the ‘481 Patent. All
the listed co-inventors and the Applicants agree that these 8 individuals
should be removed from the list of co-inventors of the registered ‘481 Patent and
the 8 individuals have provided their consent to be removed. This evidence is
uncontradicted.
[8]
The Applicants submit that section 52 of the Act
grants the Court jurisdiction to order the Patent Office to vary the
inventorship and ownership of the ‘481 Patent. They also claim that in
exercising its jurisdiction, the Court may determine if inventorship can be
amended by considering the test set out in subsection 31(3) of the Act in the
place of the Commissioner of Patents (the Commissioner).
[9]
As to the ownership of the ‘481 Patent, the
Applicants contend that the Court does not have to determine the issue of
ownership and there is no allegation of misuse of confidential information by
the inventors or the Applicants. Therefore, they request that the records of
the Patent Office be amended to correct the ownership of the ‘481 Patent.
[10]
Finally, the Applicants claim that the only
affected party in this case, the Commissioner, has decided not to participate
in these proceedings and nothing suggests that any other third parties will be
affected by the order sought.
III.
Issues
[11]
The Applicants raise the following issues:
- Should the Court
order that the records of the Patent Office relating to the ‘481 Patent be
varied by (i) removing Pierre, Alvarez, Kaminsky, Pace, Palmer, Rennard,
Esmaeili, and Speirs as co-inventors and (ii) removing Upstream as
co-owner?
IV.
Analysis
[12]
Section 52 of the Act grants the Federal Court
broad powers to “order that any entry in the records of
the Patent Office relating to the title to a patent be varied or expunged”
on the application of any person interested. I am satisfied that the Applicants
are interested persons in this case.
[13]
This Court has interpreted the word “title” in section 52 of the Act broadly to include “matters relating to the root of title” such as
inventorship (Micromass UK Ltd v Canada (Commissioner of Patents), 2006 FC 117, at para 13, 286 FTR 277 [Micromass]); Segatoys Co, Ltd v Canada (Attorney General), 2013 FC 98,
at para 13, 426 FTR 104 [Segatoys]). Thus, the scope of section 52 of
the Act allows the Court to vary errors relating to the naming of inventors,
including adding or removing inventors’ names (Micromass, at para 13; Segatoys,
at para 13).
[14]
The Federal Court can only exercise this
jurisdiction where the patent has already been issued, as is the case here (Micromass, above at
para 12). As the Commissioner has no discretion to
vary the inventorship of patents once issued, this Court has held that in
exercising the powers under section 52 of the Act, the Court substitutes itself
in place of the Commissioner to decide whether an inventor should be removed by
considering the test set out in subsection 31(3) of the Act in order to
accomplish what the Commissioner would have done prior to issuing the patent (Segatoys,
at para 14, Micromass, at para 15, Clopay
Corporation and Canadian General Tower Ltd v Metalix Ltd (1960), 34 CPR 232, at para 10, aff'd
(1961), 39 CPR 23.
[15]
Subsection 31(3) of the Act sets out two
criteria for the removal of named inventors:
- does it appear that one or more of the named inventors have no
part in the invention?; and
- has an affidavit been provided to satisfy the Court that the
remaining inventors are the sole inventors?
[16]
In the present case, Pierre, Alvarez, Kaminsky,
Pace, Palmer, Rennard, Esmaeili, and Speirs provided sworn affidavits to the
effect that they had no part in the invention of the claimed subject-matter of
the issued ‘481 Patent. I am therefore satisfied that the first part of the
test under subsection 31(3) has been met.
[17]
I also note that Adeyinka,
Myers, and Ghosh provided sworn affidavits that they contributed to the
invention of the claimed subject-matter of the issued ‘481 Patent and are
therefore correctly named as co-inventors of the ‘481 patent. The claims of
co-inventorship of Adeyinka, Myers, and Ghosh of the ‘481 Patent are
uncontested by all parties involved. I am therefore satisfied that the second
part of the test has been met.
[18]
The final issue to be determined is whether the
Court has jurisdiction to remove Upstream as a co-owner of the ‘481 Patent.
[19]
This Court has held that it does not have
jurisdiction under section 52 of the Act to determine ownership of patents as
this would require the application and interpretation of the provincial law on
contracts (Rlp Machine & Steel Fabrication Inc v Walter Ditullio,
2001 FTC 245 at para 39, 202 FTR 185; Axia Inc v Northstar Tool Corp,
2005 FC 573, at paras 17-19, 273 FTR 123). I am satisfied that the present
matter is not a case where ownership of the patent is at issue. Indeed, the
Applicants do not contest ownership of the ‘481 Patent as they both agree that
Imperial should be listed as the sole owner of the patent. Moreover, the sole
co-inventors, Adeyinka, Myers, and Ghosh assigned their
interest in the ‘481 Patent to Imperial alone. As such, I am of the view that
the Court has jurisdiction to vary the ownership of the ‘481 Patent as a
consequence of correcting the inventorship of the patent.
[20]
In light of the above, the order sought by the
Applicants to amend the Patent’s Office records by removing Pierre, Alvarez,
Kaminsky, Pace, Palmer, Rennard, Esmaeili, and Speirs as co-inventors and by
removing Upstream as co-owner should be granted.
[21]
The Applicants, quite understandably, did not
seek costs.
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