Novartis AG v Canada (Attorney General), 2016 FC 229

In this Federal Court (“FC”) decision, the FC heard and granted an uncontested [4] application by Novartis AG (“Novartis”) pursuant to sections 31(3) and 52 of the Patent Act to vary all entries in the records of the Patent Office with regards to the inventorship of Canadian Patent No. 2,782,650 (“the ‘650 Patent”). [1]

The ’650 Patent, entitled “Arranging Interaction and Back Pressure Chambers for Microfluidization,” is owned by Novartis and qualified them to be an interested party for the purpose of section 52 of the Patent Act. [2] In addition to not contesting the application, the Attorney General filed neither an Affidavit nor a Brief. [4]

Background & Declarations

The application was supported by the declarations of three individuals: Barbara Santry (“Santry”), who consented to having her name removed as an inventor from the ‘650 Patent; and Harald Rueckl (“Rueckl”) and Hanno Scheffczik (“Scheffczik”), who both confirmed that Santry did not contribute to the invention and that she was incorrectly named as an inventor. [3] Santry was employed as a Site Head for Manufacturing Science and Technology at Novartis. She stated that she was not an inventor of the invention disclosed in the ‘650 Patent. [7] The evidence filed with the application suggested that the related US patent applications had already been varied to remove Santry as an inventor. [7]

Analysis: Amending Inventorship

The jurisdiction of the FC on an application to amend the inventorship of an issued patent was reviewed in Micromass UK Ltd v Canada (Commissioner of Patents), 2006 FC 117 [Micromass]: [5]

After the patent has issued, the Commissioner has no discretion, under section 8 of the Act or otherwise, to amend the inventorship of an issued patent. Such action falls exclusively within the jurisdiction of the Federal Court. Specifically, section 52 of the Act provides that 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 the patent be varied or expunged. [Micromass, para 12]

Next, the FC provided the test to be met on a section 31(3) application from the Patent Act:

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.

Evidence Uncontradicted

The FC found the evidence uncontradicted and the interested parties agreed Santry’s inclusion as an inventor was an error. The Commissioner of Patents did not oppose the application and there was nothing to suggest that any third party rights would be affected. [8]

The order sought by Novartis to amend the Patent Office’s records by removing Santry as an inventor of the ‘650 Patent was granted. [9]

Commentary

There have in recent times been a number of similar cases involving varying the records for patents (See: Qualcomm Incorporated v Canada (Commissioner of Patents), 2016 FC 499 (PCK Reporter Summary here), and Qualcomm Incorporated v Canada (Commissioner of Patents), 2016 FC 1092 (PCK Reporter Summary here)). While the FC has exclusive jurisdiction to amend the inventorship of an issued patent under Section 52, section 31(3) of the Patent Act expressly delegates specific authority to  the Commissioner of Patents to modify inventorship when the Commissioner is satisfied by affidavit that the remaining applicant(s) is or are the sole inventor(s). While this specific section was used by the FC to provide a legal test for determining the appropriateness of modifying the register, it was the Court’s inherent jurisdiction under Section 52 that ultimately provided the Court with the authority to make this variation to the record.