Docket: T-2179-18
Citation: 2019 FC 309
Toronto, Ontario, March 13, 2019
PRESENT: The Honourable Madam Justice McDonald
| BETWEEN:
|
| GENERAL TRANSPORT EQUIPMENT PTY. LTD.
|
| Applicant
|
| and
|
| THE ATTORNEY GENERAL OF CANADA AND TYTEC LOGISTICS PTY. LTD.
|
| Respondents
|
JUDGMENT AND REASONS
[1]
General Transport Equipment Pty. Ltd. brings this application pursuant to Section 52 of the Patent Act, RSC 1985, c P-4 to correct the inventors of record of Patent No. 2,639,371 (371 Patent) to include Robert Diss, their employee, as a co-inventor.
[2]
The issue of Mr. Diss as a co-inventor was addressed by the Australian Patent Office who determined that Brett Fennell and Robert Diss are co-inventors of the equivalent Australian Patent.
[3]
The Respondent, Tytec Logistics Pty. Ltd., is the owner of Patent No. 2,639,371 (371 Patent) and the employer of the co-inventor Brett Fennell. Tytec confirmed in writing that they support this application and they waived their rights to be served with the application materials.
[4]
The Attorney General on behalf of the Commissioner of Patents was served with this application and confirmed that it would not be filing material or participating in the application.
[5]
The Australian Patent Office and the United States Patent Office have considered the inventorship of corresponding Australian and United States Patents, and added Robert Diss as a co-inventor to the corresponding patents.
[6]
Pursuant to section 52 of the Patent Act the court has jurisdiction to order the correction of the records of the Patent Office regarding the listing of a co-inventor (Micromass UK Ltd v Canada (Commissioner of Patents), 2006 FC 117, at paras 12-13).
[7]
With respect to applicable test, sub-section 31(4) of the Act, provides that that the person should be joined as a co-inventor provided “that the omission of the further applicant or applicants had been by inadvertence or mistake and was not for the purpose of delay”
.
[8]
I am satisfied, on the basis of the application record and the decision of the Australian Patent Office that the Australian co-inventorship principles are substantially the same as the applicable Canadian principles (Apotex Inc. Wellcome Foudnation Ltd., 2002 SCC 77 at para 99). I am therefore satisfied that Robert Diss should be added as a co-inventor. Finally, I am satisfied that his name was omitted from the original application by inadvertence or mistake, and was not for the purpose of delay.
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