Unopposed Application to Add Inventor to Two Issued Patents
Plasti-Fab Ltd. v. The Attorney General of Canada, 2010 FC 172 (O’Keefe, J.)

February 22, 2010

Steven Tanner for the Applicant, Plasti-Fab Ltd.
Jacqueline Dais-Visca for the Respondent, Attorney General of Canada

The Applicant brought the application under Section 52 of the Patent Act to add an inventor, Doren, to two issued patent applications.  The Attorney General was counsel for the Commissioner and was the only necessary Respondent but took no position on the application.

The patents already name three inventors but the U.S. priority application names four inventors, including the inventor that was sought to be added.  In 2000, two of the inventors had sworn affidavits in support of leaving Doren off the Canadian patents.

The applicant claims that the mistake that resulted in Doren being left off the Canadian patent occurred during a dispute regarding the third inventor, whose status was eventually resolved in favour of the third inventor being added as an inventor.

Both affiants now claim that in 2000 when they sworn their first affidavits, they were misinformed as to the test for inventorship.  Having reviewed their notes, and being properly informed of the legal test for inventorship, they now believe that Doren should be added as an inventor.

The Court recognized that the Commissioner is only able to add an inventor during prosecution.  After issuance, the Commissioner has no discretion to amend inventorship.  Such action falls exclusively within the jurisdiction of the Court.

Since the Court had undisputed evidence that Doren had provided inventive elements to the patents, the application was granted.

By: Alan Macek, Dimock Stratton LLP