- Court Grants Order Correcting Inventorship, but Declines to Order Recording of Documents at Patent Office
- October 20, 2016 | Authors: Jillian Brenner; Adrian J. Howard; Beverley Moore; Chantal Saunders
- Law Firm: Borden Ladner Gervais LLP - Ottawa Office
- Qualcomm Incorporated v. Canada (Commissioner of Patents), 2016 FC 1092
Qualcomm sought an order pursuant to s. 52 of the Patent Act to add Mr. Rychlik as the sole inventor and to remove two of the named inventors. The Application was uncontested and the Respondent, the Commissioner of Patents, did not appear.
Qualcomm submitted that Mr. Rychlik was correctly named as inventor in the US Application, but, as a result of an administrative error, two other employees were incorrectly named as inventors on the Request form for the PCT Application. While Qualcomm had filed replacement sheets to name Mr. Rychlik as sole inventor and a Notification of the Recording of a Change in Inventorship for the PCT Application was issued, the PCT Application entrance into Canada was based on the originally published PCT Application.
Qualcomm also sought to have a copy of these replacement sheets and the assignment from Mr. Rychlik to Qualcomm (together the "Replacement Documents") recorded at the Patent Office against the patent.
Affidavit evidence was filed indicating that Mr. Rychlik was the sole inventor, that both named inventors consented to their removal, and that the incorrect naming of inventors was by inadvertence or mistake and was not for the purpose of delay. The Court was satisfied with the evidence and granted the order.
The Court declined to order that the Replacement Documents be recorded at the Patent Office. Section 52 provides that the Court may vary or expunge a record. However, Qualcomm was unable to establish that the recording of a replacement document represented variation or expungement of a record of the Patent Office. The Court also noted that Qualcomm could achieve its objectives without the Court ordering the recording of the Replacement Documents.