Thursday, December 13, 2012

When Inventors Don't Get Along: Baksh v. Probiohealth, LLC, 2012 FC 1388

Thursday, December 13, 2012
The Federal Court of Canada recently reviewed the decision of the Commissioner of Patents to remove Mr. Bing Baksh as a named inventor on Canadian Patent Application No. 2, 503,510 (‘the ‘510 application). A copy of the decision can be found at the following link: 

This is an interesting decision with respect to whom the Patent Office can communicate with respect to a patent application and in particular with respect to changes in inventorship. Perhaps most interestingly, this case highlights that the Canadian Patent Act does not provide a mechanism or forum to address all issues relating to inventorship and ultimately ownership of the inventions claimed in an application. 

The issues addressed in this decision can perhaps be distilled down to the following - What recourse within the context of the Patent Act does a named inventor have to prevent their removal from the patent application? Or rephrased – Does a named inventor have a legitimate expectation that he/she could make submissions to the Commissioner of Patents in relation to requests by the authorized correspondent to have them removed as an inventor. 

The Federal Court determined that the inventor “could not have had a legitimate expectation that he would have an opportunity to make submissions.” (Paragraph 30). The reasons for this are 1) Rule 6(1) limits who the Commissioner of Patents can communicate with respect to a pending application and 2) Section 31(3) of the Patent Act does not provide for submission of affidavits by the inventor that is being removed. 

In particular, for patent applications where the Applicant is not the inventor, Rule 20(1) requires that the Applicant appoint a patent agent to prosecute the application. The ‘510 application was filed in the name Probiohealth with Gowling Lafleur Henderson appointed as patent agent. 

To whom the Commissioner of Patents can communicate with respect to a pending application is set forth in Section 6(1) of the Patent Rules. Section 6(1) states: 
6. (1) Except as provided by the Act or these Rules, for the purpose of prosecuting or maintaining an application the Commissioner shall only communicate with, and shall only have regard to communications from, the authorized correspondent. The authorized correspondent is defined in Section 2 of the Patent Rules as follows: “authorized correspondent” means, in respect of an application, 
(a) where the application was filed by the inventor, …. 
(b) … 
(c) where paragraphs (a) and (b) do not apply, a patent agent appointed pursuant to section 20;
Accordingly, for the ‘510 application Gowlings was the authorized correspondent and therefore the Commissioner of Patents only had authority to communicate with them and had no discretion to communicate with or accept submissions from Mr. Baksh. 

It is apparent from this case that the Patent Act does not provide recourse to named inventors during an inventorship dispute with the Applicant. That being said, depending on the fact situation, it does not mean that there are no options available to such inventors, this is especially true if there are contracts or agreements in place that govern the relationship between the parties thereby providing jurisdiction to the provincial courts.