Imperial Oil Resources Ltd. v. The Attorney General of Canada, 2015 FC 1218 (LeBlanc J.)
October 28, 2015
Borden Ladner Gervais LLP, for Imperial Oil Resources Ltd. and Exxonmobil Upstream Research Co. (Applicants)
William F. Pentney, for the Attorney General of Canada (Respondent)
The patent co-owners, Imperial Oil Resources Ltd. and Exxonmobil Upstream Research Co., applied under s. 52 of the Patent Act to amend the ownership of patent 2,740,481. The ‘481 patent was filed on May 17, 2011, and listed 11 inventors. During prosecution, certain subject matter was dropped, and the scope of the claimed subject matter was restricted.
It was determined that the subject matter that remained on the issued ‘481 patent was only contributed by 3 of the 11 inventors named on the issued patent. Exxonmobil Upstream Research Co. applied to remove itself as co-owner.
The 8 inventors to be removed all provided affidavit evidence indicating that they had no contribution to the subject matter of the issued patent. The remaining inventors provided affidavits swearing that they contributed to the claimed subject matter of the issued patent. The application was unopposed.
The Court found that it was able to correct errors relating to naming inventors by adding or removing inventors, noting that it only has this jurisdiction after issuance of the patent (prior to which the Commissioner properly exercises this jurisdiction). As such, the Court was satisfied that the test under s. 31(3) of the Act was met, and varied the patent by removing 8 of the inventors.
Finally, since ownership of the patent was not contested, and not in issue (and issue of provincial law on contracts was engaged), the Court had jurisdiction to correct ownership of the patent and did so.
By: Shaun B. Cody, New Horizon Law