Kirouac-Couture c ERL Étude et Recherche Inc, 2014 QCCQ 1405

(based on a machine translation of the French decision)

Couture engaged and paid ERL for preparing a patent application. ERL employs engineers, none of whom are registered patent agents. After preparation of the draft application, Couture consulted a registered patent agent, who gave the opinion that the subject matter was not patentable due to lack of novelty and potential subject matter eligibility issues. Couture alleged that ERL is not qualified to prepare patent applications, and sought a refund of his payment. ERL, in turn, counterclaimed for balance of payment due for preparation of the application.

Court ordered ERL to refund Couture’s payment. ERL’s counterclaim was dismissed.

The Court held that ERL could lawfully enter a contract to research and prepare a patent application, even though neither it nor any of its employees were listed on the Register of Patent Agents. [24] However, the Court held that under the Civil Code, ERL had to disclose to Couture, before signing of the contract, limitations in ERL’s ability to file and prosecute the patent application due to not being a registered patent agent. The Court found this disclosure was lacking.

In addition, the Court held that ERL should have disclosed to Couture potential patentability issues associated with novelty and subject matter eligibility of its alleged invention, and found that Couture would not have incurred the costs of drafting a patent application had ERL met its disclosure obligation. [38]

The Court held that ERL’s failure to provide the relevant disclosure vitiates Couture’s consent to enter the contract for preparation of the patent application. [39] The Court ordered that Couture must be put in the position he would have been had he never entered the contract with ERL. [40]