On May 31, 2024, the Federal Court (Tsimberis J.) granted an application to correct the inventorship of an issued patent. The decision provides a clear explanation of the relevant legal principles (Patent Act, s. 52) and the type of evidence that must be led to obtain relief.
Smith Sport Optics, Inc. v. Canada (Commissioner of Patents), 2024 FC 949
The 707 Patent relates to the placement of shock absorbing inserts that are at least partially aligned with vents located throughout the helmet. The patent was issued to Smith Optics, Inc. and named James A. Chilson (“Chilson”) as the sole inventor.
Just over five years after issuance, the original patentee and its affiliated third party, Koroyd SARL ( “Applicants”), filed an application in the Federal Court: to have John Lloyd, James Rogers, and Piers Storey added as co-inventors; to have Koroyd named as a co-owner; and to change the name of the co-owner from Smith Optics, Inc. to Smith Sport Optics, Inc. Similar relief had already been sought and granted in respect of the corresponding US patent.
Issues
The only issue in this case was whether the Court should amend the 707 Patent to reflect the correct names of its co-inventors, the names of all the owners, and whether the name of the listed owner should be corrected.
Analysis – Section 52 of the Patent Act
The Court held that it has jurisdiction to vary or expunge any entry in the records of the Patent Office, on application by either an interested party or the Commissioner. The Patent Act does not prescribe a test for obtaining this type of relief but has held that the principles for amending patent applications (s. 31(4)) can be used. The Court must be satisfied that the failure to name co-inventors and/or co-applicants was due to inadvertence, mistake, and not for the purpose of delay.
In this case, the Applicants led evidence to show that: the co-inventors each contributed to the inventive concept of the claims; the omission was due to inadvertence and not for the purpose of causing delay; and the named inventor consented to the addition of the co-inventors. The Court held that the requirements outlined in section 31(4) of the Patent Act were met, and that the three additional inventors should be added to the 707 Patent.
Regarding co-ownership, the Court held that it also has jurisdiction to vary such entries pursuant to section 31(4). The evidence established that Chilson (inventor) had assigned his rights, title, and interest to his employer (Smith Optics, Inc.) in 2015, while the other three co-inventors had assigned their rights, title, and interest to Koroyd in 2021. The Court held that Koroyd should be added as an owner of the 707 Patent because it acquired rights from the named inventors.
On the correction of name issue, an executive officer of Smith’s parent company testified that: Smith Optics, Inc. is the assumed business name of Smith Sport Optics; and the assumed business name was included on the application due to inadvertence and not for the purpose of delay. The Court held that section 52 of the Patent Act grants broad powers to direct the Commissioner to correct errors and omissions. The Court therefore held, after considering the evidence presented, that the correct name of the co-owner of the 707 Patent, Smith Sport Optics, Inc., should be added to the 707 Patent in place of the assumed name.