Canada’s Intellectual Property Firm

“Eureka!” — Determining and correcting inventorship

Authored byLionel Fishman

The Canadian Patent Act does not explicitly answer the question “Who is an inventor?” Therefore, Canadian courts have had to infer the requirements of inventorship from the language of the Patent Act. The recent decision in Drexan Energy Systems Inc v The Commissioner of Patents and Thermon Manufacturing Co (“Drexan”), 2014 FC 887, provides insight into the Federal Court’s reasoning when determining who should be considered an inventor for the purposes of a patent. 

Drexan Energy Systems Inc. applied to the Federal Court for a declaration that two individuals, Steve Makar and Konrad Mech, be declared co-inventors of the invention described in Canadian Patent No. 2,724,561. The owner, Thermon Manufacturing Co.,  contested Drexan’s application.

Who is an inventor?

According to the Court, an inventor must be in some way responsible for the inventive concept. An inventor may not be wholly responsible for the inventive concept, but she or he must have contributed to it. Notably, the contribution does not necessarily have to be a major contribution. As the Court stated in Drexan, “[E]ven minor contributions to the inventive concept can be sufficient to make someone a co-inventor, so long as his or her ingenuity is applied to the original inventive concept and not just verification”. 

When an invention is directed to a combination of elements, it is not sufficient to have merely suggested one or more of the elements in order to be considered an inventor. Moreover, there is no ingenuity in suggesting a combination of attributes that a preferred product might have. As the Court stated, “the focus has to be on whether … contributions were directed not only to suggested features … but to how they could actually be combined” and “[i]f there is any inventive concept at all in combining (two products), it lies in discovering how to make a product that has the desired attributes of both…” [emphasis added].  

Ultimately, the Court in Drexan found that, while Makar and Mech had contributed to the design, their contributions amounted to no more than suggesting desired features and communicating feedback from potential customers. This was not inventive and did not contribute to the inventive concept, namely how to actually combine the elements and make a product that has the desired attributes. As such, the Court held that Makar and Mech were not co-inventors and the application was dismissed.

Correcting inventorship

Under section 52 of the Patent Act, the Federal Court has exclusive jurisdiction to amend entries in the records of the Patent Office relating to inventorship, and a court order is necessary to amend the inventorship information of an issued patent. An applicant seeking such an order must submit evidence to convince the court on the balance of probabilities that an order should be issued.

Importantly, a court order is required even if the failure to list the proper inventors was due to a clerical error or an inadvertent mistake on the part of the patentee and the application for an amendment is uncontested. In Dr. Falk Pharma GmbH v The Commissioner of Patents (“Falk”), 2014 FC 1117, the applicant sought to add Peter Gruber as a co-inventor to Canadian Patent No. 2,297,832. According to the applicant, Gruber had been inadvertently left off the list of inventors due to a clerical oversight. More particularly, the applicant was unaware that, although Gruber was not an inventor under German laws, his contribution was sufficient to entitle him to co-inventorship under Canadian law. The Court granted the order based on evidence submitted by the applicant, including an affidavit from the only listed inventor, that Gruber had contributed to the inventive concept.

As noted in the decision in Drexan, Canadian case law has established that “an ‘agreement’ between parties does not resolve the issue of inventorship. An individual either contributes an inventive idea or does not”. Therefore, while an agreement between parties on matters of inventorship may aid in convincing a court to issue an order to alter inventorship, it nevertheless remains incumbent on an applicant to prove on a balance of probabilities that such alteration is warranted.

Practical implications

The recent decisions in Drexan and Falk illustrate the importance of taking due care to ensure that agreements governing ownership of inventions are in place before research and development commences, and to determine the inventorship status of each person involved in the development of an invention prior to filing a patent application. Best practices may include maintaining detailed and thorough inventor notes, minutes of meetings and logs relating to the development of an invention so that sufficient evidence may be presented at a later date if it should become necessary to prove inventorship.  Moreover, it is advisable to deal with any outstanding issues of inventorship during prosecution of the application and before issuance in view of the fact that a court order is required to amend inventorship of an issued patent.   

For further information, please contact a member of our firm’s Patents group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.