Federal Court Denies Co-Inventorship to Marketing Collaborators

Federal Court Denies Co-Inventorship to Marketing Collaborators

Drexan Energy Systems Inc v Canada (Commissioner of Patents), 2014 FC 887

The Federal Court rejected an application by Drexan Energy Systems, Inc. (“Drexan”) for a declaration pursuant to section 52 of the Patent Act that Steve Makar and Konrad Mech (associates of Drexan) are co-inventors of the heating cable described in Canadian Patent No. 2,724,561 (“the Patent”). The currently named co-inventors are Wells Whitney and Umesh Sopory (associates of Thermon Manufacturing Co. (“Thermon”), the current assignee of the Patent). [4] The Court found that while each of the four contributed to the invention, [3] the contribution of Makar and Mech essentially amounted to suggesting desired features of the invention and communicating feedback from potential customers, which did not constitute an inventive contribution. [56]

Thermon disputed the application. Commissioner of Patents took no position. [2]

Factual Background

Makar, Mech, Whitney, and Sopory developed the heating cable described in the Patent over the course of several conversations and meetings. The evidence was not clear as to how far along these discussions brought the product to its final state. [10, 11, 19]

Makar is a career salesman and Mech is a mechanical engineer but not in the area of heat tracing cables. [15] Whitney and Sopory have decades of experience in the design and manufacture of heat tracing cables. [15]

The invention relates specifically to a design for heating cables that includes a plurality of bus wires, insulation material for the bus wires, a plurality of node areas where the bus wire is exposed, a heating element wrapped around the bus wire structure in a helical manner that is electrically coupled to the bus wires at the exposed nodes, and includes pluralities of redundant electrical paths. [3]

The Inventorship Issue

The only issue was whether Makar or Mech are co-inventors of the Patent. [6]

In reviewing the law of inventorship, the Court recognized that Drexan must show that Makar or Mech are in some way responsible for the inventive concept, but that they do not need to be wholly responsible. [24] 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 towards verification. [26] Having determined that the inventive concept at issue is in the combination of particular elements, [27] Makar’s and Mech’s contributions must have been to how the elements could actually be combined. [29] If, as Drexan contends, Makar and Mech made contributions that became concrete details in the Patent, then they will have contributed to the inventive concept. [30] However, if Makar’s and Mech’s contribution largely amounted to marketing and reporting the desired attributes of the invention, as Thermon contends, then they would not be co-inventors.

The Court preferred the evidence of Thermon for three principal reasons.  First, the Court found it likely that the group would divide the labour along the lines of their experience, with Makar and Mech handling more of the marketing side, while Whitney and Sopory handled the design side. [52] Secondly, Whitney recorded documents showing his design work pertaining to the heating cable and circulated it at the group’s meetings. [53] Third, at one point Whitney and Sopory had credited Mech for his contribution to a particular variation of the invention and named him co-inventor for that particular variation, but did not credit Mech for the invention at issue. [55]

The Court determined that the contribution of Makar and Mech essentially consisted of suggesting desired features of the invention and communicating feedback from potential customers. This contribution was not found to be inventive. [56]

Commentary

This decision helps clarify what may constitute an inventive contribution that is deemed worthy of co-inventorship, which may be especially relevant to groups of collaborators working on an invention. In this case, the Court decided that the requirement is something more than merely suggesting desired features of an invention.

The persuasive value of this decision may be restricted to cases such as these in which the inventive concept is in the combination of a number of elements, and not in the suggestion of the individual elements.

It is interesting to note that no specific reference to the claims was made in the analysis as to what was the inventive concept in the patent, since the claims, not the disclosure, ultimately define the property right in the invention, and ownership of that right should originate with the inventor(s). When discussing the elements of the invention, the Court instead quotes the abstract in the Patent, [3] and refers to discussions that took place between the parties that set out these elements. [11, 30] At one point the Court recites the design of the product, as may have been jointly conceived between the parties, and states that “some of these are concrete claims detailed in the patent”, [30] but again makes no direct reference to the claims.