Dr Falk Pharma GMBH v Canada (Commissioner of Patents), 2014 FC 1117

After an uncontested application pursuant to section 52 of the Patent Act, the Federal Court ordered that the Commissioner of Patents add Peter Gruber to the list of inventors for Canadian Patent No. 2,297,832.  Dr. Falk Pharma GMBH, the applicant and owner of the patent, inadvertently omitted Gruber’s name from the list of inventors due to an absence of knowledge of the different requirements for inventorship under German and Canadian laws. [4] The Court followed Micromass UK Ltd v Canada, 2006 FC 117, where the Court determined that the Commissioner could be ordered to correct clerical errors in issued patents, including omissions from the list of inventors, on evidence that: (1) the individual was a co-inventor, (2) the inventors named on the patent acknowledged the contribution of the co-inventor, (3) the co-inventor’s name was omitted through inadvertence, and (4) the individual’s name was not left off the patent due to a desire to delay the patent prosecution. [9,10] On the facts of this case, particularly on the affidavit of the only other inventor listed on the ‘832 patent, each of these four circumstances were met. [11]

Commentary

The Micromass decision, which was followed in this case, was also uncontested. In that case, one of the inventors’ names was omitted from the list of inventors through inadvertence during a period of corporate restructuring. [3, Micromass] Holding that the word “title” in section 52 of the Patent Act covers matters relating to the root of title, and that the Federal Court had jurisdiction to correct “inadvertent errors relating to the naming of the inventors of an issued patent, including errors of a clerical nature relating to the transcribing of inventor names,” [13, Micromass] the Court granted the application to add the missing inventor’s name to the patent.

While the error that was made in Micromass seems to be more “clerical” in nature than the misunderstanding of Canadian law that occurred in Falk, both decisions seem to be aligned in spirit: An uncontested and seemingly inconsequential change to the list of inventors on a patent can be altered with section 52.

For reference, the text of section 52 is as follows:

“52. 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 a patent be varied or expunged.”